Top Plus Pty Ltd v Muse Entertainment Pty Ltd
[2013] FCCA 379
•20 May 2013
FEDERAL CIRCUIT COURT OF AUSTRALIA
| TOP PLUS PTY LTD & ANOR v MUSE ENTERTAINMENT PTY LTD & ORS | [2013] FCCA 379 |
| Catchwords: PRACTICE & PROCEDURE – Respondents failed to appear – findings and orders made pursuant to FCC Rule 13.03B(2)(c). |
| Legislation: Federal Circuit Court Rules 2001 |
| Australian Competition and Consumer Commission (ACCC) v Dataline.Net.Au Proprietary Limited (2006) 236 ALR 665 Australian Communications and Media Authority v Mobilgate Limited(No 2) [2009] FCA 887 Yeo v Damos Earthmoving Proprietary Limited, Re Beachwood Developments Proprietary Limited (in liquidation) [2011] FCA 1129 Arthur v Vaupotic Investments Proprietary Limited [2005] FCA 433 Australian Competition and Consumer Commission v 1cellnet LCC [2005] FCA 856 Luna Park Sydney Pty Limited (ACN 102 907 184) v Bose [2006] FCA 94 CNIP Pty Limited v Chan & Naylor Norwest Pty Limited(No 2) [2011] FCA 1170 Speedo Holdings B.V. v Evans(No 2) [2011] FCA 1227 Macquarie Bank Limited (ACN 008 583 542)v Seagle [2008] FCA 1417 Macquarie Bank Limited v Seagle (2005) 146 FCR 400 Deppro Pty Limited v Daly [2006] FCA 1727 Jianshe Southern Pty Limited (ACN 007 031 905) v Turnbull Cooktown Pty Limited (ACN 069 894 275) (No 2) [2007] FCA 903 Acohs Pty Limited v Ucorp Pty Limited [2010] FCA 577 Clayton v Thomas C Denton Pty Limited (1972) VR 46 Bell v Steele(No 2) [2012] FCA 62 Bank of Kuwait and the Middle East v Ship MV “Mawashi Al Gasseem” (No 2) (2007) 240 ALR 120 |
| First Applicant: | TOP PLUS PTY LTD |
| Second Applicant: | K-BOX PTY LTD ACN 105 220 157 |
| First Respondent: | MUSE ENTERTAINMENT PTY LTD |
| Second Respondent: | CHARLIE JI |
| Third Respondent: | GOLD TYPHOON ENTERTAINMENT LIMITED |
| Fourth Respondent: | EAST ASIA MUSIC (HOLDINGS) LIMITED |
| Fifth Respondent: | EMPEROR ENTERTAINMENT (HONG KONG) LIMITED |
| Sixth Respondent: | UNIVERSAL MUSIC LIMITED |
| Seventh Respondent: | EAST ASIA RECORD PRODUCTION COMPANY LIMITED |
| Eighth Respondent: | HUMMINGBIRD MUSIC LIMITED |
| File Number: | ADG 216 of 2012 |
| Judgment of: | Judge Simpson |
| Hearing date: | 20 May 2013 |
| Date of Last Submission: | 20 May 2013 |
| Delivered at: | Adelaide |
| Delivered on: | 20 May 2013 (ex-tempore) |
| Date of Order: | 18 June 2013 |
REPRESENTATION
| Counsel for the Applicant: | Mr Sadler |
| Solicitors for the Applicant: | Thomsons Lawyers |
| Respondents: | Mr Starke, out of courtesy only |
Pursuant to rules 13.03A(2)(b)(iii) and 13.03B(2)(c) of the Federal Circuit Court Rules 2001 (Cth):
THE COURT MAKES DECLARATIONS THAT:
The First Respondent has infringed the copyright in cinematograph films contained in the Gold Typhoon Entertainment Limited ('GTE') works (which are set out at Tab 1 of the List of Works attached to the Statement of Claim filed in this action on 26 September 2012) by:
(a)making a copy of;
(b)causing to be seen in public;
(c)communicating to the public,
the whole or a substantial part of those cinematograph films, without the licence of the First Applicant or the Second Applicant.
The First Respondent has infringed the copyright in cinematograph films contained in the East Asia Music (Holdings) Limited ('EAM') works (which are set out at Tab 2 of the List of Works attached to the Statement of Claim filed in this action on 26 September 2012) by:
(a)making a copy of;
(b)causing to be seen in public;
(c)communicating to the public,
the whole or a substantial part of those cinematograph films, without the licence of the First Applicant or the Second Applicant.
The First Respondent has infringed the copyright in cinematograph films contained in the Emperor Entertainment (Hong Kong) Limited ('EEG') works (which are set out at Tab 3 of the List of Works attached to the Statement of Claim filed in this action on 26 September 2012) by:
(a)making a copy of;
(b)causing to be seen in public;
(c)communicating to the public,
the whole or a substantial part of those cinematograph films, without the licence of the First Applicant or the Second Applicant.
The First Respondent has infringed the copyright in cinematograph films contained in the Universal Music Limited ('UML') works (which are set out at Tab 4 of the List of Works attached to the Statement of Claim filed in this action on 26 September 2012) by:
(a)making a copy of;
(b)causing to be seen in public;
(c)communicating to the public,
the whole or a substantial part of those cinematograph films, without the licence of the First Applicant or the Second Applicant.
The First Respondent has infringed the copyright in cinematograph films contained in the East Asia Record Production Company Limited ('EAR') works (which are set out at Tab 5 of the List of Works attached to the Statement of Claim filed in this action on 26 September 2012) by:
(a)making a copy of;
(b)causing to be seen in public;
(c)communicating to the public,
the whole or a substantial part of those cinematograph films, without the licence of the First Applicant or the Second Applicant.
The First Respondent has infringed the copyright in cinematograph films contained in the Hummingbird Music Limited ('HBL') works (which are set out at Tab 6 of the List of Works attached to the Statement of Claim filed in this action on 26 September 2012) by:
(a)making a copy of;
(b)causing to be seen in public;
(c)communicating to the public,
the whole or a substantial part of those cinematograph films, without the licence of the First Applicant or the Second Applicant.
The infringements referred to in paragraphs 1 to 6 above, taken together with other likely infringements of the First Respondent, were on a commercial scale for the purposes of s.115(5)(d) of the Act.
The Second Respondent authorised the infringements referred to in paragraphs 1 to 6 above.
THE COURT ORDERS THAT:
The Applicants be granted judgment in default of appearance against the First and Second Respondents and that judgment be entered accordingly.
The Applicants be awarded damages in the amount of $95,299.56 pursuant to s.115(2) of the Act against the First and Second Respondents.
The Applicants be awarded costs in the amount of $8,605.00 against the First and Second Respondents.
Interest to the date of judgment pursuant to s.76 of the Federal Circuit Court Act 1999 (Cth) to be fixed in the amount of $4,422.94.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT ADELAIDE |
ADG 216 of 2012
| TOP PLUS PTY LTD |
First Applicant
| K-BOX PTY LTD ACN 105 220 157 |
Second Applicant
And
| MUSE ENTERTAINMENT PTY LTD |
First Respondent
| CHARLIE JI |
Second Respondent
| GOLD TYPHOON ENTERTAINMENT LIMITED |
Third Respondent
| EAST ASIA MUSIC (HOLDINGS) LIMITED |
Fourth Respondent
| EMPEROR ENTERTAINMENT (HONG KONG) LIMITED |
Fifth Respondent
| UNIVERSAL MUSIC LIMITED |
Sixth Respondent
| EAST ASIA RECORD PRODUCTION COMPANY LIMITED |
Seventh Respondent
| HUMMINGBIRD MUSIC LIMITED |
Eighth Respondent
REASONS FOR JUDGMENT
(settled ex-tempore reasons)
On the 24 September 2012, the applicant filed an Initiating Application seeking relief under ss.115 and 116 of the Copyright Act 1958 (“the Act”). The final orders identified in the application included declarations and injunctions together with a claim for damages or an account of profits pursuant to the Act. Interest was also pleaded as were costs.
The statement of claim runs to some 63 paragraphs with a substantial annexure to follow. The whole document comprises in excess of two hundred pages. The substantive part of the Statement of Claim is in the following terms:
“PLEADINGS:
The Applicants
1.At all material times the First Applicant:
(a)was, and still is, a company duly incorporated in Australia;
(b)is capable of suing;
(c)carried on, and still carries on, the business of licensing the copying, communication and public performance of karaoke music videos in Australia and New Zealand.
2.At all material times the Second Applicant:
(a)was, and still is, a company duly incorporated in Australia;
(b)is capable of suing;
(c)carried on, and still carries on, the business of licensing the copying, communication and public performance of karaoke music videos in South Australia under licence from the First Applicant.
The First Respondent and its director, the Second Respondent
3.At all material times the First Respondent:
(a)was, and still is, a company duly incorporated in Australia;
(b)is capable of being sued;
(c)carried on, and still carries on, the business, amongst other things, of operating commercial venues that offer karaoke singing services to the public.
4.At all material times the Second Respondent:
(a)was a director of the First Respondent;
(b)is and, at all material times, was responsible for the conduct of the First Respondent's business;
(c)further, and in the alternative, is and, at all material times, was responsible for the operation and management of the affairs of the First Respondent.
Particulars
Particulars will be provided after discovery and before trial.
The Hong Kong record companies and their works
5.At all material times the Third Respondent Gold Typhoon Entertainment Limited previously known as Gold Label Entertainment Limited (GTE):
(a)was, and still is, a company duly incorporated in Hong Kong;
(b)has its registered office in Hong Kong;
(c)is capable of being sued;
(d)carried on, and still carries on, business in Hong Kong as a record company responsible for the creation of and licensing the copying, communication and public performance of karaoke music videos, including in Australia;
(e)has a catalogue of karaoke music videos which, as at 4 December 2009, includes the karaoke music videos that are set out in Tab 1 of the accompanying document entitled 'Applicants’ Particulars' (as amended from time to time), together with any additions made thereto by way of the release of new karaoke music videos which appear on the First Applicant's website (the GTE works).
6.The GTE works have been:
(a)released in Hong Kong and Australia;
(b)further or alternatively, supplied commercially in Australia in physical VCD/DVD format or in electronic form.
7.The karaoke music videos contained in the GTE works are cinematograph films within the meaning of the Act.
8.The karaoke music videos contained in the GTE works were:
(a)made by persons who were, at the time when they were made, qualified persons within the meaning of s 84 of the Act or foreign citizens, foreign residents or foreign bodies corporate within the meaning of subreg (3) to subreg (5) of reg 4 of the Copyright (International Protection) Regulations 1969 (Commonwealth) (CIPR).
(b)further or alternatively, made in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
(c)further or alternatively, first published in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
and further were:
(d)made by GTE or, in the alternative, made by other persons, being film production companies, at the request of GTE for valuable consideration pursuant to an agreement for the making of such karaoke music videos.
9.Copyright subsists in the karaoke music videos contained in the GTE works.
10.GTE is the owner of the copyright in the karaoke music videos contained in the GTE works.
Particulars
Ownership of copyright is determined by s 98 of the Act. This is the consequence of s 184 and s 249 of the Act and reg 4 of the CIPR.
11.At all material times the Fourth Respondent East Asia Music (Holdings) Ltd (EAM):
(a)was, and still is, a company duly incorporated in Hong Kong;
(b)has its registered office in Hong Kong;
(c)is capable of being sued;
(d)carried on, and still carries on, business in Hong Kong as a record company responsible for the creation of and licensing the copying, communication and public performance of karaoke music videos, including in Australia;
(e)has a catalogue of karaoke music videos which, as at 4 December 2009, includes the karaoke music videos that are set out in Tab 2 of the accompanying document entitled 'Applicants’ Particulars' (as amended from time to time), together with any additions made thereto by way of the release of new karaoke music videos (the EAM works).
12.The EAM works have been:
(a)released in Hong Kong and Australia;
(b)further or alternatively, supplied commercially in Australia in physical VCD/DVD format or in electronic form.
13.The karaoke music videos contained in the EAM works are cinematograph films within the meaning of the Act.
14.The karaoke music videos contained in the EAM works were:
(a)made by persons who were, at the time when they were made, qualified persons within the meaning of s 84 of the Act or foreign citizens, foreign residents or foreign bodies corporate within the meaning of subreg (3) to subreg (5) of reg 4 of the CIPR;
(b)further or alternatively, made in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
(c)further or alternatively, first published in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
and further were:
(d)made by EAM or, in the alternative, made by other persons, being film production companies, at the request of EAM for valuable consideration pursuant to an agreement for the making of such karaoke music videos.
15.Copyright subsists in the karaoke music videos contained in the EAM works.
16.EAM is the owner of the copyright in the karaoke music videos contained in the EAM works.
Particulars
Ownership of copyright is determined by s 98 of the Act. This is the consequence of s 184 and s 249 of the Act and reg 4 of the CIPR.
17.At all material times the Fifth Respondent Emperor Entertainment (Hong Kong) Ltd (EEG):
(a)was, and still is, a company duly incorporated in Hong Kong;
(b)has its registered office in Hong Kong;
(c)is capable of being sued;
(d)carried on, and still carries on, business in Hong Kong as a record company responsible for the creation of and licensing the copying, communication and public performance of karaoke music videos, including in Australia;
(e)has a catalogue of karaoke music videos which, as at 4 December 2009, includes the karaoke music videos that are set out in Tab 3 of the accompanying document entitled 'Applicants’ Particulars' (as amended from time to time), together with any additions made thereto by way of the release of new karaoke music videos (the EEG works).
18.The EEG works have been:
(a)released in Hong Kong and Australia;
(b)further or alternatively, supplied commercially in Australia in physical VCD/DVD format or in electronic form.
19.The karaoke music videos contained in the EEG works are cinematograph films within the meaning of the Act.
20.The karaoke music videos contained in the EEG works were:
(a)made by persons who were, at the time when they were made, qualified persons within the meaning of s 84 of the Act or foreign citizens, foreign residents or foreign bodies corporate within the meaning of subreg (3) to subreg (5) of reg 4 of the CIPR;
(b)further or alternatively, made in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
(c)further or alternatively, first published in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
and further were:
(d)made by EEG or, in the alternative, made by other persons, being film production companies, at the request of EEG for valuable consideration pursuant to an agreement for the making of such karaoke music videos.
21.Copyright subsists in the karaoke music videos contained in the EEG works.
22.EEG is the owner of the copyright in the karaoke music videos contained in the EEG works.
Particulars
Ownership of copyright is determined by s 98 of the Act. This is the consequence of s 184 and s 249 of the Act and reg 4 of the CIPR.
23.At all material times the Sixth Respondent Universal Music Ltd (UML):
(a)was, and still is, a company duly incorporated in Hong Kong;
(b)has its registered office in Hong Kong;
(c)is capable of being sued;
(d)carried on, and still carries on, business in Hong Kong as a record company responsible for the creation of and licensing the copying, communication and public performance of karaoke music videos, including in Australia;
(e)has a catalogue of karaoke music videos which, as at 4 December 2009, includes the karaoke music videos that are set out in Tab 4 of the accompanying document entitled 'Applicants’ Particulars' (as amended from time to time), together with any additions made thereto by way of the release of new karaoke music videos which appear on the First Applicant's website (the UML works).
24.The UML works have been:
(a)released in Hong Kong and Australia;
(b)further or alternatively, supplied commercially in Australia in physical VCD/DVD format or in electronic form.
25.The karaoke music videos contained in the UML works are cinematograph films within the meaning of the Act.
26.The karaoke music videos contained in the UML works were:
(a)made by persons who were, at the time when they were made, qualified persons within the meaning of s 84 of the Act or foreign citizens, foreign residents or foreign bodies corporate within the meaning of subreg (3) to subreg (5) of reg 4 of the CIPR;
(b)further or alternatively, made in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
(c)further or alternatively, first published in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
and further were:
(d)made by UML or, in the alternative, made by other persons, being film production companies, at the request of UML for valuable consideration pursuant to an agreement for the making of such karaoke music videos.
27.Copyright subsists in the karaoke music videos contained in the UML works.
28.UML is the owner of the copyright in the karaoke music videos contained in the UML works.
Particulars
Ownership of copyright is determined by s 98 of the Act. This is the consequence of s 184 and s 249 of the Act and reg 4 of the CIPR.
29.At all material times the Seventh Respondent East Asia Record Production Company Limited (EAR):
(a)was, and still is, a company duly incorporated in Hong Kong;
(b)has its registered office in Hong Kong;
(c)is capable of being sued;
(d)carried on, and still carries on, business in Hong Kong as a record company responsible for the creation of and licensing the copying, communication and public performance of karaoke music videos, including in Australia;
(e)has a catalogue of karaoke music videos which, as at 4 December 2009, includes the karaoke music videos that are set out in Tab 5 of the accompanying document entitled 'Applicants’ Particulars' (as amended from time to time), together with any additions made thereto by way of the release of new karaoke music videos which appear on the First Applicant's website (the EAR works).
30.The EAR works have been:
(a)released in Hong Kong and Australia;
(b)further or alternatively, supplied commercially in Australia in physical VCD/DVD format or in electronic form.
31.The karaoke music videos contained in the EAR works are cinematograph films within the meaning of the Act.
32.The karaoke music videos contained in the EAR works were:
(a)made by persons who were, at the time when they were made, qualified persons within the meaning of s 84 of the Act or foreign citizens, foreign residents or foreign bodies corporate within the meaning of subreg (3) to subreg (5) of reg 4 of the CIPR;
(b)further or alternatively, made in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
(c)further or alternatively, first published in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
and further were:
(d)made by EAR or, in the alternative, made by other persons, being film production companies, at the request of EAR for valuable consideration pursuant to an agreement for the making of such karaoke music videos.
33.Copyright subsists in the karaoke music videos contained in the EAR works.
34.EAR is the owner of the copyright in the karaoke music videos contained in the EAR works.
Particulars
Ownership of copyright is determined by s 98 of the Act. This is the consequence of s 184 and s 249 of the Act and reg 4 of the CIPR.
35.At all material times the Eighth Respondent Hummingbird Music Limited (HBL):
(a)was, and still is, a company duly incorporated in Hong Kong;
(b)has its registered office in Hong Kong;
(c)is capable of being sued;
(d)carried on, and still carries on, business in Hong Kong as a record company responsible for the creation of and licensing the copying, communication and public performance of karaoke music videos, including in Australia;
(e)has a catalogue of karaoke music videos which includes the karaoke music videos that are set out in Tab 6 of the accompanying document entitled 'Applicants’ Particulars' (as amended from time to time), together with any additions made thereto by way of the release of new karaoke music videos which appear on the First Applicant's website which appear on the First Applicant's website (the HBL works).
36.The HBL works have been:
(a)released in Hong Kong and Australia;
(b)further or alternatively, supplied commercially in Australia in physical VCD/DVD format or in electronic form.
37.The karaoke music videos contained in the HBL works are cinematograph films within the meaning of the Act.
38.The karaoke music videos contained in the HBL works were:
(a)made by persons who were, at the time when they were made, qualified persons within the meaning of s 84 of the Act or foreign citizens, foreign residents or foreign bodies corporate within the meaning of subreg (3) to subreg (5) of reg 4 of the CIPR;
(b)further or alternatively, made in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
(c)further or alternatively, first published in Hong Kong, being a country referred to in reg 4(1) of the CIPR;
and further were:
(d)made by HBL or, in the alternative, made by other persons, being film production companies, at the request of HBL for valuable consideration pursuant to an agreement for the making of such karaoke music videos.
39.Copyright subsists in the karaoke music videos contained in the HBL works.
40.HBL is the owner of the copyright in the karaoke music videos contained in the HBL works.
Particulars
Ownership of copyright is determined by s 98 of the Act. This is the consequence of s 184 and s 249 of the Act and reg 4 of the CIPR.
The First Applicant as exclusive licensee in Australia and New Zealand
41.GTE granted to the First Applicant an exclusive licence with respect to the copyright in the GTE works in Australia and New Zealand during the period from 1 September 2005 to 31 December 2009.
Particulars
The exclusive licence is in writing and is recorded in:
(i) a document entitled 'Agreement' dated 1 September 2005 between GTE (as licensor) and the First Applicant (as licensee);
(ii) a document entitled 'Agreement' dated 1 September 2007 between GTE (as licensor) and the First Applicant (as licensee);
(iii) an authorisation letter dated 18 February 2009;
and the First Applicant claims commercial confidentiality in respect of the licence and royalty fees contained in those agreements.
42.EAM granted to the First Applicant an exclusive licence with respect to the copyright in the EAM works in Australia and New Zealand during the period from 1 September 2005 to 31 December 2009.
Particulars
The exclusive licence is in writing and is recorded in:
(i) a document entitled 'Karaoke Licence Agreement' dated 1 September 2005 between EAM (as licensor) and the First Applicant (as licensee);
(ii) a document entitled 'Karaoke Licence Agreement' dated 1 September 2007 between EAM (as licensor) and the First Applicant (as licensee);
(iii) an authorisation letter dated 26 February 2009;
and the First Applicant claims commercial confidentiality in respect of the licence and royalty fees contained in those agreements.
43.EEG granted to the First Applicant an exclusive licence with respect to the copyright in the EEG works in Australia and New Zealand during the period from 9 September 2005 to 31 December 2012.
Particulars
The exclusive licence is in writing and is recorded in:
(i) a document entitled 'Agreement' dated 9 September 2005 between EEG (as licensor) and the First Applicant (as licensee);
(ii) a document entitled 'Agreement' dated 9 July 2007 between EEG (as licensor) and the First Applicant (as licensee);
(iii) a document entitled 'Supplementary Agreement' dated 1 January 2009 between EEG (as licensor) an the First Applicant (as licensee);
(iv) a document entitled 'Agreement' dated 16 March 2009 between EEG (as licensor) an the First Applicant (as licensee);
(v) an authorisation letter dated 18 March 2009;
and the First Applicant claims commercial confidentiality in respect of the licence and royalty fees contained in those agreements.
44.UML granted to the First Applicant an exclusive licence with respect to the copyright in the UML works in Australia and New Zealand during the period from 10 March 2006 to 1 January 2013.
Particulars
The exclusive licence is in writing and is recorded in:
(i) a document entitled 'Agreement' dated 10 March 2006 between UML (as licensor) and the First Applicant (as licensee);
(ii) a document entitled 'First Supplementary Agreement' dated 2 August 2007 between UML (as licensor) and the First Applicant (as licensee);
(iii) a document entitled 'Agreement' dated 1 January 2009 between UML (as licensor) and the First Applicant (as licensee);
(iv) an authorisation letter dated 16 February 2009;
(v) a document entitled 'Agreement' dated 1 January 2011 between UML (as licensor) and the First Applicant (as licensee);
and the First Applicant claims commercial confidentiality in respect of the licence and royalty fees contained in those agreements.
45.EAR granted to the First Applicant an exclusive licence with respect to the copyright in the EAR works in Australia and New Zealand during the period from 1 September 2005 to 31 December 2012.
Particulars
The exclusive licence is in writing and is recorded in:
(i) a document entitled 'Karaoke Licence Agreement' dated 1 September 2005 between EAR (as licensor) and the First Applicant (as licensee);
(ii) a document entitled 'Karaoke Licence Agreement' dated 1 December 2007 between EAR (as licensor) and the First Applicant (as licensee);
(iii) a document entitled 'Karaoke Licence Agreement' dated 1 January 2009 between EAR (as licensor) and the First Applicant (as licensee);
(iv) an authorisation letter dated 25 February 2009;
(v) a document entitled 'Karaoke Licence Agreement' dated 1 January 2010 between EAR (as licensor) and the First Applicant (as licensee);
(vi) a document entitled 'Agreement' dated 1 January 2011 between EAR (as licensor) and the First Applicant (as licensee);
(vii) an authorisation letter dated 1 January 2012;
and the First Applicant claims commercial confidentiality in respect of the licence and royalty fees contained in those agreements.
46.HBL granted to the First Applicant an exclusive licence with respect to the copyright in the HBL works in Australia and New Zealand during the period from 1 January 2011 to 31 December 2011.
Particulars
The exclusive licence is in writing and is recorded in:
(i) a document entitled 'Karaoke Licence Agreement' dated 1 January 2011 between HBL (as licensor) and the First Applicant (as licensee);
(ii) a document entitled 'Karaoke Licence Agreement' dated 1 January 2012 between HBL (as licensor) and the First Applicant (as licensee);
and the First Applicant claims commercial confidentiality in respect of the licence and royalty fees contained in those agreements.
47.By reason of the matters pleaded in paragraphs 41 to 46 hereof:
(a)at all material times the First Applicant had, and still has (relevantly as identified below), an exclusive licence in Australia and New Zealand with respect to the copyright in each of:
(i) the GTE works, from 1 September 2005 to 31 December 2009;
(ii) the EAM works, from 1 September 2005 to 31 December 2009;
(iii) the EEG works, from 9 September 2005 to date;
(iv) the UML works, from 10 March 2006 to 1 January 2013;
(v) the EAR works, from 1 September 2005 to 31 December 2012;
(vi) the HBL works, from 1 January 2011 to 31 December 2012;
(collectively referred to herein as 'the Licensed Content');
(b)at all material times the First Applicant was, and still is (as identified above), the exclusive licensee in respect of the Licensed Content for the purposes of the Act.
The exclusive sub-licence to the Second Applicant
48.The First Applicant granted to the Second Applicant an exclusive sub-licence with respect to the copyright in the Licensed Content in South Australia during the period from 1 January 2009 to 31 December 2009 ('the Exclusive Sub-Licence').
Particulars
The Exclusive Sub-Licence is written and is dated 20 April 2009;
and the Applicants claim commercial confidentiality in respect of the licence and royalty fees contained in those agreements.
49.By reason of the matters pleaded in paragraph 48 hereof, at all material times the First Applicant and the Second Applicant were the exclusive sub-licensees in respect of the Licensed Content for the state of South Australia for the purposes of the Act.
Infringement
50.From a date not known to the Applicants, but at least since July 2009, the First Respondent has operated at least one commercial venue offering karaoke singing services to the public.
Particulars
The First Respondent operates a karaoke restaurant or bar with 18 singing studios or rooms known as Muse Bar and Karaoke situated at premises at 128 Hindley Street, Adelaide, South Australia.
51.In the course of its business referred to in paragraph 50 above the First Respondent has:
(a)made copies of;
(b)caused to be seen in public;
(c)communicated to the public;
the whole or a substantial part of karaoke music videos contained in the Licensed Content.
Particulars
The best particulars the Applicants can provide pending discovery in these proceedings are set out in Tab 7 of the accompanying document entitled 'Applicants’ Particulars' (as amended from time to time).
52.Since July 2009, the conduct of the First Respondent pleaded in paragraphs 50 and 51 above was done without the licence of the Applicants.
Particulars
The Applicants reply on the following particulars:
(i) Exclusive Licence Agreement between the First and Second Applicants, dated 20 April 2009;
(ii) Letter to First Respondent dated 1 January 2009 confirming the First Applicant's authorisation of the Second Applicant as exclusive sub-licensee, of the requirement for the payment of licence fees and the Second Applicant's rights to collect these;
(iii) By letter dated 20 November 2009, the First Applicant forwarded its 2010 Information Kit to the First Respondent;
(iv) On 1 January 2010, a letter reminding the First Respondent of the First Applicant's rights as exclusive licensee and the requirement for payment of licence fees;
(v) On 18 January 2010, a letter again warning the First Respondent of the First Applicant's rights as exclusive licensee and the requirement for payment of licence fees;
(vi) On 4 March 2010, the First Applicant caused an advertisement to be published, partly in English and partly in Chinese, in National Newspaper, advising of the First Applicant's exclusive licence and the requirement for the payment of licence fees;
(vii) By letter dated 4 April 2011, the First Applicant forwarded its 2011 Information Kit to the First Respondent;
(viii) By letter dated 18 May 2011, the First Applicant sent a letter reminding the First Respondent of the First Applicant's rights as exclusive licensee and the requirement for payment of licence fees;
(ix) By letter dated 1 June 2011, the First Applicant sent a letter again warning the First Respondent of the First Applicant's rights as exclusive licensee and the requirement for payment of licence fees;
(x) By letter dated 1 February 2012, the First Applicant sent to the First Respondent a letter enclosing the First Applicant's 2012 Information Kit; and
(xi) On 16 June 2011, the First Applicant caused an advertisement to be published in English in a national magazine (the One Magazine), advising of the First Applicant's exclusive licence and the requirement for the payment of licence fees.
(xii) Letter of demand 27 February 2012 from Thomsons Lawyers for the First and Second Applicants to the First and Second Respondents.
53.By reason of the matters pleaded in paragraphs 50, 51 and 52 above, the First Respondent has infringed the copyright in the Licensed Content.
Authorisation of infringement
54.By reason of paragraphs 4, 50, 51, 52 and 53 herein and the particulars thereto, the Second Respondent:
(a)knew, ought to have known or had reason to anticipate or suspect that the acts referred to in paragraph 51 occurred or were likely to have occurred;
(b)had the power to prevent the acts referred to in paragraph 51 herein;
55.The Second Respondent failed to prevent or take any reasonable steps to prevent the acts referred to in paragraph 51 herein from occurring.
Particulars
Particulars will be supplied after discovery and before trial.
56.By reason of the matters referred to in paragraphs 54 and 55 herein and the particulars thereto, the Second Respondent has authorised the First Respondent’s infringement of copyright referred to in paragraph 51 herein.
57.By reason of the infringements pleaded in paragraph 50, 51, 52 and 53 above, each of the Applicants has suffered, or is likely to suffer, loss and damage, including loss and damage on a commercial scale.
58.By reason of the infringements pleaded in paragraph 50, 51, 52 and 53 above, the First Respondent has wrongfully made profits which it would be unconscionable for it to retain.
Particulars to paragraphs 57 and 58
The best particulars which the Applicants can presently provide are as follows:
(i) the loss and damage suffered by the First Applicant and/or the Second Applicant includes the amount of licence fees which they would otherwise have received from the First Respondent, as follows:
(A)in respect of 2009, $26,098.56 inclusive of GST (18 rooms x $7.88 x 184 days);
(B)in respect of 2010, $36,135.00 inclusive of GST (18 rooms x $5.50 x 365 days);
(C)in respect of 2011, $36,135.00 inclusive of GST (18 rooms x $5.50 x 365 days);
(D)in respect of 2012 (to 31 August 2012), $28,868.40 inclusive of GST (18 rooms x $6.60 x 243 days)
(ii) the profits made by the First Respondent include the amount of moneys received by the First Respondent from customers of the First Respondent's business in respect of the use of the Licensed Content during the period since July 2009;
(iii) the profits made by the Second and Third Respondents include the amount of moneys received by them from the First Respondent during the period since July 2009;
(iv) further particulars may be provided after discovery.
Flagrancy
59.The First and Second Respondents have done the acts alleged against them:
(a)flagrantly;
(b)knowing that copyright subsisted in the karaoke music videos contained in the Licensed Content;
(c)knowing that the acts concerned constituted an infringement of the copyright in the karaoke music videos contained in the Licensed Content;
(d)in reckless disregard of the infringement of the copyright;
(e)intending that a commercial or other benefit would accrue to them.
Particulars
The Applicants repeat the particulars to paragraphs 50 to 56 inclusive above.
60.By reason of the matters pleaded in paragraphs 50 to 56 inclusive above, the Court, in awarding damages for infringement of copyright, should award additional damages under s 115(4) of the Act.
Section 115(6) relief
61.By reason of the matters pleaded in paragraphs 50 to 56 inclusive above, to the extent that the infringements of copyright proved by the Applicants involved the communication of the whole or a substantial part of any of the karaoke music videos contained in the Licensed Content, it is likely that there were other such infringements of copyright.
62.Taken together, the proved infringements of copyright and the other infringements of copyright pleaded in paragraphs 50 to 56 inclusive above were on a commercial scale.
Relief
63.The Applicants claim the relief specified in the Application.”
The applicants have helpfully provided the Court with an Outline of Submission.
The first and second applicants are respectively the exclusive licensee and sub-licensee of the copyright in recordings that have been given the name, “GTE Works”. GTE Works is owned by Golden Typhoon Entertainment Ltd, namely, the third respondent referred to in paragraphs 47, 49 and 10 of the statement of claims.
The exclusive licensee and sub-licensee of the copyright in the recordings known as “EAM Works”, standing for East Asia Music (Holdings), is the fourth respondent referred to in paragraphs 47, 49 and 16 of the statement of claim.
The exclusive licensee and sub-licensee of the copyright in the recordings known as “EEG Works”, standing for Emperor Entertainment, is the fifth respondent referred to in paragraphs 47, 49 and 22 of the statement of claim.
The exclusive licensee and sub-licensee of the copyright in the recordings known as “UML Works”, standing for Universal Music Limited, which is the sixth respondent and referred to in paragraphs 47, 49 and 28 of the statement of claim.
The exclusive licensee and sub-licensee of the copyright in recordings known as the “EAR Works”, standing for East Asia Record Production Company, is the seventh respondent referred to in paragraphs 47, 49 and 34 of the statement of claim.
The exclusive licensee and sub-licensee of the copyright in the recordings known as “HBL Works”, standing for Hummingbird Music, is the eighth respondent, referred to in paragraphs 47, 49 and 40 of the statement of claim.
The applicant seeks default judgment pursuant to rule 13.03B(2)(c) of the Federal Circuit Court Rules against the first and second respondents in terms of its application for judgment and accompanying draft minutes of order.
Rule 13.03B of the rules provides as follows in subparagraph (2):
“13.03B Orders on default
…
(2)If a respondent is in default, the Court may:
(a)order that a step in the proceeding be taken within the time limited in the order; or
(b)if the claim against the respondent is for a debt or liquidated damages—grant leave to the applicant to enter judgment against the respondent for:
(i) the debt or liquidated damages; and
(ii) if appropriate—costs; or
(c)if the proceeding was commenced by an application supported by a statement of claim or the Court has ordered that the proceeding continue on pleadings—give judgment against the respondent for the relief that:
(i) the applicant appears entitled to on the statement of claim; and
(ii) the Court is satisfied it has power to grant; or
(d)give judgment or make any other order against the respondent; or
(e)make an order mentioned in paragraph (b), (c) or (d) to take effect if the respondent does not take a step ordered by the Court in the proceeding in the time limited in the order.”
This rule is similar to the rule 5.23 of the Federal Court Rules.
There are a number of decisions that have been made under the Federal Court Rule that are helpful in determining what approach should be adopted in this Court.
The condition in FCC rule 13.03B(2)(c) that the Court be satisfied that the applicant is entitled to relief sought in the statement of claim before judgment is entered against the respondent (and in rule 5.23(2)(c) of the Federal Court Rule) does not require proof by way of evidence of the applicants’ claim but this does not preclude such evidence being adduced.[1] It is merely required that on the face of the statement of claim there is a claim for the relief sought that the Court has jurisdiction to grant.[2]
[1] Australian Competition and Consumer Commission (ACCC) v Dataline.Net.Au Pty Limited (2006) 236 ALR 665; Australian Communications and Media Authority v Mobilgate Limited (No 2) [2009] FCA 887; Yeo v Damos Earthmoving Proprietary Limited,Re Beachwood Developments Proprietary Limited (in liquidation) [2011] FCA 1129
[2] Arthur v Vaupotic Investments Proprietary Limited [2005] FCA 433; Australian Competition and Consumer Commission v 1cellnet LCC [2005] FCA 856l; Luna Park Sydney Pty Limited (ACN 102 907 184) v Bose [2006] FCA 94; CNIP Pty Limited v Chan & Naylor Norwest Pty Limited(No 2) [2011] FCA 1170; Speedo Holdings BV v Evans (No 2) [2011] FCA 1227
An applicant will appear to be entitled to the relief sought in the statement of claim if each element of the relevant civil wrong is properly and discreetly pleaded.[3]
[3] Macquarie Bank Limited v Seagle (2005) 146 FCR 400; Macquarie Bank Limited v Seagle [2008] FCA 1417
The Court may permit recourse to further limited evidence but cannot admit evidence that would alter the case as pleaded. Without requiring proof by the applicant of the applicant’s claim, judgment may be entered against a respondent even when the respondent has filed a defence, where the respondent has failed to pursue its defence with due diligence. The respondents have filed a defence but now appear to have abandoned the litigation. As a result, the relief sought should be granted[4]
[4] Luna Park Sydney Pty Limited (ACN 102 907 184) v Bose [2006] FCA 94
The discretion can be exercised where there has been a failure to defend the claim with due diligence that does not amount to non-compliance with a Court order. In the present case the situation is that there has been non-compliance with a Court order. The default should not be minor but should constitute a serious failure.[5]
[5] Deppro Pty Limited v Daly [2006] FCA 1727; Jianshe Southern Pty Limited (ACN 007 031 905) v Turnbull Cooktown Pty Limited (ACN 069 894 275) (No 2) [2007] FCA 903; Acohs Pty Limited v Ucorp Pty Limited [2009] FCA 577
The authorities point out that if the order is made, it gives the applicant, as is obviously the case, a special privilege to obtain judgment without proof of the applicant’s claim. That is a severe disadvantage to the respondent. As a result, the rules governing default judgments are strictly construed and the discretion must be exercised cautiously.[6]
[6] Clayton v Thomas C Denton Pty Limited (1972) VR 46
An instance of a court making an order under the Federal Court equivalent of our rule, 13.03(b) is the case of Bell v Steele(No 2) [2012] FCA 62 in which the respondent had not filed a defence or played any part in the proceeding. The orders were in the nature of declarations that the applicant owned the copyright in two cinemagraphic films. Historically, declaratory relief has been made only on the basis of evidence. The reason for this, is that declaratory relief may have an effect on individuals beyond the scope of the particular proceedings. That is something I need to consider. In the present case, the declarations and, for that matter, the injunctions that I am considering making will not affect anybody other than the parties.[7]
[7] Bank of Kuwait and the Middle East v Ship MV “Mawashi Al Gasseem”(No 2) (2007) 240 ALR 120
That said, declaratory relief may be granted in the circumstances of the case where its affect can be confined to the proceedings. That is obviously the case here. It will only affect the parties. It will not be extending to persons who are not parties to the action. It is now established that refusals by the courts in the past to make declarations in cases of default and deemed admissions were based on a practise not a rule of law. I am confident that I should make the declarations that are being sought here.[8]
[8] Australian Competition and Consumer Commission (ACCC) v Dataline.Net.Au Proprietary Limited (2006) 236 ALR 665 which is the case I referred to a little earlier, the Bank of Kuwait and the Middle East v Ship MV “Mawashi Al Gasseem” (No 2) (2007) 240 ALR 120 case that I have referred to a little earlier and the case of Yeo v Damos Earthmoving Proprietary Limited, Re Beachwood Developments Proprietary Limited (in liquidation) [2011] FCA 1129 which I referred to a little earlier
I note that the applicants have complied with section 7 of the Civil Dispute Resolution Act2011, that is the genuine steps statement that had been filed in this action. I note also that the respondents that we are concerned with here have been properly served with the application, the genuine steps statement and the statement of claim.
As I mentioned a little earlier, the respondents filed a defence. They filed that defence on 30 November 2012, and the applicants filed a reply to that defence on 21 December 2012.
The matter first came before me on 18 October 2012. At that time, a Mr Fah appeared for the first and second respondents. He was the solicitor acting for the first and second respondents. I made orders on 18 October 2012 as follows:
“(1)The respondents to file and serve their defences on or before 30 November 2012.
(2)The applicants to file and serve any reply to the defences filed and served pursuant to order 1 on or before 14 December 2012.
(3)Any application in a case for leave to serve the initiating proceedings in this proceeding outside Australia be filed on or before 23 November 2012 and made returnable before the court on the next court date.
(4)That further consideration of the matter was adjourned to 18 December 2012.”
When the matter came before me on the next occasion, the first and second respondents were again represented by Mr Fah. I made orders on that day that the applicants were to file their reply to the defences by 21 December. The next order was that applicant’s obligation to provide documents to each of the respondents if sought pursuant to rule 14.10 of the Federal Magistrates Court Rules be suspended until further order. The next order was notwithstanding any other order to the contrary, it is ordered that the applicant provide the first and second respondents with six samples of each of the third to eighth respondents’ original karaoke music videos and evidence of the first and second respondents’ infringement thereof by 21 December 2012. The next order was that the matter be referred to mediation. And the next order was simply adjourning the matter to 20 March 2013.
The matter came back before me next on 20 March 2013. On that occasion, Mr Sadler appeared as he, I think, had done on previous occasions for the applicants but there was no appearance on behalf of the respondents. I made an order on that occasion that the matter be adjourned to today for directions. On 20 March 2013, I also made an order that the parties must attend in person on the adjourned date or default orders may be made. The respondents have not appeared today.
The first respondent is a natural person. The second respondent is a company but the company is unrepresented. There were solicitors acting for the first and second respondent. The solicitors for the first, second and third respondents filed notices that they are no longer acting, on 12 March 2013. To make the orders that are sought today, I have to be satisfied that the applicant appears entitled to the relief that is in the draft minute of order on the basis of the statement of claim that is before me.
I am satisfied that I have the power to grant the orders that are sought today. I have compared the minute of order with the provisions in the paragraphs in the statement of claim and I am satisfied that the relief that the applicants seek is justified on the basis of the particulars that have been provided in the statement of claim. On that basis, I propose to make the orders sought subject to some amendments that may be necessary as a result of certain information that was contained in the defence that had been filed. This information suggested that the respondent had not carried on business for as long as had been anticipated when the applicants calculated the damages that should be sought.
I consider it appropriate that the respondents pay the applicant’s costs of the litigation as well as interest on the damages that are claimed and awarded.
I propose to adjourn the matter for a short period for the applicant to prepare a minute of order consistent with these reasons.
I make the orders to be found at the beginning of these reasons.
I certify that the preceding thirty (30) paragraphs are a true copy of the reasons for judgment of Judge Simpson
Associate:
Date: 18 June 2013
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