Whiteley, Arkie Deya v Murdoch Magazines Pty Ltd
[1995] FCA 1055
•28 SEPTEMBER 1995
CATCHWORDS
COPYRIGHT - infringement proceedings by executors of artist - serious question to be tried whether artist gave licence for publication - balance of convenience does not favour grant of interlocutory injunction - no point of principle
Copyright Act 1968, s36(1).
Clune v Collins Angus & Robertson Publishers Pty Ltd (1992) 25 IPR 246
ARKIE DEYA WHITELEY and ANTHONY PATRICK CLUNE (Executors of the Estate of Brett Whiteley) v MURDOCH MAGAZINES PTY LIMITED
No. NG 733 of 1995
Coram: Whitlam J
Place: Sydney
Date: 28 September 1995
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) NG 733 of 1995
)
GENERAL DIVISION )
ARKIE DEYA WHITELEY and ANTHONY PATRICK CLUNE (Executors of the Estate of Brett Whiteley)
Applicants
MURDOCH MAGAZINES PTY LIMITED
Respondent
Coram: Whitlam J
Place: Sydney
Date:28 September 1995
MINUTES OF ORDER
THE COURT ORDERS THAT:
The applicants' claim for interlocutory relief be refused with costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) NG 733 of 1995
)
GENERAL DIVISION )
ARKIE DEYA WHITELEY and ANTHONY PATRICK CLUNE (Executors of the Estate of Brett Whiteley)
Applicants
MURDOCH MAGAZINES PTY LIMITED
Respondent
Coram: Whitlam J
Place: Sydney
Date:28 September 1995
REASONS FOR JUDGMENT
The Art Gallery of New South Wales is currently exhibiting works by the artist Brett Whiteley who died on 13 June 1992. For this occasion Thames and Hudson Ltd has published a book, "Brett Whiteley Art & Life", which is on sale at the gallery. The artist's works in this book have been reproduced with the authority of the executors of his estate, who are the applicants in this proceeding.
The respondent also wishes to take advantage of the interest generated by the current exhibition. It has arranged a reprint of a book, "Brett Whiteley" by Sandra McGrath, which was first published in 1979.
On 28 August 1995 the applicants' solicitors wrote to the respondents, seeking an undertaking that the 1979 book would not be republished. Correspondence between the parties' solicitors ensued. On 20 September 1995 the respondent's solicitors wrote that their client would not publish the book before 10 am on Wednesday, 27 September 1995.
The applicants then commenced this proceeding on 22 September 1995. In their statement of claim filed that day they allege that the proposed publication by the respondent "will infringe" their copyright in 62 specified works. The applicants also sought interlocutory injunctions restraining the respondent from infringing their copyright in the nominated works and from "republishing a book by Sandra McGrath titled Brett Whiteley which book was first published in 1979". The hearing of the claim for interlocutory relief was accordingly fixed for 26 September 1995 and time for service abridged.
Upon the hearing of the claim for interlocutory relief, counsel for the applicants foreshadowed the amendment in due course of both the application and statement of claim so as to seek relief in respect of the alleged infringement of his clients' copyright in some 309 specified works by Mr Whiteley. He accepted that, for the purposes of the present interlocutory application, relief could not extend beyond the allegations in the current statement of claim. In any event, nothing turns on the foreshadowed amendment. It is not suggested that there is any threatened infringement beyond the republication of the 1979 book.
The principles governing the grant or refusal of interlocutory injunctions were summarized by Mason ACJ in Castlemaine Tooheys Ltd v South Australia (1986) 161 CLR 148 at 153. In order to secure the injunction which they seek the applicants must show: (a) that there is a serious question to be tried; (b) that they will suffer irreparable injury for which damages will not be adequate compensation unless an injunction is granted; and (c) that the balance of convenience favours the granting of an injunction.
As far as the first requirement is concerned, the respondent has not yet filed a defence. However, it may be accepted for present purposes that the 1979 book reproduces the 62 specified works and that Mr Whiteley's estate now owns the copyright in those works. The publication of the book will constitute an infringement of that copyright if it be "without the licence of the owner": Copyright Act 1968, s 36(1). The applicants bear the onus of proving the absence of a licence: Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88 at 94-95.
The applicants have certainly not given a licence. But is there is a serious issue to be tried that Mr Whiteley did not give an appropriate licence?
There has been received in evidence the 1983 reprint of Mrs McGrath's book. It was published by Bay Books Pty Ltd and printed in Italy. An affidavit sworn by Anne Wilson has also been read. She is the publisher of the Murdoch Books division of the respondent. In 1988 and early 1989 she was the publisher at Angus & Robertson. Ms Wilson said that in early 1989 Angus & Robertson merged with Bay Books and another
company to create a company called Collins Angus & Robertson Pty Ltd ("CAR"), and that shortly after she left the new company.
On 29 June 1995 the respondent purchased the right to print, publish, sell and otherwise exploit 205 named literary titles under licences held by CAR. One of those titles was Mrs McGrath's book. The sale agreement has been received in evidence. Completion of the sale required the assignment by CAR of the licences for 196 titles, including Mrs McGrath's book. Nine titles were acknowledged to require the author's consent to assignment.
Ms Wilson said that Mrs McGrath's book had been continuously in print from 1979. She had been responsible for negotiating the sale agreement on behalf of the respondent over a period of 12 months prior to completion. When negotiations started, there had been 800 copies of Mrs McGraths' book in CAR's stock, but they had all been sold by completion. On behalf of the respondent Ms Wilson then arranged the reprinting in Melbourne of 10,000 copies to the same standard of quality as that of the original print of the book done in Italy in 1979.
In a letter dated 20 September 1995 to the applicants' solicitors, the respondent's solicitors set out their instructions as to the publication history of Mrs McGrath's book:
"The following printings of the Book were completed and distributed:
(a)1979 - 10,000 copies;
(b)1986 - 3,000 copies;
(c)1989 - 5,024 copies; and
(d)August 1992 - 10,000 copies."
(There was no reference to the 1983 reprint which has been tendered in this hearing.)
The 1995 reprint, which has also been received in evidence, is expressed on the verso to be "A Bay Books Publication. An imprint of Murdoch Books" (I should mention that the respondent also purchased the trade mark "Bay" from CAR.) It also appears from an affidavit sworn by John Lakos, solicitor, and read on behalf of the respondent that Mr Lakos was informed by one of CAR's solicitors that Mrs McGrath's book was re-printed by CAR in 1992. Accordingly, whilst there is no direct evidence of the print figures mentioned by the respondent's solicitors, the applicants have not sought to dispute their assertions.
Counsel for both parties have asked me to have regard to the findings of fact made by Wilcox J in Clune v Collins Angus & Robertson Publishers Pty Ltd (1992) 25 IPR 246. These were earlier proceedings between Mr Whiteley's estate and CAR relating to a different publication updating Mrs McGrath's book. Accordingly, it may be noted that (at 253) his Honour found that the 1979 publication was made with Mr Whiteley's approval and assistance.
This is an important finding. As the Full Court pointed out in Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46 at 49, the expression "without the licence of the owner of the copyright" is simply a reference to the absence of the owner's "consent" or "permission" or "licence" as interchangeable terms.
I am informed that Mrs McGrath's text in the 1995 reprint is the same as that in the 1979 publication. The works of Mr Whiteley are also reproduced exactly as they were in the original print made in Italy. It is not suggested that there is any diminution in quality of the reproductions. I think that it must be accepted that Mr Whiteley authorized publication in 1979. Indeed, the applicants' solicitors expressly so concede in a letter dated 4 September 1995 to the respondent's solicitors.
However, counsel for the applicants submits that there is a serious question to be tried whether any licence could extend to a reprint 16 years later and as to whether the licence was personal to Bay Books Pty Ltd. Counsel for the respondent submits that any such case must be very weak. He points to the quite telling fact that Mr Whiteley was evidently content to have the 1979 edition on sale up until his death in 1992, notwithstanding the necessary reprints. The 1992 reprint was published after Mr Whiteley's death. It was published by CAR, not Bay Books Pty Ltd. It is a little difficult to see what difference the corporate identity of the publisher could make. Indeed, the 1995 reprint is to be a "Bay Books" publication. Perhaps the intermediate reprints were too. There is no evidence to suggest that the licence was personal to Bay Books Pty Ltd. The applicants' statement of claim does not allege that the 1992 reprint constitutes an infringement of their copyright. On the other hand, the evidence as to assignment of licences is equivocal. It seems likely that the consents of authors contemplated in the sale agreement between CAR and the respondent are those of the text authors, such as Mrs McGrath, and not the consent of artists whose works may be reproduced. However, it is premature to go into these matters and, despite obvious difficulties in the applicants' case, I consider that there is a serious question to be tried.
The respondent has offered to keep an account of all profits derived in respect of its publication of the 1995 reprint. However, in an affidavit sworn subsequently, one of the applicants, Mr A.P. Clune, has deposed to his particular concerns about Mrs McGrath's book (which he refers to as the Book in the following paragraphs):
"11.The Thames & Hudson Book covers the works of Brett Whiteley throughout his career and is consistent with the theme of the retrospective. The Book only includes a selection of the then current works of Brett Whiteley.
...
14.The estate does not want the Book republished at this time as it is inconsistent with the estates agreement with Thames & Hudson and is not in sympathy with the theme of the retrospective.
Mr Clune annexed to his affidavit the agreement with Thames and Hudson Ltd concluded by the applicants as executors of Mr Whiteley's estate. It is a letter dated 11 November 1994. Paragraph 3 of that letter provides:
"In consideration of these payments you agree that for a period ending three years after our first publication you will not without our prior written consent authorise or be concerned in the preparation of any other major illustrated monograph in book form on Brett Whiteley's work."
On the other hand, Ms Wilson acknowledged the commercial importance of both the run-up to Christmas for what I might term "coffee table books" and of the publicity from the current exhibition for sales of the 1995 reprint of Mrs McGrath's book. Some magazine articles prompted by the exhibition have been tendered, and they refer to Mrs McGrath's 1979 publication. In addition, Ms Wilson said that this particular title was "a standard reference work" and that this status would be imperilled, were it not included in the current print list of Murdoch Books. She referred particularly to the striking blue jacket of the book which, she said, had led to it being referred to as "The Blue Book" in the publishing industry and the art world.
I am firmly of the view that the balance of convenience does not favour the grant of the injunctions. Damages or an account of profits will provide perfectly adequate compensation if infringement is established. It is not suggested that the sale and distribution of the book will diminish in some incalculable way the intellectual property of the applicants. The book is an old book in publishing terms. It may be a kind of classic. It is obviously not up to date. Nor is it suggested that the 1995 reprint is not of good quality. There is no evidence of "the theme of the retrospective" referred to by Mr Clune, but I do not see how that can be relevant. His statement that republication by the respondent is "inconsistent" with the Thames and Hudson agreement is plainly wrong. The concerns articulated by Ms Wilson point, however, to real inconvenience to the respondent, were the injunctions to be granted.
The applicants' claim for interlocutory relief is refused with costs.
I certify that this and the preceding seven pages are a true copy of the reasons for judgment herein of the Hon. Justice A.P. Whitlam
Associate:
Date: 28 September 1995
Counsel for the applicants: D.M. Yates
Solicitors for the applicants: Gilbert & Tobin
Counsel for the respondent: R.J. Webb
Solicitor for the respondent: Lakos & Company
Date of hearing: 26 September 1995
0
0