Universal Music Australia Pty Ltd v N and J Nominees Pty Ltd
[2003] FMCA 575
•28 November 2003
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| UNIVERSAL MUSIC AUSTRALIA PTY LTD & ORS v N & J NOMINEES PTY LTD & ORS | [2003] FMCA 575 |
| COPYRIGHT – Sound recordings – infringing copies – urgent ex parte interlocutory injunction – restraint on distribution of infringing copies – appropriateness of issuing an injunction against an unidentified respondent considered. |
Copyright Act 1968 (Cth), s.103
Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618
Paramount Design v Awaba Group & Ots [2003] FMCA 336
Universal Music Australia Pty Ltd v Hendy Petroleum [2003] FMCA 373
| First Applicant: Second Applicant: Third Applicant: Fourth Applicant: Fifth Applicant: | UNIVERSAL MUSIC AUSTRALIA PTY LTD SONY MUSIC ENTERTAINMENT (AUSTRALIA) LIMITED WARNER MUSIC AUSTRALIA PTY LTD EMI AUSTRALIA PTY LTD BMG AUSTRALIA LIMITED |
| First Respondent: Second Respondent: Third Respondent: Fourth Respondent: Fifth Respondent: Sixth Respondent: | N & J NOMINEES PTY LTD MANOOKA PTY LTD FROSTBITES AUSTRALIA PTY LTD OZCHILL PTY LIMITED EAMONN JOSEPH McCABE JOHN DOE |
| File No: | SZ2608 of 2003 |
| Delivered on: | 28 November 2003 |
| Delivered at: | Sydney |
| Hearing date: | 28 November 2003 |
| Judgment of: | Driver FM |
REPRESENTATION
| Counsel for the Applicant: | Mr J Hennessy |
| Solicitors for the Applicant: | Gilbert + Tobin |
ORDERS
That, until further, order each of the first, second, third, fourth, fifth and sixth respondents be restrained from making or authorising the making of a copy of, the whole or a substantial part of:
(a)any music CDs released by the first applicant, or any sound recordings contained within the Universal Music Catalogue, without the licence of the first applicant;
(b)any music CDs released by the second applicant, or any sound recordings contained within the Sony Music catalogue, without the licence of the second applicant;
(c)any music CDs released by the third applicant, or any sound recordings contained with the Warner Music Catalogue, without the licence of the third applicant;
(d)any music CDs released by the fourth applicant, or any sound recordings contained with the EMI Music Catalogue, without the licence of the fourth applicant;
(e)any music CDs released by the fifth applicant, or any sound recordings contained with the BMG Music Catalogue, without the licence of the fifth applicant.
That, until further order, the first, second, third, fourth, fifth and sixth respondents be restrained from making, or authorising the making of, or selling, or by way of trade offering or exhibiting for sale or distributing for the purpose of trade or by way of trade exhibiting in public, the CDs referred to in the affidavit of Jorg Michael Speck sworn 28 November 2003 (“the Infringing CDs”).
Pending further order of the Court, delivery up of all of the Infringing CDs in the possession or control of the first, second, third, fourth, fifth and sixth respondents to a nominated representative of the applicants.
Delivery up of any records that contain a copy of, the whole or a substantial part of any music CDs released by the first, second, third, forth or fifth applicants, or any sound recordings contained within the Universal Music Catalogue, the Sony Music Catalogue, Warner Music Catalogue, EMI Music Catalogue or the BMG Music Catalogue, without the licence of the first, second, third, fourth and fifth applicants to a nominated representative of the applicants.
That time for service of these orders, the Application, and affidavit of Jorg Michael Speck sworn 28 November 2003 be abridged and service be effected by 12.00 am on 29 November 2003.
The applicants have leave to file in court this day the application returnable before the Court at 9.30am on 11 December 2003.
Service on the first to fifth respondents of these orders, the application and supporting affidavit may be effected by serving a facsimile of a sealed copy on the respondents or on any person apparently occupying or in charge of the premises known as the “Frostbite” night club within the Crown & Anchor Hotel situated at 189 Hunter Street, Newcastle.
Service on the sixth respondent of these orders, the application and supporting affidavit may be effected by serving a facsimile of a sealed copy on any person in or about the premises known as the “Frostbite” night club within the Crown & Anchor Hotel situated at 189 Hunter Street, Newcastle who the person responsible for service believes on reasonable grounds has engaged in, is engaging in or is about to engage in an act restrained by orders 1 and 2.
In addition to any service pursuant to the above orders, a sealed copy of these orders is to be served by hand on the first, second, third and fourth respondents at their registered offices within five working days.
In addition to any service pursuant to the above orders, a sealed copy of these orders is to be served by ordinary pre-paid post on the fifth respondent at his address shown on the application.
Entry of these orders be expedited.
The parties have liberty to apply on 24 hours’ notice.
Costs reserved.
THE COURT NOTES:
The undertaking by the applicants to pay to the respondents, should they be adversely affected by the interlocutory inunctions contained in these orders, such compensation (if any) as this Court thinks just, in such manner as the Court directs, this undertaking to have effect in relation to adverse affectation suffered by the respondents on or after 28 November 2003.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT SYDNEY |
SZ2608 of 2003
| UNIVERSAL MUSIC AUSTRALIA PTY LTD |
First Applicant
SONY MUSIC ENTERTAINMENT (AUSTRALIA) LIMITED
Second Applicant
WARNER MUSIC AUSTRALIA PTY LTD
Third Applicant
EMI AUSTRALIA PTY LTD
Fourth Applicant
BMG AUSTRALIA LIMITED
Fifth Applicant
And
| N & J NOMINEES PTY LTD |
First Respondent
MANOOKA PTY LTD
Second Respondent
FROSTBITES AUSTRALIA PTY LTD
Third Respondent
OZCHILL PTY LIMITED
Fourth Respondent
EAMONN JOSEPH McCABE
Fifth Respondent
JOHN DOE
Sixth Respondent
REASONS FOR JUDGMENT
(Revised from transcript)
I have before me an application for urgent ex parte orders restraining asserted breaches of the Copyright Act 1968 (Cth). The applicants are all corporations who are said to be copyright owners in sound recordings. The first five respondents are four corporations and a natural person who are said to be associated with a nightclub operating in the Crown and Anchor Hotel in Newcastle.
The sixth respondent is John Doe. The applicants put to me that orders should be made against that nominal respondent on the basis that it is not currently known with certainty who the individuals may be who may infringe the applicants’ copyright tonight and tomorrow night. The relevant facts are deposed to in the affidavit of Jorg Michael Speck sworn on 28 November 2003. I receive that affidavit. I accept that Mr Speck is qualified to give the evidence he gives concerning technical issues relating to the infringement of copyright in sound recordings and the facts said to be relevant to the asserted actual and threatened breaches of copyright in this case.
The questions relevant to the granting of an interlocutory injunction in copyright proceedings were considered by Federal Magistrate McInnis in the case of Paramount Design v Awaba Group & Ors [2003] FMCA 336. In paragraphs 16 to 18 of his judgment His Honour deals with the relevant law. I adopt, with respect, His Honour's reasoning. The relevant considerations are whether there is a serious issue to be tried and the balance of convenience. The question of the balance of convenience may also be expressed as what the interests of justice require in the circumstances of the case.
There is also a useful discussion on the subject in the CCH Federal Magistrates Court Practice Service commencing at page 40,304. The learned authors on that page refer to the decision of the High Court in Beecham Group Limited v Bristol Laboratories Pty Limited (1968) 118 CLR 618 at 622 to 623 where the relevant principles are set out. The expression of those relevant principles is consistent, in my view, with the description given by Federal Magistrate McInnis in Paramount Design.
I have also had regard to the decision of Federal Magistrate Raphael in Universal Music Australia Pty Ltd v Hendy Petroleum [2003] FMCA 373. It is apparent from that decision and from the terms of the Copyright Act itself that copyright can subsist in a sound recording. The applicants assert ownership of the copyright in a number of sound recordings that they have reason to believe have been copied without licence and that infringing copies have therefore been made. The applicants have also reason to believe, based upon information received, that infringing copies are likely to be distributed at the Frostbite Nightclub operating out of the Crown and Anchor Hotel in Newcastle tonight and tomorrow night.
It appears from the affidavit of Mr Speck that some 1,000 blank CD covers have been distributed by persons associated with the nightclub with a written promise that if the recipients of the blank CD covers attend the nightclub tonight or tomorrow night to attend a performance by a disc jockey at the nightclub they will receive a free CD to be put in their CD cover. If that action occurs it is reasonably arguable that an infringement of s.103 of the Copyright Act will occur. That may be so if some fee is charged for entry to the nightclub or if drinks are sold at the nightclub. The first is certainly possible; the second is highly likely. In either circumstance, in my view, it is at least reasonably arguable that the operators of the nightclub would be engaged in trade for the purposes of s.103 of the Copyright Act.
It is unnecessary and indeed inappropriate to reach any firm conclusions on the issues of fact and law. It is sufficient that there be a serious issue to be tried. I am satisfied that there is a serious issue both in relation to the making of infringing copies and in relation to other dealings which would amount to a breach of s.103 of the Copyright Act.
As to the question of why an ex parte injunction is required, I am satisfied on the affidavit of Mr Speck and Mr Hennessy's submissions that there is what the Americans describe as a clear and present danger. If there is to be a breach of s.103 of the Copyright Act, it appears that the breach will take place today and tomorrow. The applicants have taken appropriate steps in the form of a letter dated 27 November 2003 to the manager of the Crown and Anchor Hotel and operator of the Frostbite Nightclub to place the respondents on notice that the applicants allege infringements of copyright to have occurred or to be threatened and that they intend to take action to prevent further infringement.
I am satisfied that the applicants have discharged the high duty upon them of full and frank disclosure in ex parte proceedings. I am also satisfied that an interlocutory injunction is reasonably required. As to the balance of convenience or the interests of justice, I am persuaded that a remedy in damages is unlikely to be sufficient for the applicants. Nothing is presently known of the financial circumstances of the respondents. Some may be able to pay damages; some may not. More importantly, however, the applicants reasonably seek to prevent infringements of s.103 of the Copyright Act through these injunctions. In so doing, they seek to protect the integrity of their property and the reputation of the applicants with persons with whom they contract, such as recording artists. Those considerations, in my view, weigh strongly in favour of granting the injunctions sought on an interlocutory basis.
I will, therefore, grant the orders sought in the interim application subject to the usual undertaking as to damages and subject to further orders requiring any person falling within the description of the sixth respondent to be served by hand no later than midnight on 29 November 2003. In that regard, I accept that the procedure of granting an injunction against a presently unidentified respondent, while unusual, is justifiable in this case. The applicants cannot get an injunction against the whole world, but they should be able to get an injunction against presently unidentified persons in or about the premises where the alleged infringement has occurred or is to occur who are reasonably believed to be involved in the infringements. Provided that the class of persons to be covered can be reasonably and clearly confined, the procedure is in my view a useful and acceptable one.
I want to ensure, as far as is reasonably practicable, that the proceedings came to the attention of the other respondents. I will also order that the first four respondents, which are all corporations, be served by hand at their registered offices within five working days of today's date. In addition, I will order that the fifth respondent be served by ordinary pre-paid post at his address set out in the application within the same period. I have amended the orders to permit a facsimile copy of a sealed copy of the orders to be served on any person apparently occupying or in charge of the premises known as the Frostbite Nightclub within the Crown and Anchor Hotel today or tomorrow. The application will be returnable for directions at 9.30 am on 11 December 2003.
I certify that the preceding eleven (11) paragraphs are a true copy of the reasons for judgment of Driver FM
Associate:
Date: 10 December 2003
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