Whitsunday Aerial Solutions Professionals Pty Ltd v Emprja Pty Ltd
[2021] FCCA 1548
•8 July 2021
FEDERAL CIRCUIT COURT OF AUSTRALIA
Whitsunday Aerial Solutions Professionals Pty Ltd v Emprja Pty Ltd [2021] FCCA 1548
File number(s): BRG 603 of 2018 Judgment of: JUDGE BAIRD Date of judgment: 8 July 2021 Catchwords: INTELLECTUAL PROPERTY – COPYRIGHT – copyright infringement – oral agreement – where third party (Project 64) commissions applicant to shoot certain video footage by drone mounted camera of event at Airlie Beach for 2016 Clipper Round the World Yacht Race – applicant asserts oral agreement to own copyright – Project 64 provides footage to respondent - applicant asserts respondent granted limited permission to use footage for the sole purpose of producing a video for the promotion of the 2016 Clipper Round the World Yacht Race – respondent posts videos containing parts of footage online and provides copies of footage to third parties – applicant asserts respondent infringes its copyright in footage – respondent denies applicant is owner of copyright – respondent denies infringement – respondent asserts licence to copy and use footage in videos not restricted – communication right – deed of assignment – retrospective – s 196(3) and (4) of Copyright Act 1968 (Cth) considered – applicant elects damages and asserts entitlement to additional damages pursuant to s 115(4) of Act – application dismissed Legislation: Copyright Act 1968 (Cth), ss 86, 98(3), 101(1), 115, 196(3), 196(4) Cases cited: ABC v XIVth Commonwealth Games Ltd (1988) 18 NSWLR 540
ACP Machinery Australia Pty Ltd v Aerospace Technologies of Australia (No 3) [2013] FCA 718; (2013) 103 IPR 435
Chhabra v McPherson as Trustee for the McPherson Practice Trust [2018] FCA 1755; (2019) 138 IPR 1
Franklins Pty Ltd v Metcashtrading Ltd [2009] NSWCA 407; (2009)76 NSWLR 603
Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522; (2006) 67 IPR 262
Traderight (NSW) Pty Ltd & Ors v Bank of Queensland Ltd (No 17) and 13 related matters [2014] NSWSC 55
Traderight (NSW) Pty LTD v Bank of Queensland Ltd [2015] NSWCA 94
Number of paragraphs: 300 Date of last submission/s: 28 March 2019 Date of hearing: 11, 12, 14 March 2019 Place: Brisbane Counsel for the Applicant: Mr B Gardiner Solicitor for the Applicant: King & Wood Mallesons Counsel for the Respondent: Mr C G C Curtis Solicitor for the Respondent: HWL Ebsworth Lawyers ORDERS
BRG 603 of 2018 BETWEEN: WHITSUNDAY AERIAL SOLUTIONS PROFESSIONALS PTY LTD (ACN 602 736 523)
Applicant
AND: EMPRJA PTY LTD (ACN 135 384 039)
Respondent
ORDER MADE BY:
JUDGE BAIRD
DATE OF ORDER:
8 JULY 2021
THE COURT ORDERS THAT:
1.The application be dismissed.
2.DIRECTS the parties to confer, and within 14 days, provide to the Chambers of Judge Baird proposed short minutes of orders on costs.
3.DIRECTS, if the parties are unable to reach agreement on costs, by 23 July 2021, each party serve and provide to the Chambers of Judge Baird their submissions on costs, limited to 2 pages.
4.STANDS OVER the proceeding to a date to be fixed after consultation with the parties for any argument on costs, provided that, if costs are agreed, or the parties agree that costs may be determined on the papers, such date may be vacated by the Court administratively.
REASONS FOR JUDGMENT
JUDGE BAIRD
INTRODUCTION
The dispute in this proceeding concerns copyright in 8 “shots” of video footage taken by means of a remote‑controlled camera mounted to an aerial drone by the applicant, Whitsunday Aerial Solutions Professionals Pty Ltd (WASP), on 12 and 13 January 2016, at the request of a third party, Project 64 Pty Ltd, and whether and if so what permissions or limitations were imposed on the respondent regarding its use thereafter.
In these reasons I refer to that video footage as the 2016 Clipper Footage, noting that evidence establishes that the video footage comprises more than these 8 shots, but that WASP has defined it thus in its pleading, and the parties admit the fact and that the Footage is a cinematograph film within the meaning of the Copyright Act 1968 (Cth).
BACKGROUND
The Clipper Round the World Yacht Race is an international round the world yacht race event in 8 legs held every 2 years. The race, and the clipper yachts which compete in the race attract international sponsorship and an international audience. The race route for the 2016 Clipper Round the World Yacht Race (2016 Clipper Race) took the yachts directly past the Queensland coast, and specifically, to Airlie Beach in North Queensland.
The respondent, Emprja Pty Ltd trading as ‘Abell Point Marina’ (APM), leases and operates the Abell Point Marina at Airlie Beach, providing marina services, function spaces and other recreational services.
As at 2015 and early 2016, Mr Luke McCaul was employed by APM as its marketing and business development manager. APM identified that the addition of Airlie Beach as a race stopover would benefit the 2016 Clipper Race, APM and the Airlie Beach and Whitsundays region. In mid-2015, APM successfully bid to have Airlie Beach and the Marina a host port for the 2016 Clipper Race.
APM proposed to host a welcome party at the Marina for the 2016 Clipper Race during the Race participants’ stopover at Airlie Beach in January 2016.
In about late 2015, APM engaged Mr Phillip Gordon of Datamount Pty Ltd, trading as Riptide Creative, to provide aerial videography and photography services for the 2016 Clipper Race stopover at Airlie Beach. Riptide was not engaged to arrange for the capture of drone footage of the Race (it did not then offer drone videography).
Around late 2015, Project 64, of which Mr Paul Burfitt was the sole director, acquired a helicopter business that provided tourist /scenic flights operating out of the Marina, and also Whitsunday Airport Shute Harbour. The helicopter business was an existing tenant of APM. Project 64 commenced its new business under the name ‘HeliTaxi’, and settled its purchase of the business on 1 January 2016.
Mr Burfitt expressed an interest to Mr McCaul in promoting the newly purchased HeliTaxi business, and being involved in the Race events at the Marina. Being new to the region Mr Burfitt believed the welcome party was a good opportunity to promote his new business. During November and December 2015, Mr McCaul and Mr Burfitt negotiated a sponsorship arrangement. It was agreed between APM and Project 64 that HeliTaxi would be marketed as a co‑sponsor of the welcome party.
The negotiations regarding the sponsorship occurred via a series of conversations and emails. It is not in dispute that Project 64 agreed to contribute an amount of funds for champagne for the welcome party. Mr McCaul says additionally Mr Burfitt offered to take a HeliTaxi helicopter into the air, and to obtain video footage of the Marina and the event. Mr Burfitt says this was a separate agreement. What was agreed is disputed.
On 9 and 10 January 2016, the 2016 Clipper Race sailed into Airlie Beach, and the participating clipper yachts, support crews and organisers stopped at the Marina. The winner came in around 1am. In the late afternoon on 12 January 2016 APM, with the participation of HeliTaxi, hosted the welcome party at the Marina. A HeliTaxi helicopter was on display at the Marina during the welcome party, and HeliTaxi staff mingled with the guests promoting the business.
The parties are agreed that on or prior to 12 January 2016, APM (Mr McCaul) and Project 64 (Mr Burfitt) agreed that Mr Burfitt would procure drone footage of the stopover at the Marina. On the afternoon of 12 January 2016, Mr Burfitt procured WASP to shoot some low‑angled video footage by drone camera of the Race clipper yachts berthed at the Marina, and the welcome party, and Marina. This is the 2016 Clipper Footage.
WASP’s director, Ms Louise Brown, and employee, Mr Adrian Plahn, met Mr Burfitt at the Marina around 5:30pm on 12 January 2016, around the time of the welcome party. WASP operated its drone-mounted camera from ground level along the Marina arms and filmed video footage of the scene and the clipper yachts berthed at the Marina. WASP returned to Airlie Beach and the Marina the next morning to obtain some images in daylight, and shot some more footage.
That afternoon, 13 January 2016, WASP delivered to Mr Burfitt a USB drive with the drone‑camera video footage shot on 12 and 13 January 2016 (that is, the 2016 Clipper Footage, including 8 shots). Mr Burfitt downloaded it immediately to his computer, and returned the USB. On 15 January 2016, further to an email to Mr McCaul, Mr Burfitt delivered footage he had taken and the video footage taken by WASP to APM on a hard drive, and Ms Cherie Morel, then APM’s marketing co‑ordinator reporting to Mr McCaul, transferred the contents of the hard drive to APM’s computer. Mr Burfitt says he also provided footage to Channel 9 that afternoon. At around the same time, Mr McCaul forwarded an email to a number of people at Whitsunday Regional Council, Mr Burfitt, and others providing by WeTransfer copies of the clips from Today Show’s national coverage of the event. [CB 323]
On about 18 January 2016, the 2016 Clipper Race fleet departed Airlie Beach, sailing on the next leg of the Race.
2018 Clipper Race
Two years later, in January 2018, the Clipper Round the World Yacht Race returned to Airlie Beach and the Marina, on a leg of the 2018 Clipper Round the World Yacht Race. Clipper Ventures plc, described as the company behind the 2018 Race, entered a partnership agreement with Whitsundays Regional Council for the hosting of the 2018 Race stopover in Airlie Beach. APM entered into an agreement with Council in relation to APM’s role as a host port, and Whitsunday Regional Council, APM and Tourism Whitsundays formed a consortium for the purpose of underwriting, promoting and organising the Airlie Beach stopover for the 2018 Race.
The consortium engaged Mr Phill Gordon, Riptide, to obtain video and photography footage, including drone footage, of the 2018 Race. From about 17 to 31 January 2018, over the two and a half weeks the 2018 Race participants were at and around Airlie Beach, Riptide progressively filmed and provided to the consortium videos (including aerial and drone footage) of the 2018 Race during its stopover at Airlie Beach, including of the clipper yachts whilst they were under sail, arriving and departing Airlie Beach, and at the Marina, on different days, and varying times of day. Mr Gordon edited the footage and put it together in video form. The consortium provided a copy of the 2018 footage to Tourism and Events Queensland. The footage showed that the weather was fine for the 2018 Race. Ms Joscelyn O’Keefe of APM described the weather during the 2018 Race stopover at Airlie Beach as unseasonably good.
WASP first awareness of “publication” of 2016 Clipper Footage
On about 20 February 2018, Mr Plahn first became aware that video posted on Whitsunday Regional Council’s and Tourism Whitsunday’s Facebook pages included shots from the 2016 Clipper Footage. Mr Plahn and Ms Brown then searched for, and by 21 February 2018, found, additional uses of that material “published” [sic] by Tourism Whitsunday, APM and the Council. Mr Plahn contacted APM and left a message for Ms O’Keefe (who had succeeded Mr McCaul as APM’s marketing and business development manager in May 2016), to discuss use of the 2016 Clipper Footage (8 shots) in the videos WASP had located. WASP also contacted Mr Gordon, and the Whitsundays Regional Council, and raised the prospect of bringing legal proceedings against the Council. Thereafter Ms Brown on behalf of WASP made certain claims and demands of APM and others.
On 26 February 2018, APM looked for and removed access to APM videos it located online which contained segments of any of the 2016 Clipper Footage. In early April 2018 WASP identified some further videos containing one or more segments of the 2016 Clipper Footage, and APM searched for and removed 3 more videos. A further video was identified and removed on 2 July 2018. There are no alleged infringements by APM of the 2016 Clipper Footage thereafter.
WASP and Project 64 entered into a ‘Confirmatory deed – Copyright ownership’ in about early April 2018, attached to WASP’s solicitors’ letter dated 5 April 2018. It contains the parties’ first reference to s 98(3) of the Act. It states the parties agreed at the time WASP owned copyright and confirms such agreement. In its written closing submissions on quantum and s 196 of the Act, WASP stated the document did not assign any rights from Project 64 to WASP, it simply confirms the claimed January 2016 oral agreement.
WASP and Project 64 entered into a “deed of assignment” dated 25 October 2018, which stated that to the extent Project 64 owns any copyright in the 2016 Clipper Footage it assigned it to WASP “with effect from the date of creation of” the Footage.
THE PROCEEDING
WASP commenced this proceeding against APM for copyright infringement of the 2016 Clipper Footage on 18 June 2018. It filed an amended statement of claim dated 11 July 2018, and on 27 November 2018 filed a further amended statement of claim. At the close of the final hearing WASP, by its counsel Mr Gardiner, elected to pursue damages as the form of pecuniary relief to be awarded.
As I have said above, the proceeding concerns the dispute between WASP and APM over uses by APM and third parties in videos posted on-line containing parts of the 2016 Clipper Footage delivered by Mr Burfitt to APM on 15 January 2016.
Brief overview of WASP’s claim
WASP pleads it entered into an oral agreement with Mr Burfitt on behalf of Project 64 on 12 January 2016 pursuant to which WASP owned copyright in the 2016 Clipper Footage, HeliTaxi was permitted to use the Footage for the promotion of HeliTaxi’s business, and APM was permitted to use the Footage for “the sole purpose of producing a video for the promotion of the 2016 Clipper Round the World Yacht Race”.
By the third day of hearing, WASP conceded that it could not maintain the limitation to a single video, and contended that the permission was a limited licence to APM for promotion of the 2016 Clipper Race, but not limited to a single video.
WASP pleads that APM infringed its copyright, and authorised third parties’ infringing acts, and acted flagrantly in knowing and reckless disregard of the infringement. I discuss its claim further below.
Brief overview of APM’s defence
APM denies any infringement. It says that none of the alleged acts of infringement in the proceeding was an infringement of copyright as the acts were not done without the licence of the owner of copyright. It contends in substance (non-exhaustively) that:
(a)the provision of the 2016 Clipper Footage was further to the sponsorship agreement Project 64 had entered into with APM, and Project 64 provided the footage and other footage shot by Mr Burfitt for the purposes previously agreed (and I apprehend it follows without the restrictions on use that WASP asserts);
(b)Project 64 commissioned WASP to make the 2016 Clipper Footage for valuable consideration, and pursuant to s 98(3) of the Act, ownership of copyright in the Footage vested in Project 64;
(c)Project 64 granted a licence to APM to use the Footage in promoting its business as it did, and as an implicit incidence of the licence, to provide copies to third parties promoting businesses that included APM’s business;
(d)the Project 64 licence authorised all the uses of which complaint is made in the proceeding; and that
(e)pursuant to s 196(4) of the Act, Project 64’s grant of licence was, subsequent the October 2018 deed entered into by WASP and Project 64, binding on WASP.
APM says further, at no time before this dispute arose during the 2018 Race stopover at the Marina, did WASP, Project 64, or any person raise any objection or claim any rights or limitations on use over the 2016 Clipper Footage. Whilst APM raises additional defences, it is not necessary to refer to them for the purposes of this overview, save to note that by the amended defence APM put WASP fairly on notice of its case, and its challenges to WASP’s allegations of fact.
I consider that by its amended defence to the further amended statement of claim, APM put WASP and Ms Brown on clear notice that it disputed the existence of the oral agreement alleged, contended the above, and in the alternative, contended that it was a term of any agreement in respect of copyright that APM was licensed to use the 2016 Clipper Footage to promote APM’s business after the 2016 Clipper race had occurred, and that the uses it made, and was alleged to have authorised were within the terms of such licence.
Cross‑claim
On 21 November 2018, with leave of the Court, APM cross‑claimed against Project 64 and Mr Burfitt, claiming misleading or deceptive conduct in contravention of the Australian Consumer Law (ACL), Schedule 2 to the Competition and Consumer Act 2010 (Cth), and seeking an order under s 236(1) of the ACL that they pay APM an amount equivalent to any amount APM is ordered to pay WASP in the proceeding.
Project 64 went into liquidation in January 2019. On 6 March 2019, Mr Burfitt became bankrupt. At the commencement of the hearing on 11 March 2019, I made orders removing the cross‑respondents as parties from the proceeding.
Clarification of “publication” as communication right
In its pleading, in its evidence and in its opening submissions, WASP used the terms “published”, and “publication” to characterise APM and the third parties’ acts. APM adopted that terminology. In its opening submissions WASP identified the relevant infringing acts as acts within s 36 of the Act, that is, as breaches of copyright in a work by publishing the work without the licence of the copyright owner. Publication is not a relevant right in copyright or infringing act in copyright in relation to the subject matter of this proceeding (a cinematograph film), or the claims made in this proceeding. In closing submissions Mr Gardiner accepted that by “publication” WASP meant communicate or make available online for the purposes of s 86 of the Act. Mr Curtis, counsel for APM, did not oppose that clarification.
All uses of publish, and publication in these reasons should be understood as intending acts of communication within the meaning of s 10 of the Act, the relevant right in copyright asserted infringed as a right under s 86 of the Act, and the acts of infringement as acts within s 101. It is, nonetheless, convenient to use the terms used by the parties and the witnesses, and I generally do so in these reasons.
Hearing
I heard the proceeding at the Court in Brisbane in March 2019.
WASP relied on witness statements from Ms Brown, Mr Plahn and Mr Burfitt, each of whom was cross-examined.
APM relied on witness statements from Mr McCaul, and Ms Morel, Ms O’Keefe, Ms Katrin Purdie, and Mr Gordon. Mr McCaul, Ms Morel and Ms O’Keefe were cross‑examined.
WASP relied on the expert reports of Mr Michael Hall, and Mr Matthew Cassidy. Mr Cassidy was required for cross‑examination.
The evidence thus included the witnesses’ written statements, annexed documents, and additional tenders, oral evidence, and tendered video footage and images, some of which was shown in Court, and which I have viewed in Chambers.
Both parties provided written outlines of opening and closing submissions, and schedules/ aide memoire, and made oral submissions. Counsel co-operated with the provision of an agreed short form chronology, and statement of agreed facts and issues. I have had regard to each of these documents, and incorporate them as relevant into these reasons.
Transcript of the hearing was obtained.
Regrettably, this judgment has been delayed well beyond any indicative time that may have been assumed by the parties at hearing or shortly after final submissions and agreement on the identification of trial exhibits. The passage of time, however, has enabled me to undertake a detailed review of the evidence with the benefit of transcript as well as my contemporaneous notes, to consider the witnesses’ written statements, their oral evidence in cross‑examination at hearing, and enable considered conclusions to be drawn in the light of the chronology of events, the interplay between the correspondence, written record, and the witnesses’ conduct and actions. Accordingly, my conclusions of the witnesses arise from close attention to their written evidence, augmented by the transcript, and having regard to the disclosures in correspondence, the evidence of other witnesses, and the chronology, and counsel’s submissions.
THE 2016 CLIPPER FOOTAGE
The cinematograph film
In the further amended statement of claim, as in the preceding statements of claim, WASP defined the term “2016 Clipper Footage” as follows: “on or about 12 January 2016, Project 64 …. Requested [WASP] to shoot film footage of an event held at Abell Point Marina on 12 January 2016, being the 2016 Clipper Round the World Yacht Race Welcome Function”.
The subject matter of this proceeding concerns 8 “shots” from that footage comprising:
Shot Description accorded by Ms Brown and agreed by the parties Length (seconds) Date shot (2016) 1 a sideways motion shot from the shore out to sea across the front of the stationary Clipper Boats 31 seconds 13 January 2 a sideways motion shot from the sea to the shore across the back of the stationary Clipper Boats 50 seconds 13 January 3 a forward motion shot from the sea to the shore over the top of the stationary Clipper Boats 47 seconds 13 January 4 a wider rising shot taken overhead at an angle from the back of the stationary Clipper Boats 32 seconds 13 January 5 a rising shot of a stationary helicopter near a building at Abell Point Marina 31 seconds 12 January 6 a sideways motion shot from the shore out to sea across the front of the stationary Clipper Boats taken at sunset 41 seconds 12 January 7 a rising shot of the Marina at dusk 13 seconds 12 January 8 a wider descending shot taken overhead at an angle from the back of the stationary Clipper Boats 1 minute 4 seconds 13 January
The duration of each shot in the above table is taken from the WASP’s solicitors’ instructions contained in Mr Cassidy’s report. Whilst there was some disagreement on the precise length of a number of the shots, the differences are a second. I consider that nothing turns on that difference in length. Three shots were filmed in the dusk and sunset of 12 January 2016, and five shots on the morning of 13 January 2016.
Although the evidence of what factually comprises the totality of the drone camera video footage shot by WASP, and delivered to Project 64, and thence to APM, is not clear, at hearing WASP and APM agreed as a fact that the “2016 Clipper Footage is made up of eight shots” being the 8 shots listed and described above. They are further agreed that copyright subsists in the 2016 Clipper Footage, and that the 2016 Clipper Footage is an original cinematograph film.
Thus, it suffices for these reasons to proceed on the basis that the 2016 Clipper Footage means the 8 shots, which together are a cinematograph film within the meaning of the Act. Digital copies of the 8 shots were put in evidence. Where I consider more precise terminology is necessary or desirable, I refer to the subject matter as 2016 Clipper Footage (8 shots) or similar, or to the specific shot or shots.
Mr Burfitt states that he delivered “the footage he had shot from the helicopter for the arrival and departure of the race fleet”, as well as “the 2016 Clipper Footage”, on a hard drive. He believes the footage on the hard drive was catalogued to the effect: “Fleet Arrival (Video & Stills)”; and “Drone Footage (Video & Stills)”. From a search of APM’s records in the course of the proceeding, Ms O’Keefe identified the footage that was provided to APM in an electronic folder called “HeliTaxi”, in folders named “Clipper Arrival (Untouched)” and “Drone”. I conclude that the footage was provided to APM in electronic form in folders marked as found by Ms O’Keefe.
Unsurprisingly, WASP’s evidence focused on the 8 shots.
In her first witness statement Ms Brown submits the 2016 Clipper Footage (8 shots) as “offering a bird’s eye view of the 2016 Clipper Race stopover in Airlie Beach and the associated Welcome function at the Marina”, and as being “the only footage of the 2016 Clipper Race stopover in Airlie Beach which was shot from a low altitude, aerial drone perspective”. Mr Gordon’s unchallenged evidence is that at both the 2016 Clipper Race stopover and the 2018 Race stopover there were a various other drones taking footage, operated by the Clipper race organisers, crew members and various private individuals. The evidence went no higher. For the purposes of liability I do not consider anything turns on whether or not WASP’s footage was the only footage taken at the time.
Alleged infringements
As I have introduced above (at [26]) WASP pleads that APM copied the 2016 Clipper Footage, caused the 2016 Clipper Footage to be seen in public, and communicated the 2016 Clipper Footage to the public without the licence of WASP. WASP pleads the alleged infringing acts by APM as:
(1)publishing a number of videos to the Marina Facebook page, and to YouTube each containing (variously) a segment or segments of the 2016 Clipper Footage; and
(2)making electronic copies of the 2016 Clipper Footage which it provided to:
(a)Riptide;
(b)Whitsunday Regional Council;
(c)Tourism Whitsundays; and
(d)Clipper Round the World Yacht Race Media Team (although no such persons were identified).
In its pleading WASP itemised 11 publications of videos by APM (including both Facebook and YouTube posts). WASP further alleges that Riptide shared a video published by APM, and that Whitsunday Regional Council and Tourism Whitsundays published videos to their respective Facebook pages. At hearing it also alleged that Tourism Whitsundays’ published video to its YouTube channel containing segments of the 2016 Clipper Footage. It pleads that APM knew, ought to have known or had reason to anticipate or suspect that these acts would occur or were likely to occur, that it failed to prevent or take any reasonable steps to prevent those third party acts, and in the premises authorised those alleged infringing acts, and acts by “Clipper Round the World Yacht Race Media Team”.
WASP further pleaded, and pressed at hearing, allegations that APM acted knowing it did not own the copyright, aware that it did not have a licence from WASP or any other person to do the things alleged, and acted in flagrant and wilful infringement of copyright. As I have said above, WASP has elected damages, including additional damages under s 115(4) of the Act.
WASP pleaded that it notified APM on 21 February (initial telephone call), and 22 February 2018 (email from Ms Brown), but that APM continued to infringe copyright until around 26 February 2018, when it removed 8 of the allegedly infringing items, that it removed the other 3 allegedly infringing items on or after 11 April 2018, after it notified APM by letter dated 5 April 2018 (by its lawyers). A further video was located and removed on 2 July 2018.
Permitted uses
APM included all 8 Shots in a video entitled “Clipper Round the World Race Stopover 2016” lasting 3 minutes 40 seconds. WASP did not plead this use was an infringement.
As I have noted earlier in these reasons, by closing oral submissions, counsel for WASP, Mr Gardiner, conceded that WASP could not maintain its original position that the scope of the licence it claimed granted to APM was for “the sole purpose of producing a video for the promotion of the 2016 Clipper Round the World Yacht Race”. WASP contended however, that the alleged licence was limited to the promotion of the 2016 Clipper Race. It contended that this meant promotion of the race during and after the event, conceding it was not confined to promotion in the lead up to the event as the event was already happening. Accordingly, WASP accepted that:
(a)a video posted to APM’s YouTube channel titled “APM | Marina Events” lasting 1 minute 26 seconds, in which shots 1, 2 and 3 were used; and
(b)a post‑event video such as the video posted to APM’s YouTube channel titled “Clipper Round the World Yacht Race AB Highlights” lasting 2 minutes 39 seconds, in which shots 1, 3, 4, 5, 6, and 7 were used,
were uses of the Footage for the promotion of the 2016 Clipper Race within the scope of its promotion licence. I note that both these videos were among the items APM by Ms O’Keefe removed access to on 26 February 2018.
Third parties licensed
Ms Brown gave evidence that after the dispute arose WASP licensed both Whitsunday Regional Council and Tourism Whitsunday regarding certain of the alleged third party infringements for a once off fee of $500, and no fee, respectively.
Parties’ positions on alleged infringements at conclusion of hearing
In closing submissions, referring to descriptions or titles of videos it alleged infringed, WASP contended that the promotion licence plainly does not extend to the use of the Footage in a video produced for the promotion of the 2018 Clipper Race, or any other event such as the superyacht rendezvous, nor to use in relation to APM’s accreditation as a 5 Gold Anchor marina, or the promotion of the Marina’s progressive lunch, or to promote its ability to host superyachts at its Marina. WASP pressed its contentions that in addition APM authorised infringing publications of the 2016 Clipper Footage by Whitsundays Regional Council and Tourism Whitsundays.
I have summarised APM’s principal denial of infringement earlier in these reasons (see at [27]‑[28] above). In short it says the provision of the 2016 Clipper Footage was further to the sponsorship agreement Project 64 entered into with APM, that Project 64 provided the 2016 Clipper Footage and other footage shot by Mr Burfitt for the purposes previously agreed, and without the alleged restrictions on use that WASP asserts, and that all the uses it made of any of the 2016 Clipper Footage were licensed.
In written closing submissions WASP’s counsel characterised APM’s position as asserting “in effect an unrestricted perpetual licence to use for whatever purpose APM requires and even extends to provision to third parties if it is for the promotion of the region”, and submitted that “this was almost indistinguishable from ownership”. This submission must be rejected. It is not what APM contends, it is to mischaracterise Mr McCaul’s evidence, and to confuse non‑exclusive rights with exclusivity. APM did not contend that it had sole and exclusive rights. It did not contend it could prevent WASP, Project 64 or any other person from using the Footage. It did not contend its licence was “for whatever purpose APM requires”.
Schedule A – infringements
With the use of the parties’ agreed statement of facts, and both counsel’s closing submissions, the alleged infringements pressed by the conclusion of the hearing are identified in Schedule A annexed to these reasons.
THE ISSUES
The parties were agreed that the issues of ownership and scope of the licence to use for determination are:
[1]whether the copyright in the 2016 Clipper footage is owned by WASP or Project 64 at all material times;
[2]whether the [oral] agreement between WASP and Project 64 included terms that:
(a)copyright in the 2016 Clipper Footage would be owned by WASP; and
(b)Project 64 was granted a limited licence to use the 2016 Clipper Footage for the purposes of promoting the HeliTaxi business, and providing it to APM to produce a video of the welcome party and the media for promotion of the 2016 Clipper Race;
[3]if I find that no, the agreement did not include terms that WASP owned copyright, then:
(a)whether copyright in the 2016 Clipper Footage is owned by WASP as a matter of law; and
(b)whether Project 64 granted an unrestricted licence to APM which authorised the conduct alleged to be acts of infringement in the proceeding;
[4]whether the agreement between Project 64 and APM included a term that APM was granted a limited licence to use the 2016 Clipper Footage for the sole purpose of producing a video promoting the 2016 Clipper Race, or whether instead the licence permitted APM to use the 2016 Clipper Footage to promote the 2016 Clipper Race without restriction.
The relevant factual issues relating to ownership of copyright and the scope of licences largely involve disputed recollections of oral conversations and telephone discussions. There is very limited contemporaneous documentary evidence.
In relation to the allegations of infringement of copyright in the 2016 Clipper Footage, and wilful and flagrant infringement, the parties framed the issues as (continuing the above issue numbering):
[5]whether APM authorised the third parties to make copies of the 2016 Clipper Footage;
[6]whether APM has infringed the copyright of WASP which subsists in the 2016 Clipper Footage;
[7]if infringement is established, whether APM’s infringement of WASP’s copyright was wilful and flagrant infringement.
Further issues were identified as to the defences raised and relief sought, which can be summarised as: [8] whether by reason of APM’s infringement, WASP has suffered the damage alleged; [9] whether APM can rely on a defence of innocent infringement; [10] quantification of damage suffered by WASP; [11] whether and if so what damage Project 64 suffered in the period up to the October 2018 deed of assignment; [12] whether an injunction is justified in the circumstances; and [13], whether the Court should award both compensatory damages and additional damages pursuant to s 115(4) of the Act.
RELEVANT LEGISLATIVE PROVISIONS
The parties were agreed that the 2016 Clipper Footage is a cinematograph film, within the meaning of the Act.
Section 86 of the Act provides:
86Nature of copyright in cinematograph films
For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a cinematograph film, is the exclusive right to do all or any of the following acts:
(a)to make a copy of the film;
(b)to 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;
(c)to communicate the film to the public.
Section 98(3) of the Act (as at 12 January 2016) provides:
98Ownership of copyright in cinematograph films
(3)Where:
(a) a person makes, for valuable consideration, an agreement with another person for the making of a cinematograph film by the other person; and
(b) the film is made in pursuance of the agreement;
the first‑mentioned person is, in the absence of any agreement to the contrary, the owner of any copyright subsisting in the film by virtue of this Part.
Section 101(1) of the Act is as follows:
101Infringement by doing acts comprised in copyright
(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.
Section 115 of the Act (as at 12 January 2016) provides:
115Actions for infringement
(1)Subject to this Act, the owner of a copyright may bring an action for an infringement of the copyright.
(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.
(3)Where, in an action for infringement of copyright, it is established that an infringement was committed but it is also established that, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright, the plaintiff is not entitled under this section to any damages against the defendant in respect of the infringement, but is entitled to an account of profits in respect of the infringement whether any other relief is granted under this section or not.
(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.
Consideration for relief for electronic commercial infringement
(5)Subsection (6) applies to a court hearing an action for infringement of copyright if the court is satisfied that:
(a) the infringement (the proved infringement) occurred (whether as a result of the doing of an act comprised in the copyright, the authorising of the doing of such an act or the doing of another act); and
(b) the proved infringement involved a communication of a work or other subject‑matter to the public; and
(c) because the work or other subject‑matter was communicated to the public, it is likely that there were other infringements (the likely infringements) of the copyright by the defendant that the plaintiff did not prove in the action; and
(d) taken together, the proved infringement and likely infringements were on a commercial scale.
(6)The court may have regard to the likelihood of the likely infringements (as well as the proved infringement) in deciding what relief to grant in the action.
(7)In determining for the purposes of paragraph (5)(d) whether, taken together, the proved infringement and the likely infringements were on a commercial scale, the following matters are to be taken into account:
(a) the volume and value of any articles that:
(i)are infringing copies that constitute the proved infringement; or
(ii)assuming the likely infringements actually occurred, would be infringing copies constituting those infringements;
(b) any other relevant matter.
(8)In subsection (7):
‘article’ includes a reproduction or copy of a work or other subject‑matter, being a reproduction or copy in electronic form.
In relation to the October 2018 deed of assignment s196 of the Act is relevant. I refer to it below in my consideration of the deed and its effect.
THE EVIDENCE AND CONSIDERATION
Parties and participants
I refer to the parties, principal witnesses, and other relevant persons as they were in the lead up to, and as at the time of, the 2016 Clipper Race stopover at Airlie Beach in January 2016, unless I state otherwise. In doing so, I observe that in their witness statements Ms Brown and Mr Plahn describe themselves, their experience, and WASP’s business predominantly as at the time of their witness statements in 2018, and not as at January 2016. A different picture emerged at hearing with their, and Mr Burfitt’s oral evidence.
WASP
WASP is the holder of a remote operator certificate that allows piloting of drones (unmanned aerial vehicles, or UAVs) up to 150kg for commercial purposes.
WASP pleads, and APM admits, that at all material times WASP conducted a business which provides aerial photography and aerial cinematography services in the North Queensland region. Mr Plahn’s oral evidence under cross‑examination revealed, however, that for the first year or so from its commencement in 2014, WASP’s business was providing crop spraying services. His evidence was the photography side was started up later. As at January 2016, WASP had not long been operating that latter business. Mr Burfitt in cross‑examination disclosed that he first met Ms Brown and Mr Plahn several years earlier, as he and they were both franchisees of Yamaha R‑MAX aerial drones, which were designed for both obtaining video footage, and agricultural spraying, the latter being Ms Brown’s and Mr Plahn’s intended use. Mr Burfitt moved away from that drone within 3 months because it was not able to hold the camera he wanted it to hold.
As at January 2016 WASP’s personnel were Ms Brown and Mr Plahn, who live and work together.
Ms Louise Brown
Ms Louise Brown is the director of WASP. She claimed to be the sole shareholder.
Ms Brown made 3 witness statements in the proceeding, dated 31 August 2018, 26 November 2018, and 7 March 2019. She states that she is an experienced photographer, cinematographer, drone pilot and camera operator. She holds a remote pilot licence up to 150kg helicopters, and up to 25kg multi-rotor, that is, a licence to operate aerial drones commercially.
Ms Brown’s witness statements were directed to describing WASP, and its photography and cinematography business, the making of the 2016 Clipper Footage, its delivery to Mr Burfitt, describing the 8 shots comprised in that Footage, and her conduct in 2018 upon finding out about the third party uses in videos posted online of parts of various of those 8 shots. Over the course of her 3 statements she identified the uses WASP claims are infringing.
In her written evidence Ms Brown describes Mr Burfitt’s contact with Mr Plahn on 12 January 2016. In her first witness statement she also sought to give evidence of conversations to which she was not party, and summarised what she said was the agreement reached as to ownership of copyright in the footage before shooting in January 2016. Her witness statement contained key and other passages in nearly identical terms to those contained in the witness statements made by Mr Plahn and Mr Burfitt. I consider this aspect of their evidence later in these reasons.
Ms Brown gives evidence of the skill involved in operating the aerial drone, and operating a remote‑control camera to film footage in the Whitsunday region.
When shooting the 2016 Clipper Footage, Ms Brown operated the remote-control camera mounted to an aerial drone, whilst Mr Plahn piloted the aerial drone.
She gives evidence of the value she attributes to the 2016 Clipper Footage, specifically the 8 shots. She describes WASP’s licensing and pricing arrangements for its footage (as at 2018), and her expectations of types of clients who may wish to licence or use parts of the 2016 Clipper Footage for the purpose of promoting their business during future Whitsunday Clipper Race Carnivals or to promote their business generally. In cross‑examination she conceded she was speculating.
In her second witness statement (26 November 2018) Ms Brown expands on her first statement. She identified additional third party uses. She now sets out key conversations she said she had with Mr Burfitt just prior to shooting on 12 January 2016, and more detail about the delivery of the footage WASP shot. She does not explain why she did not include these conversations or detail in her first statement, despite in her second statement now stating she was word perfect in her recollection because of almost 10 years’ service with the Queensland Fire and Rescue Service, including training to recall detail and additional peer support training referred to as ‘word perfect’, which is the ability to effectively listen and repeat conversations back word for word. Mr Plahn stated the same in the same words in his witness statement (save as to years).
In her third witness statement (7 March 2019) Ms Brown corrects details of key dates and timing in her first two statements. She expands upon, and annexes digital copies of instances of videos containing parts of certain of the 8 shots she found posted to APM’s Facebook page, or “published” by Whitsunday Regional Council on Facebook in the period before her first witness statement, and no longer available, and additionally by Council on its YouTube page subsequently, and detailed in the amended and further amended pleadings.
Ms Brown was cross-examined. Her cross‑examination, and that of Mr Plahn, revealed that Ms Brown had considerably overstated WASP’s video and cinematography business, both as at 2016, and as at 2018. She omitted its previous agricultural spraying business activities. She overstated WASP’s copyright licensing activities, both as at 2016, and at 2018. She omitted to disclose her personal relationship with Mr Plahn, or her and Mr Plahn’s friendship with Mr Burfitt before January 2016. She claimed a distinction between copyright ownership and permissions which I find was artificial and contrary to a plain reading of the documents she relied on.
In her first witness statement Ms Brown says that as at 2018 WASP was presently starting a new and additional line of business to licence some of its film collection. As at 2018 it was in the process of starting to commercialise some of its library collection via websites such as Getty Images. It had not yet determined appropriate pricing of licence terms. In cross‑examination she conceded that as at 2016 WASP did not have a social media rate card on WASP’s website. When pressed, she initially conceded that selling copyright licences was not something that WASP made a regular practice of doing, and subsequently conceded that as at the date of hearing it was “not something we have yet.” She asserted that WASP had a baseline and might depart from that from time to time. When confronted with the accuracy of that statement, she admitted “It wasn’t formalised or written. We had a base idea. We have, of course, been asked to licence footage. It’s just not something that we made a regular practice of doing.”
Another instance of Ms Brown’s overstatement of WASP’s claim, WASP’s practices, and experience was revealed in cross‑examination of Ms Brown of the email dated 22 February 2018 at 1:46pm she sent on behalf of WASP to Mr McCaul, in which she set out WASP’s then position and its demands, and asserted (emphasis added):
“As far as copyright over the material goes, Australian law does not require copyright to be registered or formalised, it is by default, assigned to the creator of the work. ….
Should Abell Point Marina wish to continue utilising the various clips, we would be willing to provide you with a non-exclusive unlimited usage licence at a cost of $5,000.00 per clip. Alternatively, the clips can be purchased for singular uses and rates will vary according to what purpose the footage is to be used for, what platform it is distributed/broadcast on and the region of distribution/broadcasting of the content.
While it is standard practice to impose a time limit on a usage licence, we do not impose time limits on social media usage.”
Ms Brown admitted that in 2016 she (WASP) did not have such a licence document, but proffered that as at 2018 WASP had a general template, which she created “probably 2017 – probably mid‑year”. When pressed, she could not quite recollect.
It became apparent in the course of cross-examination that in her email correspondence with Mr McCaul on 8 March 2018, Ms Brown was referencing an Australian Broadcasting Corporation library sales/ footage rate card, not WASP’s, and that her knowledge was derived from recent internet research about copyright and licence terms. She conceded that her understanding during 2016 was the default position was the creator of the work gets the copyright. Whilst she asserted that she was then aware of s 98 of the Act, her conduct and the absence of any reference to the section in her dealings prior to instructing solicitors, raises a reasonable inference to the contrary, and I so infer.
In correspondence with APM’s solicitor on 19 March 2018, in response to APM’s position that the footage was commissioned, Ms Brown asserted that “The capture of the footage was not commissioned for either a private nor domestic purpose and as such, my company, WASP NQ, retains the copyright”. She claimed that “Notwithstanding the Act that supports my statement, In addition a verbal agreement regarding copyright ownership and usage permissions existed between Paul Burfitt of Project 64 Pty Ltd/HeliTaxi and WASP NQ”, asserted detailed in attached emails. No such agreement was there detailed.
In cross‑examination Ms Brown asserted that in January 2016 WASP entered into 2 separate agreements with Mr Burfitt for Project 64 – one for copyright and one for what permissions were allowed, but accepted that nothing to that effect had been stated in her written statements. She conceded that in the 2018 correspondence on which she relied she did not specifically separate them. She attempted to rationalise that omission. I am not persuaded by the explanation she proffered. WASP does not plead 2 separate agreements.
In her correspondence in 2018 to APM she reserved the right to pursue criminal proceedings, and subsequently, threatened to bring such proceedings. She said she thought she had such a right to do so.
The above exchanges illustrate the general tenor of Ms Brown’s evidence.
Ms Brown initially was clear in her recollection that she did not have any discussion with Mr Plahn about adding a watermark to the 2016 Clipper Footage before providing it to Mr Burfitt. Upon being pressed, she could not recall.
Ms Brown was aware that the footage WASP gave to Mr Burfitt was going to be provided to APM, and was happy that it be handed over without any kind of watermark.
Ms Brown accepted that she did not take any steps herself to make APM aware of what permissions it had or did not have. The totality of it was that she simply expected Mr Burfitt because of his experience, to her understanding, would have explained it (Mr Burfitt said in his email, ‘Creative Commons’ licence regulations applied; Brown conceded she did not know what the term meant). She was comfortable relying on his experience.
Mr Plahn
Mr Adrian Plahn is employed by WASP as its chief pilot, and is its only pilot. In cross‑examination he was shown company search results for WASP which he accepted showed that he was also recorded as a shareholder of WASP. Mr Plahn conceded that he has a financial interest in the outcome of the proceeding, and he was not merely an employee of WASP.
Mr Plahn holds an unmanned aerial vehicle (UAV) controller certificate from the Civil Aviation Safety Authority (CASA) to pilot drones up to 99kgs for commercial purposes. He is an experienced drone pilot and camera operator. He piloted the aerial drone on which the camera was mounted whilst the 2016 Clipper Footage was being shot by Ms Brown.
Mr Plahn made a witness statement in the proceeding dated 26 November 2018. He set out his experience piloting remote control vehicles and aircraft, and expressed his confidence in recollecting details in his [statement] due to almost 15 years with the Queensland Fire and Rescue Service, in the same words as Ms Brown’s statement (although he conceded in cross‑examination that he made a distinction between fire service incidents, and ordinary social situations).
He summarised his conversations with Mr Burfitt on 12 and 13 January 2016, his conclusions, the shooting of the 2016 Clipper Footage on 12 and 13 January 2016, his finding of footage WASP claims infringing in “January 2018” (at hearing corrected to February 2018) whilst browsing his personal Facebook account. He described his contact the following day with Ms O’Keefe at APM, and set out his recollection of their conversation in direct speech (c.f., his summarised conversations with Mr Burfitt). Mr Plahn also explained that when transferring the digital files from their camera to their computer, he and Ms Brown decided that did not need to add a copyright watermark, and explained “given the circumstances, this was not necessary and it was not standard practice when dealing with other production professionals”.
In two places in his statement he states that he “had the benefit of reading Ms Brown’s statement [31 August 2018]”. Under cross-examination he could not explain what that benefit was. He said the expression was something his lawyer put in the affidavit.
Mr Plahn could not explain why he did not say in his statement what his conversation was with Mr Burfitt “as if it had happened”.
Under cross‑examination, Mr Plahn said he and Ms Brown did discuss that there was no need to put the watermark onto the footage because “we gave permission to Paul Burfitt. He was going to make a promotion clip for his HeliTaxi business”. He was not able to recite the conversation. (As I have said above, Ms Brown did not recollect any conversation.)
When challenged that his recollection was no better regarding his conversation with Mr Burfitt, Mr Plahn explained it was “a significant event”, and so he could “place times and - for example, 9/1”. Asked why, he explained “it was exciting”. They had done quite a few jobs before, but it was one of their first jobs with Paul Burfitt. It transpired that the video shoot on 12 January 2016 was WASP’s first work for Mr Burfitt and Project 64.
Mr Plahn could not otherwise explain the coincidence of wording between passages in his and Ms Brown’s statements.
Project 64 and Mr Burfitt
Mr Paul Burfitt made a witness statement dated 23 November 2018, and gave evidence in WASP’s case.
Mr Burfitt stated he has over 30 years’ experience in the sponsorship marketing, public relations, branding, media, production and entertainment businesses. He stated he was a founder of a company in the business of sponsorship, event management, experiential execution and motorsport activities with a specialty in product and brand development, particularly in the automotive and motorsport industries, with a significant client base that included nationally and internationally recognised brands, which at its peak employed up to 300 staff. The company did not survive the financial crisis of 2008.
From late 2008 to late 2017 Mr Burfitt operated Project 64. Mr Burfitt was the sole director of Project 64.
As I have said above, in late 2015 Project 64 purchased the HeliTaxi business, and on 1 January 2016 officially took ownership of the business.
Prior to November 2015, Project 64 was, among other things, a boutique brand based television production company, operating nationally from its then base in Melbourne, Victoria. As of November 2015, it was no longer operating as a production company. Mr Burfitt wanted to get out of the industry. Mr Burfitt sold all the camera equipment in November 2015, before he moved to Queensland in December 2015 and a new life with the helicopter business. In oral evidence he volunteered that he retained a stills camera that had the capability of shooting some video, but not handheld out of a helicopter.
At the time of the 2016 Clipper Race stopover at Airlie Beach, Project 64 and Mr Burfitt were new to the aviation industry, and to the region. His evidence is that he moved to Airlie Beach about a week before Christmas, three weeks before the Race stopover.
Mr Burfitt had known Ms Brown and Mr Plahn for approximately 3 years prior to moving to the Whitsunday region. He knew them through their mutual interests as franchisees of Yamaha drones which they proposed to use for crop spraying activities, and he for video production (see also, above). He socialised with them from mid‑2015 when he visited Airlie Beach preparatory to moving there. They were friendly.
Mr Burfitt’s evidence in cross‑examination
In the light of his oral evidence, his experience set out in his written statement was exaggerated. It is not necessary to detail those respects in these reasons.
Mr Burfitt’s explanations varied between his written statement and the several explanations he sought to give in cross‑examination.
In his witness statement Mr Burfitt expressly referred to Ms Morel’s and Mr McCaul’s statements. In cross‑examination, Mr Burfitt asserted that he had not read anyone else’s statements before signing his statement. He then conceded that he had done so. He had no explanation why the same wording appeared in his statement and Ms Brown and Mr Plahn’s statements, except that WASP’s lawyers had prepared his statement from what he had given them, and that he was happy to sign it. He accepted that he didn’t say that all of the words in the statement are the words he had used.
He rationalised from what he said was standard practice to what he said he did, the effect of conversations he had, and the assumptions he made. He made no distinction between buying outsourced footage from a stock video company, where he would sign (or it appears “tick a box” to obtain) a “Creative Commons license to use it for single use”, and commissioning the production of film and video footage for Project 64’s incorporation into videos and films in its former business of video and TV film production.
In relation to the 2016 Clipper Footage, he assumed he would have ticked a box
Mr Burfitt sought to explain his email of 21 February 2016 (6:59pm) to Mr Plahn and Ms Brown, copied to Mr McCaul, in which he did not say anything about having told Mr McCaul about any restrictions on the use of the footage in January 2016, as “most likely I had had a few drinks and wrote the email in anger, which you have undoubtedly seen a couple of the emails I’ve written in anger on this matter, as well”. As APM’s counsel submitted, the email is, however, lucidly and clearly written and punctuated. I refer to this email further below.
It was apparent from Mr Burfitt’s correspondence with the parties in 2018, as he there stated, he was most unhappy at having been included in the dispute.
WASP’s expert evidence
WASP relied on statements and attached reports from two experts, Mr Michael Hill, dated 31 August 2018 and Mr Matthew Cassidy dated 29 August 2018. Mr Cassidy was cross‑examined. Mr Hill was not, further to an agreement reached between counsel. WASP relied primarily on Mr Cassidy’s evidence, asserting that it should be accepted because APM did not put on any expert evidence as to the value of the Footage.
Mr Cassidy is experienced in producing tourism and video content through his company Tourism Media. Tourism Media’s main client is Expedia, and his company licences a large volume of footage to Expedia, mostly on an exclusive basis, which pricing he took into account in conducting his analysis.
Mr Cassidy was asked to provide an opinion as to the quality and value of the 2016 Clipper Footage. Mr Cassidy provided opinions in relation to usage fees for WASP’s clips and footage. He was instructed that WASP owns copyright in the footage. He opines that the Footage is high quality, unique, and only possible from a one-off shoot. In his view, that it was drone footage and drones require licences to operate added to its uniqueness and increases its value. Mr Cassidy provided an opinion as to typical fees, including $15,000 to $40,000 for a transfer of copyright for all the footage, and $500 at least, per shot, per project for non‑exclusive right to use worldwide for one year for commercial use:.
Mr Cassidy stated that there are many other licensing models, and that fees vary considerably depending on the licensing model.
He opines that if the footage was available to be seen by many people, this would decrease its value, and make it difficult if not impossible to license in the future.
Mr Cassidy was not briefed with any uses WASP itself had made of the 2016 Clipper Footage, which included in February 2016, posting some at least of the shots in short videos on its website (see below at [226]).
Mr Cassidy was not made aware that WASP accepted that APM’s use of all 8 shots in the video entitled “Clipper Round the World Race Stopover 2016” was on WASP’s pleaded case, the sole permitted use. He was not briefed with any of the alleged infringing uses. He was not asked to consider the way in which APM or any of the third parties had used the footage. Further, given the timing, he was not aware of the additional 2 videos that at hearing WASP conceded were within the scope of APM’s permitted use.
Mr Cassidy’s report can rise no higher than his instructions, and assumptions, and assuming that the matters pleaded in the statement of claim regarding copyright infringement liability are true.
Mr Hill is an independent chartered accountant, and a partner of McGrathNicol. Mr Hill was provided with Mr Cassidy’s expert report. Mr Hill provided a loss range reflecting what he was instructed was WASP’s actual experience and the opinions expressed by Mr Cassidy.
It was agreed by the parties that Mr Hill’s report would be read on the basis it is not relied on for any opinion as to value, that objected to paragraphs are read on the basis they explain a method and rationale for a calculation of damages, and tables 1 and 6 set out a calculation of damages, that the matters referred to are ultimately matters for submissions, and WASP will not make any Browne v Dunn submissions if Mr Hill is not cross‑examined. Mr Hill was not required for cross‑examination.
Mr Hill’s report can rise no higher than his instructions, and assumptions, and assuming that the matters pleaded in the statement of claim regarding copyright infringement liability are true.
APM
I have described APM above. It operates the Marina. It has, at all material times conducted a business which provides marina services, function spaces and other recreational services in Airlie Beach, North Queensland. Its business at the Marina includes a separate wedding and functions venue known as ‘Lure’.
In preparation for hosting the Race at Airlie Beach, APM secured investors, sponsors, negotiated and obtained the support of Whitsundays Regional Council, Tourism Whitsunday, marketed and promoted the Race as a Whitsundays regional event, dredged the Marina basin to ensure access for the clipper yachts, and made provision of its own funds, facilities and services at no or reduced cost to Race participants and organisers.
Mr McCaul
Mr Luke McCaul was APM’s Marketing and Business Development Manager from May 2013 until May 2016, when he was appointed APM’s General Manager. Mr McCaul resigned in April 2018 to take up the position as General Manager – Customer Experience and Property Management of Gold Coast Marina and Shipyard, which position he held at the time of hearing. He has more than 10 years’ experience in tourism and business management and bachelor degree in Business Management and Tourism from Griffith University.
Mr McCaul made 2 witness statements in the proceeding, dated 27 September 2018, and 21 December 2018 respectively.
As Marketing and Business Development Manager, Mr McCaul was responsible for all of the marketing at the Marina. Ms Morel reported to him. APM spent in the order of quarter of a million dollars a year on marketing.
Whilst Mr McCaul was employed as the General Manager, he had approximately 30 people reporting to him.
In January 2016, the Marina had a YouTube account, and a second account for the function and wedding business “Lure”, which was also under his control. In January 2016, most of the videos uploaded were created by APM, however they did use third party providers as well.
Mr McCaul was cross‑examined. His evidence was consistent with and supportive of his statements. I accept that he gave a credible and honest account of his recollection. He made reasonable concessions, and did not avoid answering questions. He was not partisan.
Mr McCaul’s evidence is plausible, consistent with the email correspondence at the time, does not require rejection of contrary material or explanation of inaction, or contrary conduct. For these reasons, and as I set out below, where there are differing accounts of critical conversations, Mr McCaul’s account is to be accepted.
Ms Morel
Ms Cherie Louise Morel was employed as a marketing coordinator by APM from October 2013 until late 2018. She reported to Mr McCaul. In October 2018 she joined Tourism Whitsundays as its marketing assistant, which position she held at the time of the hearing. She made a witness statement dated 14 September 2018.
Ms Morel gave evidence of Mr Burfitt’s delivery of an unmarked hard drive to APM’s offices in January 2016. Her evidence was that she had been told by Mr McCaul that Mr Burfitt was going to provide APM with some video and photo files and that she should make copies of them when he delivered them. She copied the files from Mr Burfitt’s hard drive to her computer in his presence. She says that Mr Burfitt offered the files to APM and said that APM could use the files. Mr Burfitt did not mention any copyright issues or limits on APM’s use of the files. She did not recall him mentioning WASP in relation to the files. She subsequently returned the hard drive to Mr Burfitt, but did not recall when or how that occurred.
Within a few days thereafter, she reviewed the files, saw that they included various raw footage of boats arriving and leaving the Marina for the Race, some of it appeared to have been filmed from Mr Burfitt’s helicopter, and other footage appeared to have been filmed using a drone. There were also a number of photographs.
Ms Morel was cross‑examined. Her oral evidence was consistent with her witness statement. I accept that she gave an honest and credible account of her recollection, and limited her evidence to that recollection.
Ms O’Keefe
Ms Joscelyn Susan O’Keefe has been employed by APM as a marketing and business development manager since August 2016. She made 3 witness statements in the proceeding, dated 26 September 2018, 9 January 2019, and 11 March 2019.
Ms O’Keefe gave evidence of APM’s marketing activities and expenditure, its commissioning of videography and photography for APM’s use, mostly by Riptide, the rare occasions on which APM has purchased a licence to certain existing footage or photos from other parties (2 during her employment), the 2018 Clipper Round the World Yacht Race and stopover in Airlie Beach. She gave evidence of notice of WASP’s copyright claim, and communications with her regarding that claim from Mr Plahn, Mr Gordon, and Whitsunday Regional Council in February 2018, and the steps taken by her to search for, identify videos containing certain drone footage from the 2016 Race that WASP asserted copyright over, and remove access to publication of any videos identified in each of February, April and July 2018.
Ms O’Keefe’s evidence is that on 26 February 2018, further to Mr McCaul’s emailed request, she searched websites, YouTube channels and social media for videos, identified, watched each video, and removed access to (made private view, removed from video library and the like) the videos she could find on APM’s website, Lure’s website, a superyacht website, and other media that contained content over which WASP asserted copyright. She made a contemporaneous note as she undertook her searches. It is in evidence. She was cross-examined on her note. I am satisfied that her note is an accurate and contemporaneous record of what she did, what she found.
On 10 April 2018, at Mr McCaul’s request she undertake “a thorough audit” Ms O’Keefe undertook a further review guided by a complaint by WASP’s lawyers that at least 3 allegedly infringing videos appeared on APM’s Facebook page. WASP through its lawyers specified particular dates on which the videos were posted. Ms O’Keefe manually scrolled through 18 months of content on APM’s Facebook page trying to identify videos which could potentially contain the 2016 Clipper Footage, and then reviewed those videos to try and identify excerpts of the Footage. She removed access to the one video she found. In respect of Facebook Events which could not be deleted, she sought to hide them from the timeline. Mr O’Keefe undertook a further review on 2 July 2018, in response to an email from Mr Paul Darrouzet, director of APM, and removed access to a certain video posted by Tourism Whitsundays loaded on APM YouTube channel. Ms O’Keefe sets out the additional steps she took on 2 July 2018 to remove from APM’s YouTube channel all pre-event Clipper Race Carnival videos produced by or on behalf of the consortia for the 2018 Clipper Race, for more abundant caution. Ms O’Keefe explains why she did not find all videos containing any allegedly infringing content on 26 February 2018.
Ms O’Keefe explains that on 22 February 2018, Mr McCaul and she flew to Perth to attend the Australian Tourism Awards event. They returned to Airlie Beach on Sunday, 25 February 2018. I observe that in his correspondence with Ms Brown on 26 February 2018, at 10:32am Mr McCaul apologises for his delayed response, and informs her of the reason for his absence. Mr McCaul informed Ms Brown of the steps APM had taken and listed videos made unavailable for viewing.
Ms O’Keefe also gave evidence that she conducted searches of APM’s records and located within a folder called “HeliTaxi” on a hard drive a folder named “Clipper Arrival (Untouched)” which contains numerous images and video footage which appear to have been taken from a helicopter during the 2016 Clipper Race stopover, and a folder named “Drone” which contains various clips of drone footage which appear to have been taken during the 2016 Clipper Race stopover. She reviewed the content of the folder named “Drone” and observed that there is nothing in the naming of the files, no marking on the footage itself, and nothing at all to indicate anything about copyright asserted over the footage.
Ms O’Keefe was cross‑examined. Her oral evidence was consistent with, and substantiated her witness statements. She checked APM’s website, Google, Instagram, YouTube channel and social media sites and posts, including of the countdown to the 2018 Race, and videos, identified films containing any footage in issue by manually searching for and looking at each video. I accept that she gave an honest and credible account of her actions, and a rational and reasonable account of why she did not find all allegedly infringing material in February or April 2018.
Contrary to Ms Brown’s assertion, Ms O’Keefe said the weather during the 2018 stopover was unseasonably good. Ms O’Keefe says Mr Plahn did not leave a detailed message when he contacted APM in February 2018.
On the evidence of Ms O’Keefe and Mr McCaul, and the steps evidenced by APM, I am satisfied that APM acted reasonably, and in good faith in response to WASP’s claims in February 2018, that neither APM, nor its employees deliberately or unreasonably delayed or ignored WASP’s claims. I accept that any oversight in identifying videos containing any segments of the 2016 Clipper Footage was inadvertent.
Ms Purdie
Ms Katrin Ann Nickerson Purdie made a witness statement dated 21 December 2018 admitted in evidence. Ms Purdie succeeded Mr McCaul, and is employed by APM as its general manager.
Ms Purdie gave evidence about the third parties that WASP alleged infringed its copyright in the 2016 Clipper Race - Phill Gordon of Riptide, Council, Tourism Whitsundays, that APM has no influence or control over their actions, does not monitor and has no reason to monitor publications by third parties, and was unaware of their publications (by which term I apprehend is intended any post or online communications) which WASP contends infringe its rights, prior to February 2018, when WASP brought them to APM’s attention.
Ms Purdie gave evidence that she gave instructions in August 2018 to APM’s solicitors in response to WASP’s solicitors’ letter of demand in August 2018 that APM immediately take steps to have 5 videos allegedly available on Tourism Whitsundays’ YouTube Channel and Facebook page containing the 2016 Clipper Footage. APM’s solicitors wrote to WASP’s solicitors, and to Tourism Whitsunday on her instructions. Ms Purdie was not required for cross‑examination.
Mr Gordon
I have referred to Mr Phillip Blair Gordon and Riptide earlier in these reasons. Mr Gordon made a witness statement dated 27 September 2018, which was admitted in evidence. He has over 10 years’ experience as a professional videographer and photographer, is a fully licenced drone operator, a holder of a CASA remote pilot licence, and specialises in aerial work in the Whitsundays region. Riptide works in photography, videography, UAV services and social media and digital marketing. Its business is primarily producing original footage or editing or assembling footage produced by clients, it is the holder of a CASA remote operators certificate, and works in and around Airlie Beach, and further afield.
In his witness statement Mr Gordon gave evidence of his experience, his engagement (through Riptide) in late 2015 for the provision of videography and photography of the 2016 Clipper Race stopover, his engagement for the videography and photography of the 2018 Clipper Race stopover, his performance of that 2018 engagement, and the videos he produced, and delivered. He described the skill involved in the capture of drone footage, contrasting that involved in capturing footage of boats when stationary, and when they are under sail.
Mr Gordon was not required for cross‑examination.
CONSIDERATION
The sponsorship agreement
Mr Burfitt’s evidence under cross‑examination is that at the start of 2016 Mr Burfitt saw the success of the Marina as a good thing because the more popular the Marina the greater the pool of potential customers for HeliTaxi. For this reason Mr Burfitt wanted to sponsor an event at the Marina as a way to jointly promote and also associate himself (HeliTaxi) with the Marina.
Although Mr McCaul and Mr Burfitt agree they reached agreement that Project 64 would participate with APM in sponsoring the welcome party, both gave different accounts of their dealings in late 2015 and early 2016.
Mr Burfitt claimed that he and Mr McCaul reached 2 agreements – an agreement for Project 64’s co-sponsorship of the welcome party, and a separate agreement further to a request by Mr McCaul that Mr Burfitt take some “footage for us to use in a promotional video about the event”, and that Mr McCaul asked for some helicopter shots of the arrival and departure of the race fleet. Mr Burfitt claims that he offered a 50% discount for the helicopter use, but would take the footage for free. He says that both the footage and the reduced helicopter rates were entirely separate to the sponsorship of the welcome party. He provides no explanation why this was so, nor did the evidence, taken as a whole support this claim.
Mr Burfitt says further that on or about 12 January 2016, he and Mr McCaul had a conversation about the footage APM wanted, and that Mr McCaul then said he wanted “low angled shots” of the Marina and “the Clipper Boats”. In his witness statement Mr Burfitt says the conversation was as follows:
[18]On or about 12 January 2018, Mr McCaul and I had a conversation about the footage that the Respondent wanted. To the best of my recollection, the part of the conversation about the low angled shots was to the following effect:
Mr MCCAUL: We want low angled shots of marina and the Clipper Boats.
ME: It will not be safe to take these shots, particularly at sunset, with one of my helicopters. We need to comply with our CASA licence. I have a good working relationship with a drone company called WASP, I should be able to get them to do those shots. They might give me a good price and should be able to do it at short notice. I will pay for the footage.
MRMCCAUL: Yes, that sounds like a good solution.
ME: I will contact them and ask them to do the shoot.
In cross‑examination, contrary to the above, Mr Burfitt says that he had already offered to provide the helicopters at reduced rates before the email exchange dated 17 December 2015 (see below at [160]).
In his witness statement Mr Burfitt then says that to the best of his recollection in the above conversation on 12 January 2016 he said to Mr McCaul to the effect that “the footage taken by WASP will only be able to be used for the purpose of producing the video promoting the 2016 Clipper Race” and that Mr McCaul said to the effect “we only need the footage for the one video”. Mr McCaul says no such conversation occurred, nor was any such statement made.
In his witness statement Mr Burfitt follows the above evidence by saying he contacted Mr Plahn.
The import of the totality of his evidence was that Mr Burfitt first contacted WASP about it providing video footage of anything to do with the 2016 Clipper Race, the welcome party or otherwise was in the afternoon of 12 January 2016, and after the conversation he claimed to have had with Mr McCaul on that day.
In evidence is a chain of emails exchanged on 17 December 2015. Mr McCaul emailed Mr Burfitt at [email protected] forwarding to him an email from APM’s solicitor enclosing a finalised draft sublease for Project 64 with survey lease plan attached under the subject line “Abell Point Marina – Lease BAR”, and asking Mr Burfitt to let him know once he is generally happy with the terms, so that they can seek Ministerial Consent for the lease. The sublease is in evidence. It is for a floating office at a berth at the Marina. The 17 December 2015 email establishes that APM and Project 64 were negotiating the sublease at a time earlier than Mr Burfitt suggests in his statement.
Mr Burfitt replied promptly by email, advising he would review and come back to Mr McCaul. Mr Burfitt added: “Any further thoughts on the sponsorship payment options?” In response that same afternoon, Mr McCaul emailed:
How about we go halves in the champagne $1.5k each and then you can provide the rest of value through video – Does that sound alright?
Just thinking about all the other expenses we have for Clipper and need to manage this.
Regards
Luke
In cross‑examination, Mr Burfitt could not explain the reference to his provision of video in the email, save to repeatedly say that he never responded.
Mr Burfitt says he was never going to shoot video. He no longer had the video camera equipment. He says Mr McCaul was using his own video producer and producing his own videos: Phill Gordon from Riptide Creative was going to be in the helicopter filming. Mr Burfitt says that there was no discussion of drone footage at that time (December 2015).
Given the chain of emails, I consider it is reasonable to infer that had Mr Burfitt disagreed with, or been unable to perform, Mr McCaul’s proposal he would have responded to the email and told him so. So too, I consider it is reasonable to infer that if in December 2015 he had not discussed that he could procure drone video footage from someone he knew, he would have queried Mr McCaul’s proposal, at the least. It is reasonable to infer from his silence, and subsequent actions that he understood, and accepted Mr McCaul’s payment proposal.
Mr McCaul’s evidence is that he and Mr Burfitt negotiated the sponsorship via a series of conversations and emails. The negotiations were to the effect Project 64 was interested in sponsoring the welcome party, however Mr Burfitt’s business was new and did not have significant cash available for sponsorship, and APM wanted to support Project 64 as a tenant because they shared a common commercial interest, namely the tenancy. Mr McCaul says he suggested Project 64 contribute funds to cover some of the costs of oysters and champagne for the welcome party, an amount was agreed, and additionally Mr Burfitt offered to take a HeliTaxi helicopter up during the party, and to obtain photos and footage of the Marina and the event, and leverage his relationship with WASP to procure WASP to obtain drone footage of the welcome party at the Marina during the event, and that the footage so obtained could be used to promote the Race, APM’s facilities and future events at APM, Mr Burfitt’s business, and the region.
Mr McCaul says the agreement reached between APM and Project 64 was that HeliTaxi would be marketed as a co-sponsor of the welcome party in consideration of Project 64 contributing an amount for the champagne at the welcome party, and procuring the footage to be used as I have described in the preceding paragraph.
Mr McCaul reiterated this evidence in cross‑examination, and clarified in response to questioning from counsel, that he and Mr Burfitt had discussed that the footage could be passed to third parties for promotion of the event, the Race and their businesses.
It is clear from Mr Burfitt’s email what he recollected all that he tried to do (see eighth paragraph), and that looking back to 2016 he believed what the footage was that he paid for (see third paragraph of his email), that he assumed “standard copyright regulation”, and there was “no other agreement, written or otherwise” that he was aware of.
Mr McCaul sent a short email response to Ms Brown, that day, which follows in the same chain of emails as the above. From the timing of this email it was sent shortly before he and Ms O’Keefe travelled to Perth for the Australian Tourism awards. He sought any written or verbal advice on the use of the footage in question. He then wrote:
I understand your position in that if you have shot footage that is yours, that this should be recognised - I have no problem with this. The problem that exists is that this was never stipulated to Abell Point in either a written or verbal format. It was provided as part of a sponsorship with a tenant to promote a marina event.
…
Ms Brown responded by email, also on 22 February 2016, at 1:46 pm. I have referred to part of her email earlier in these reasons (see above at [86]). She wrote:
Subject: RE: Wasp NQ
Dear Luke,
As discussed with Jocelyn and contained in my recent email to Paul Burfitt, copied to yourself, various clips of WASP NQ’s have been utilised in multiple videos produced by Abell Point Marina and multiple other third parties without permission or consideration.
While I understand this appears to have been a misunderstanding on Abell Point’s part regarding the limited use permission granted in 2016, the issue does need to be resolved.
In relation to your email received at 12:21pm today, you are aware the footage was shot for the client company HeliTaxi, which was a tenant of the marina at the time. On the day the footage was shot, you, yourself, gave your keys to Adrian, of WASP NQ, for the purpose of gaining access to one of the marina arms in order to shoot the footage in question.
As far as it being provided to Abell Point Marina as part of a sponsorship package, I have not been provided with a written agreement between the marina and HeliTaxi in relation to the sponsorship package. I assume such agreement details the rights and usage of any footage provided to Abell Point Marina as part of the sponsorship?
If such a clause were to be included, HeliTaxi does not own the rights to the media in question and therefore cannot assign usage rights to a third party beyond that which has been agreed upon between HeliTaxi and WASP NQ.
The agreement between WASP NQ and HeliTaxi was verbal, and I believe the agreement between the Marina and HeliTaxi was also. By Australian law, a verbal agreement is as enforceable as a written one.
As far as copyright over the material goes, Australian law does not require copyright to be registered or formalised, it is by default, assigned to the creator of the work.
… (Ms Brown then set out WASP’s demands, and offered a non‑exclusive unlimited licence at a cost of $5,000 per clip).
On 26 February 2018, Mr McCaul emailed Ms Brown, advising of the steps taken by APM in removing access to videos that I have described earlier in these reasons. WASP seeks to rely on Mr McCaul’s prefatory paragraphs in this email to submit that APM there conceded that it only ever had a limited permission. He wrote:
I agree with you that there was a misunderstanding with the usage rights of the footage. As the relationship regarding this footage was directly with our tenant (not Wasp NQ), there was no formal discussion around the usage rights which has caused the confusion. We have only ever used this footage for the positive promotion for marina events and the Whitsundays, however I now do understand that this doesn’t give us the authority to use freely and pass onto third parties. Abell Point Marina (APM) apologise for this unintended breach of copyright and will perform the following steps to remedy the situation:
-APM have immediately ceased all usage of the footage and have taken down any video on our website that contains this footage including youtube, social media sites (ie Facebook) and our Google Plus site. I have included below links to videos in question, please advise if there is others I haven’t included. These videos are now unavailable for viewing.
… [Videos and links listed]
-I will personally write to the three parties with whom we have allowed the use of the footage advising them that this breach of copyright has been brought to our attention and that they must similarly immediately cease usage of the footage and take down all sites encompassing the footage. These three parties include Whitsunday Regional Council, Tourism Whitsunday and Riptide.
Viewed in the context of the preceding correspondence and communications from WASP and Mr Burfitt, and Mr McCaul’s evidence including oral evidence, I do not consider any such concession was made.
Further items of correspondence complete the parties’ communications in evidence having any relevance on the issues of copyright and their conduct before the parties commenced communicating via their lawyers.
By her email dated 1 March 2018, Ms Brown informed Mr McCaul that Whitsunday Regional Council had agreed to simply pay for the footage utilised and that WASP had made “similar arrangements with Tourism Whitsundays. I note that to the extent that Ms Brown thereby represented that both entities paid for the use of the footage, she misrepresented their positions. Ms Brown proposed a calculation for payment of past usage. Ms Brown required payment and further steps to be taken. For the first time, she identified that one of the videos APM had removed “was the video that permission was granted”.
Mr McCaul responded by email on 6 March 2018, rejecting the demand for payment. Ms Brown replied on 8 March 2018. I have referred to that email previously. She reminded Mr McCaul that WASP had criminal and civil avenues available to it. Further correspondence ensued. I have referred earlier to Ms Brown’s email exchange with APM’s then solicitors on 19 March 2018, in which Ms Brown for the first time asserted a verbal agreement with Mr Burfitt of Project 64 regarding copyright.
On 28 March 2018 Ms Brown forwarded to Mr Burfitt a document concerning copyright of the clipper footage from WASP’s solicitors, and arranged to meet him to sign it. She thanked him for his assistance, and concluded “As we’ve stated many times before, if there’s ever anything we can do, just say the word”. By the description of the attachment, the email attached the form of the “confirmatory deed” I refer to at [20] of these reasons.
CONCLUSIONS AND DISPOSITION OF ISSUES OF LIABILITY
WASP’s counsel in his closing written submissions submitted first that an agreement in which WASP provided the 2016 Clipper Footage for a particular purpose is only consistent with WASP retaining ownership of the footage, and that Ms Brown, Mr Plahn and Mr Burfitt have consistently maintained that such an agreement was in place.
This submission should be rejected. It is based on several incorrect premises: that it must follow that if a commissioned cinematograph film (the 2016 Clipper Footage) is commissioned for a particular purpose then copyright must be vested in the commissioned party, secondly that the Footage was commissioned for a limited particular purpose, and thirdly that because WASP’s witnesses all said so, in extremely similar words, it must follow that there was such an agreement in place.
I have considered the evidence of the telephone conversation on 12 January 2016, and what occurred at the Marina on 12 and 13 January 2016, and in so doing expressed my findings, and my state of satisfaction on the evidence. I have found that the telephone conversation between Mr Burfitt and Mr Plahn on the afternoon of 12 January 2016, comprised the agreement between Project 64 and WASP for the shooting of the 2016 Clipper Footage (see above at [199]).
Whilst I am satisfied on the evidence that Project 64 commissioned WASP to shoot the 2016 Clipper Footage, and directed what it should shoot, including in those directions the directions from Mr McCaul for low angled shots, and that WASP was aware that APM would be provided with the 2016 Clipper Footage, I am not satisfied on the evidence that WASP has established on the balance of probabilities Project 64 commissioned the 2016 Clipper Footage for the particular purpose as alleged in the further amended statement of claim, or as submitted by Mr Gardiner in closing. I am not satisfied that the oral agreement had as a term that WASP was the copyright owner of the 2016 Clipper Footage.
In APM’s written outline of opening submissions Mr Curtis submitted that there was an absence of any evidence that the parties were treating subsequent discussions after the telephone conversation on 12 January 2016 as further negotiations, as opposed to “confirmations”, this means they are irrelevant and it invites error to seek to prove the intent of an agreement by reference to post‑contractual statements and conduct (see ABC v XIVth Commonwealth Games Ltd (1988) 18 NSWLR 540 at 548; Franklins Pty Ltd v Metcashtrading Ltd [2009] NSWCA 407; (2009) 76 NSWLR 603 at 615-6 [11]-[12] (Allsop P)).
I accept that any discussions had at the Marina on 12 January 2016, even if they occurred as claimed by Ms Brown, Mr Plahn and Mr Burfitt, were not continuing negotiations, but post‑contract confirmations. Ms Brown said so in her first statement (see above at [205]). Mr Burfitt said at [32] of his witness statement that he discussed the terms of the agreement to ensure that Ms Brown as director of WASP was also agreeable to the terms Mr Plahn and he had agreed earlier that day. He explained he believed this is standard practice. Whilst, as I have set out above in my consideration of the conversations and events on 12 January 2016 at the Marina, they then sought to repeat what they claimed had been said over the telephone, I do not consider that they were there continuing negotiations or entering into further negotiations. The agreement had been concluded over the telephone. I accept Mr Curtis’ submission summarised above.
In my view, the state of the evidence does not admit the conclusions WASP submits should be drawn. Mr Gardiner’s characterisation of Ms Brown’s email of 22 February 2018 as only consistent with WASP retaining ownership of copyright does not survive a consideration of the plain words of the email. I do not so read the email. To the contrary.
Ms Brown appears to have been under some misapprehension in February 2018 that because WASP shot the Footage it was thereby the copyright owner. She is incorrect. Beneficially construed, it may be that Ms Brown was expressing her understanding that the position that pertains with copyright in works such as photographs, applies. That is, however to speculate.
The above is sufficient to dispose of Issues 1, 2 and 3 of the parties agreed issues (see above at [61]).
I have set out above my conclusions on the sponsorship agreement (see at [175]‑[182]). I have accepted Mr McCaul’s evidence. I am not satisfied that Mr Burfitt expressed any limitation on use of the 2016 Clipper Footage to Mr McCaul or to APM at any time. I have accepted Ms Morel’s evidence. I find that the 2016 Clipper Footage was provided by Mr Burfitt, and thus by WASP 64 without any limitation that as to its future use or to whom it could be provided. Accordingly APM was entitled to use the 2016 Clipper Footage, including for use in videos, to promote the Clipper Round the World Yacht Race, its stopover at the Marina in 2016, APM’s facilities and future events at APM, and the Whitsunday region, and to provide the 2016 Clipper Footage to other businesses and entities to benefit APM and the Whitsunday region.
WASP pleaded a permission solely limited to a making and communicating online a single video for the promotion of the 2016 Clipper Race (see above at [24]). Its recognition at the conclusion of the hearing that such a limited permission was not maintainable, whilst then proposing a broader permission, but still limited, has the consequence that WASP’s lay witnesses’ evidence of the narrow permission must be treated with extreme caution. In the event, given my conclusions set out in the preceding paragraphs, it is not necessary to resolve these concerns.
In WASP’s closing submissions, Mr Gardiner submitted that APM’s 2018 correspondence, including the correspondence I have referred to above, evidenced the actual scope of the promotion licence, and that APM’s solicitor in correspondence dated 20 March 2018 expressed accurately the narrowness of the true licence to use the footage. I read the 2018 correspondence from APM as its reasonable commercial attempts to resolve a dispute, not as any concession that any claim by WASP was valid, or as asserted by it, nor that it was granted a licence limited only to promotion of the 2016 Clipper Race stopover at the Marina. It follows I reject Mr Gardiner’s submission.
The above is sufficient to dispose of Issue 4 of the parties’ agreed issues. The alternatives proposed do not arise for consideration: the first alternative was abandoned by WASP during the hearing, and the second was not a true alternative. I have found no such limitation was imposed.
THE CONFIRMATORY DEED AND THE OCTOBER 2018 DEED OF ASSIGNMENT
I next turn to consider the effect and consequences, if any, of the two deeds that WASP and Project 64 entered into in about March-April 2018, and October 2018 respectively.
The confirmatory deed
As to the first document, in its outline of closing submissions, WASP submitted that the March/April 2018 deed “formalised” the oral agreement made on 12 January 2018. In its supplementary submissions, WASP submitted that it confirms the parties’ understanding of their oral agreement as to ownership of the copyright and is proof of an agreement to the contrary pursuant to s 98(3) of the Act. WASP accepted that it does not assign any rights from Project 64 to WASP. It is simply confirmatory.
I have concluded that the oral agreement did not vest copyright in the 2016 Clipper Footage in WASP. It follows that the “Confirmatory deed – Copyright ownership” does not operate to confirm any copyright vesting in WASP. This conclusion is sufficient to dispose of that deed. It is not necessary in the circumstances to express any view on Ms Brown’s email dated 28 March 2018 to Mr Burfitt enclosing a copy of the document to sign.
The October 2018 deed of assignment
As to the October 2018 deed, WASP submitted that the October 2018 assignment deed is relied upon only as a fall‑back position in the event that the Court considers that the oral agreement did not take place, and therefore that the copyright vested in Project 64.
Clause 1.2 of the deed is the operative provision. It provides:
1.2To the extent that Project 64 owns any copyright in the Works, Project 64 assigns to WASP all its right, title and interest in and to the Works, including:
(a)all current and future copyright rights, and rights in the nature of copyright, in the Works; and
(b)all accrued rights of action involving the Works, including the right to sue for past infringements, throughout the world, with effect from the date of creation of the Works.
Section 196(3) and (4) of the Act provide as follows:
196Assignments and licences in respect of copyright
…
(3)An assignment of copyright (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor.
(4)A licence granted in respect of a copyright by the owner of the copyright binds every successor in title to the interest in the copyright of the grantor of the licence to the same extent as the licence was binding on the grantor.
WASP submits that s 196(3) states a condition – the assignment does not have effect unless in writing, not a temporal limitation. It is for the parties to give an assignment an operative date, which can be immediate, retrospective or prospective. WASP refers to ACP Machinery Australia Pty Ltd v Aerospace Technologies of Australia (No 3) [2013] FCA 718 at [101].
Mr Gardiner submits that the October 2018 deed is expressly retrospective. It purports to assign the relevant rights “with effect from the date of creation of the works”. He submits it should be taken to be a present assignment of the copyright in the 2016 Clipper Footage, made on 25 October 2018, with retrospective operation from the date of creation. On this basis he submits WASP is properly regarded as the owner of the copyright with title to exercise those rights from the time of creation as the document provides. This would have “fed” WASP’s title to grant a licence on particular terms to Project 64 and, through Project 64 to APM. He relies on Chhabra v McPherson as Trustee for the McPherson Practice Trust [2018] FCA 1755 at [108], and discussion by Conti J in Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522; (2006) 67 IPR 262, at [117]-[119].
As I have concluded there was no agreement for copyright to be held by WASP when the 2016 Clipper Footage was commissioned, the October 2018 becomes relevant to consider. However, as there was no such agreement in 2016, there was no equitable assignment capable of being perfected in 2018.
The 2018 assignment to WASP is subject to the terms of whatever licence Mr Burfitt had expressed in favour of APM. Mr Burfitt and Mr McCaul had agreed the terms in the sponsorship agreement. The 2016 Clipper Footage was provided to APM in performance of the sponsorship agreement. I am not satisfied that Mr Burfitt imposed any restriction on use of the 2016 Clipper Footage in any of his claimed conversations with Mr McCaul thereafter, before or on 12 January 2018. It follows that WASP has not established any limitations on the use of the 2016 Clipper Footage. I have accepted Ms Morel’s account. I find that Mr Burfitt did not express any limitation on the use of any of the footage he delivered to APM on 15 January 2018. It follows that from its commission APM has been entitled to use the 2016 Clipper Footage at least for the purposes of marketing of APM’s businesses and facilities, and the Whitsunday region, the 2016 Clipper Race, and as a record of the welcome party and the hosting of the 2016 Clipper Race. APM was permitted to copy and use the 2016 Clipper Footage, and in so doing was permitted to provide copies to third parties for the purposes I have identified.
Further, s 196(4) of the Act applies. WASP is a successor in title to Project 64. Project 64 granted a licence to APM, as I have found, and reiterated in the preceding paragraph. Project 64’s assignment to WASP in the October 2018 deed is subject to the licence it had granted to APM.
In answer to Mr Gardiner’s submission I have summarised above, Mr Curtis, counsel for APM, submitted as follows:
The doctrine of a subsequent contract “feeding” an earlier conveyance is that “where a seller without good title subsequently acquires title to the chattel, the seller’s title is fed to the second person, and any subsequent purchaser”: Sirius Shipping Corp v Ship 'Sunrise' [2006] NSWSC 398, quoting Patten v Thomas Motors [1965] NSWR 1457 (see at 1459-1460). In ACP Machinery Australia Pty Ltd v Aerospace Technologies of Australia Ltd (No 3) (2013) 103 IPR 435 it was found there was an earlier equitable assignment given retrospective legal validity by subsequent formality (470, [100]). Microsoft Corporation v PC Club Australia Pty Ltd (2005) 67 IPR 262 discussed whether an assignment of copyright might implicitly convey a right to sue for past infringements (at 307 [117]-[118]), but in the circumstances of the case only found it necessary to hold that assignment of a right to sue did not involve illegal “maintenance” (at 309 [124]).
As such the cases cited by WASP only confirm that the parties may perfect an equitable assignment retrospectively and validly convey rights to sue for past infringement. They do not suggest that an assignment of copyright asserted to be retrospective can otherwise affect the rights of third parties by deeming the purchaser to have always been the copyright holder.
APM’s submissions should be accepted. The October 2018 deed does not affect the rights of the third party, APM, to exploit the licence it had to copy and use the 2016 Clipper Footage as it did, and provide copies to third parties as it did. I am not satisfied that the deed is an agreement to the contrary for the purposes of s 98(3) of the Act. That it may operate retrospectively on its terms does not negate the vesting of copyright in the commissioning party at the time of commission, or the application of s 196(4) of the Act.
The assignment of the rights to sue for past infringement does not assist WASP in the present case.
For the foregoing reasons Project 64 was the owner of copyright in the 2016 Clipper Footage. Entry into the October 2018 deed did not affect the licence I have found Project 64 granted APM. Project 64 did not suffer any loss or damage. It follows that APM’s defence set out in paragraph 9B of the amended defence succeeds.
CONCLUSION ON REMAINING ISSUES
For the foregoing reasons no issue of infringement arises, no issue of authorisation by APM arises, nor does any issue of quantum, including as to entitlement to additional damages under s 115(4) of the Act.
In the course of my deliberations I have considered WASP’s oral and written submissions in support of its claim for additional damages under s 115(4) of the Act, the evidentiary references on which WASP relies, and the authorities relied on.
Leaving to one side here whether the anterior issues are determined in its favour (and I have concluded they are not), it is appropriate to observe that I am not satisfied that WASP has established any of the matters referred to in s 115(4) of the Act.
Even were I satisfied that APM’s actions were acts in infringement of copyright in the 2016 Clipper Footage, and I have found they are not, I consider that there would be no basis for the favourable exercise of the Court’s discretion to award additional damages under s 115(4) of the Act. I am not satisfied, on the balance of probabilities, let alone to the Briginshaw standard, that WASP has established that APM’s copying, communication or posting of any videos containing any segment of the 2016 Clipper Footage was wilful, flagrant, dishonest, or in contumelious disregard of any rights that WASP claimed.
As to the experts’ evidence, it suffices to say that I do not accept WASP’s submission that because APM did not rely on any expert evidence, Mr Cassidy’s evidence should be accepted. It follows from my conclusions above, as I have said however, issues of quantum do not arise. I do not propose to deal with the quantum evidence further.
A final matter - credibility and reliability of WASP’s lay witnesses
In closing submissions APM made detailed submissions on the credibility and reliability of the evidence of each of Ms Brown, Mr Plahn and Mr Burfitt, and whether their witness statements provide any acceptable evidence of recollections of conversations at all. I consider it appropriate that I address these submissions.
APM’s overarching submission as to evidence is that WASP’s lay evidence comprises the witness statements of two witnesses highly interested in the outcome of the proceeding (Ms Brown and Mr Plahn), and one witness with obvious sympathy towards them, Mr Burfitt. During cross examination Mr Curtis challenged each of them to explain identical and near identical passages appearing in their respective witness statements. I have adverted to some, but not all of them in the course of these reasons. There are more than were identified by Mr Curtis, or than I have mentioned. In closing submissions Mr Curtis took the Court to copied passages in the written statements of WASP’s lay witnesses.
Mr Curtis submitted that the entirety of the evidence of Ms Brown, Mr Burfitt and Mr Plahn should be treated with the utmost caution given that critical evidence – of what was orally agreed as to copyright and permissions – was evidently copied from the form of relevant allegations in the statement of claim. I have identified those similarities earlier in these reasons.
I note here an incorrect detail that was replicated in each of the second witness statement of Ms Brown (although accurate in her first witness statement), and in Mr Plahn and Mr Burfitt’s witness statements. They each wrote that Mr Plahn first discovered APM’s inclusion of 2016 Clipper Footage in its video in January 2018, or first told Mr Burfitt that he had done so. They each made this error, notwithstanding that the email correspondence that they then referred to was within a day, in February 2018.
In the circumstances where each of Ms Brown’s second statement, and Mr Plahn and Mr Burfitt’s witness statements contain this very same error in date, and Ms Brown’s first statement did not contain the misdating, I am very troubled by the extent of close similarities in their statements
I have noted earlier in these reasons that Ms Brown admitted that she and Mr Plahn discussed their evidence when they were “putting the case together”. Whilst Ms Brown denied showing Mr Plahn her witness statement, Mr Plahn stated in his statement that he had the benefit of Ms Brown’s first statement when making his statement, then in cross‑examination initially denied that he had seen it “until later on”, and when confronted with his written testimony, simply changed his evidence, and suggested in relation to passages substantially identical in their statements that the solicitor had done the documentation.
In relation to Mr Burfitt’s evidence see [114] above.
Mr Curtis took the Court to the decision of Traderight (NSW) Pty Ltd & Ors v Bank of Queensland Ltd (No 17) and 13 related matters [2014] NSWSC 55, at [45]-[50], and [1323], [1468], [1736], [2003]. (I note an appeal was dismissed: see Traderight (NSW) Pty LTD v Bank of Queensland Ltd [2015] NSWCA 94).
Mr Gardiner submitted that there was no basis for a finding of collusion. Each of WASP’s lay witnesses gave evidence that the statements were prepared by the solicitors on the basis of written or verbal descriptions of relevant facts. He submitted that the findings in Traderight are fact specific, and the present was a very different case.
In Traderight the Court did not accept that the evidence even represented the witnesses’ recollections: see at [45]-[50], rejected evidence based on affidavits of others [1323], cut and pasted from another affidavit [1468], rejected evidence as independent recollection where similar [1736], and at [2003], rejected the evidence of a witness who was apparently prepared to accede to anything the lawyers placed in front of them. I consider the observations made by the Court in Traderight have resonance to WASP’s lay evidence in the present case, particularly as WASP’s witnesses are recollecting conversations and events several years after they occurred, and in circumstances where they had not turned their minds to the matter until the dispute arose in early 2018.
It is not necessary that I find collusion. The weight I give to Ms Brown’s, Mr Plahn’s, and Mr Burfitt’s accounts, and their reliability and credibility is, however, another matter. The matters to which Mr Curtis took me and his submissions as to their import are substantiated by my close consideration of the evidence, and the transcript. Ms Brown was a particularly partisan, and committed witness. She was not a satisfactory witness. Mr Curtis’ submission that it was hard to detect when she was trying to recall things she knew and when she was trying to make arguments has force. Mr Plahn did not present as having an independent and reliable recollection. Mr Burfitt was inaccurate as to dates and chronology, and inconsistent and variable in his account. He was unwilling to make reasonable concessions, and he did not admit there was any possibility that his memory might have been flawed notwithstanding the inconsistencies plain on the face of his evidence. He exhibited none of the characteristics of a disinterest independent witness. He was not generally a reliable, or credible witness.
I have carefully considered the subsequent conduct of the participants on 12, 13, and 15 January 2016, and the paucity of the documentation. I have had regard to the invoices from each of WASP and Project 64.
I have set out in detail the parties’ correspondence in February and early March 2018. Whilst this correspondence is not evidence of what was said or agreed in January 2016, the initial correspondence provides the least revised version of the participants’ recollections, and assumptions as at the commencement of, and in the early days of their dispute. I take into account however, that even before Mr Burfitt sent his email of 21 February 2018, he and Ms Brown and Mr Plahn had discussed the matter.
I have referred to the similarities in Ms Brown’s, Mr Plahn’s, and Mr Burffit’s witness statements which makes it difficult to accept that any of the evidence they gave reflected their independent recollections of conversations and events. Generally, I have not accepted their evidence unless it was corroborated by independent evidence.
DISPOSITION
For the above reasons, I have concluded that WASP’s claim fails. It follows that the application should be dismissed. I will so order.
Costs ordinarily follow the event.
The parties indicated in final submissions however that they wished to be heard on costs. I will make orders accordingly.
I certify that the preceding three hundred (300) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Baird. Associate:
Dated: 8 July 2021
SCHEDULE A
ALLEGED INFRINGING PUBLICATIONS BY APM No. Title & Former link details Clips /Shots Used Date posted 1 Facebook video at Shot 3
Shot 2
Shot 14/10/2017 2 Facebook video at Shot 1
Shot 26/12/2017 3 Titled ‘The Whitsunday Food Service Progressive Cruise Lunch January 21 – 2018’
Facebook video atShot 2 4/01/2018 4 Titled ‘APM | Clipper 2017-18 100 Day Countdown / Clipper Video 1 Carnival Logo’
YouTube video at 0.58 minShot 3
Shot 2
Shot 14/10/2017 5 Titled ‘APM | Superyacht Port | Great Barrier Reef’
YouTube video at
0.55 minShot 5 20/09/2017 6 Titled ‘APM | 5 Gold Anchor Global Marina Accreditation’
YouTube video at
2.20 minShot 1
Shot 4
Shot 3Pre 21/02/2018 7 Titled ‘WIN the ultimate VIB package’
YouTube video at
(unknown)(unknown) (unknown) 8 Titled ‘Whitsunday Clipper Race Carnival | 50 Day Countdown’
YouTube video at
2.20 minShot 2 Pre 24/11/2017 9 Titled ‘Whitsunday Foodservice Progressive Lunch Cruise’
YouTube video at
1.27 minShot 2 Pre
11/01/2018SCHEDULE A (PAGE 2)
ALLEGED INFRINGING PUBLICATIONS BY THIRD PARTIES No. Title & Duration Third Party Clips /Shots Used 1 Facebook video
Video promotes Council’s sponsorship of the Australian Superyacht Rendezvous on the Gold Coast
Duration 1:58min
Whitsunday Regional Council Shot 1
2 Facebook video
Video promotes the 2018 Clipper Round the World Yacht Race Carnival
Duration 1:40minWhitsunday Regional Council Shot 1
Shot 2
Shot 33 YouTube video
Our Whitsunday Community Update – 14 February 2018
Duration 1:57minWhitsunday Regional Council Shot 1 4 YouTube video
Whitsundays Clipper Race Carnival
Duration 1:35minTourism Whitsunday Shot 1
Shot 55 YouTube video
Whitsunday Foodservice Progressive Lunch Cruise
Duration 1:34minTourism Whitsunday Shot 2
6 YouTube video
Whitsunday Clipper Race Carnival | 50 Day CountdownDuration 2:17min
Tourism Whitsunday Shot 1
Shot 27 Facebook video
Whitsunday Foodservice Progressive Cruise Lunch
Duration 1:29min
Tourism Whitsunday Shot 2 8 Facebook video
50 day countdown until The Clipper Race Carnival
Duration 2:23min
Tourism Whitsunday Shot 1
Shot 2
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9
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