Zeccola v Universal City Studios Inc
[1982] FCA 271
•26 NOVEMBER 1982
FRANCO BENITO ADOLFO ZECCOLA, VINCENZO ZECCOLA, GREGORY PHILLIP LYNCH, G.L.
FILM ENTERPRISES PTY. LTD.
And: UNIVERSAL CITY STUDIOS INC. (1982) 67 FLR 225
No. VG 117 of 1982
Copyright
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Lockhart(1), Fitzgerald(1) and Jenkinson(2) JJ.
Copyright - infringement of copyright in novel, screenplay and film "Jaws" by film "Great White" - injunctions - application for interlocutory relief - discretion of trial judge - function of appellate court.
Copyright Act 1968 ss 10, 21, 86, 101
Copyright - Infringement of copyright in novel, screenplay and film - Whether copyright exists in central theme or idea of story - Interlocutory injunction - Whether trial judge erred in granting relief - Copyright Act (Cth), ss 10(1), 14(1)(b), 21(1), 31(1)(a)(i), 36(1), 86(a), 101, 113.
Following a lengthy hearing before the trial judge at which much evidence was presented by both parties, the respondent was granted an interlocutory injunction restraining the appellants from infringing the respondent's copyright in a novel , screenplay and film entitled Jaws by the showing of a film entitled Great White, each film being about a killer shark terrorizing human beings. The appellants appealed, claiming (inter alia) that the trial judge was in error in finding that the novel Jaws, on which the screenplay and film of the same name were substantially based, was an original work.
Held, per Lockhart and Fitzgerald JJ: (1) In general, there is no copyright in the central idea or theme of a story or play however original it may be; copyright subsists in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme.
(2) Where a story is written based on various incidents which themselves are commonplace, a claim for copyright must be confined closely to the story which has been composed by the author. If a literary or dramatic work is not wholly original there is no copyright in the unoriginal part.
(3) It has not been shown that the exercise by the trial judge of his discretion to grant relief involved an error of the relevant kind, and therefore an appellate court should not interfere with the judge's decision.
House v. Queen (1936) 55 CLR 499 referred to.
(4) Per Jenkinson J.: The film Great White cannot be said to constitute an infringement of copyright in the film Jaws as opposed to a novel or screenplay of the same name, unless it was an exact or facsimile copy of the film Jaws. This follows from the use of the word "copy" (as defined in s. 10(1)) in s. 86(a).
1982, November 24, 26. #DATE 26:11:1982
APPEAL.
Appeal from a judgment of the Supreme Court of Victoria granting interlocutory injunctions restraining the appellants until the final hearing of the action or further order from infringing the respondent's copyright in a novel, screenplay and film.
K.L. Milte and G.J. Traczyk, for the appellants.
J.F. Lyons Q.C. and J.McL. Emmerson, for the respondent.
Cur. adv. vult.
Solicitors for the appellant: Sherry, Carroll & Associates.
Solicitors for the respondent: Blake & Riggall.
F.P.C.
THE COURT ORDERS THAT:1. The appeal be dismissed.
2. The appellants pay the costs of the respondent of the appeal. Orders accordingly.
The judgment I am about to deliver is the joint judgment of Mr. Justice Fitzgerald and myself. This is an appeal from a judgment of the Supreme Court of Victoria delivered on 4 August 1982 which granted interlocutory injunctions restraining the appellants until the final hearing of the action or further order from infringing the respondent's copyright in a novel, screen-play and film each entitled "Jaws" and from infringing the respondent's registered trademark in the word "Jaws".A problem in these proceedings is that the parties tended to blur the distinction between final and interlocutory proceedings and the problem was exacerbated by the different copyrights asserted by the respondent as the basis of its claim. Many questions have been raised, some of which were dealt with by the learned primary Judge, which may be of importance at the trial but do not fall for present decision and indeed are best left open at this juncture for later determination.
It is well-established that where the judgment appealed from involves the exercise of discretion by the trial Judge this Court will not interfere unless an error of the kind mentioned in various cases, including House v. R. (1936) 55 CLR 499, is shown to have been made.
The primary Judge held that the respondent had made out a strong prima facie case against the appellants for the granting of interlocutory relief and that the balance of convenience clearly favoured the granting of such relief. Both findings are challenged in this appeal.
The approach to be adopted by Australian courts on determining whether a prima facie case has been made out in an application for an interlocutory injunction where, as happened in the present case, both sides gave evidence, appears from the judgment of the High Court in Beecham Group Limited v. Bristol Laboratories Pty. Limited (1968) 118 C.L.R. 618. See also Transport Workers Union of Australia v. Leon Laidely Pty. Limited (1980) 28 A.L.R. 589, a decision of a Full Court of this Court.
The primary Judge applied the test referred to by the Full Court of Victoria in Magna Alloys and Research Pty. Limited v. Coffey (1981) V.R. 23, a test which was accepted by counsel for the appellants as correct and which in our view is substantially the same as the tests propounded in Beecham's Case.
The hearing before the Supreme Court occupied several days, many affidavits were read and most of the deponents were cross-examined. His Honour said that the application, although for interlocutory injunctions, rapidly developed into a proceeding more akin to the final hearing of the action. However, his Honour approached the case throughout on the footing that he was not finally resolving the rights of the parties but merely determining whether a prima facie case had been made and, if it had, whether the balance of convenience favoured the granting of interlocutory injunctions.
We will not trouble to recite all the findings of fact and law made by the primary Judge in an extensive judgment. It is sufficient if we refer to them in summary form as follows.
The novel "Jaws" was written by Peter Benchley, a United States citizen. It was first published in 1974 in the United States of America. The "Jaws" screen-play was completed in the same year. The film "Jaws" was made in the United States of America in 1975 and was first shown to the public there in July of that year. Since then it has been exhibited in most countries of the world, including Italy, where it was called 'La Squalo' which, translated into English means 'The Shark'.
The film 'Jaws' has been a huge success and has made a lot of money for the respondent. Apart from exhibitions in motion picture theatres it has been shown under contract on television in the United States of America and many other countries. Most of those contracts are still on foot. The sale of video cassettes and discs has also been widespread and is still proceeding. In 1977 the respondent arranged for the making of a sequel to 'Jaws' which was called 'Jaws II'. 'Jaws II' concerns much the same subject matter and characters as 'Jaws'. 'Jaws II' was first exhibited to the public in June 1978 and has also been a great success. Both films have been prominently featured as Universal films and some $20 million has been expended in promoting the films throughout the world.
Another film 'Jaws 3-D' is presently being made by the respondent and the respondent has also obtained registration in Australia of the word 'Jaws' and of a drawing depicting the head and open jaws of the shark as trade marks in respect of, amongst other things, cinema films and printed matter.
The film 'Great White' was made by Italian film makers in early 1980. A full page advertisement in 'Weekly Variety', an American periodical, dated 7 May 1980 stated that the film was to be called 'The Last Jaws'. When the film was first shown in Italy later in 1980 its name was 'La Ultimo Squalo' which translated into English is 'The Last Shark'. The appearance of the advertisement in 'Weekly Variety' excited the interest of the respondent. Steps were taken in Italy to prevent the showing of the film 'Great White' and litigation ensued which is still pending. Litigation followed in other countries.
The primary Judge dealt at length with the various issues between the parties. The appellants do not dispute that the respondent has acquired and is entitled to sue in Australia to enforce any copyright which exists here in the novel, screen-play or film 'Jaws' but asserts that no such copyright exists. Counsel for the appellants made various submissions impugning the judgment from which they have appealed. Some of these submissions were disposed of in the course of discussion between counsel and the Bench and need not be referred to further. Other submissions were put in various ways but in essence were the same as each other. We confine ourselves to the principal submissions made on behalf of the appellants.
Counsel for the appellants submitted that the primary Judge erred in holding that the novel 'Jaws' was an original work for the purposes of the Copyright Act 1968 ("the Act"). It was submitted that there was no evidence or at least no sufficiently reliable evidence to support his Honour's conclusion. The hearing was conducted, as applications for interlocutory injunctions usually are, on evidence by affidavit supplemented where necessary by cross-examination. We see no purpose in analysing in detail the evidence before his Honour touching this question, but it is sufficient to say that there was evidence of the originality of the novel 'Jaws'.
The hearing of the application for interlocutory injunctive relief is, of necessity, an attempt by the Court to do justice to the parties on an interlocutory basis until the Court and the parties are in a position to deal with the case finally. Evidence of the kind relied on by his Honour is often the only available evidence in all the circumstances. Commonsense and the desire to do justice to all parties frequently call for the reception of such evidence and reliance being placed upon it. Indeed, in the present case, the essence of the attack made by the appellants on this aspect of the case was that Mr. Benchley himself should have given evidence relating to the originality of the novel. Mr. Benchley however is a United States' citizen and the very difficulties and expense involved in obtaining such evidence, possibly involving his coming to Australia for cross-examination, point to the wisdom on the hearing of applications for interlocutory injunctions of reliance being placed upon evidence based on information and belief or evidence other than from primary sources. This case is no exception. This ground of attack fails.
Then it was submitted by counsel for the appellants that the primary Judge committed a fundamental error in his approach to the question whether the appellants had infringed the copyright of the respondent in the film 'Jaws'. It was submitted that copyright in a film subsists only in those parts of the film capable of being the subject matter of copyright, that is, having the requisite character of originality, and that it is necessary to excise other parts from the whole. It was said that it is only the residue that can be the subject of copyright and thereby be protected from infringement.
Counsel for the appellants submitted that both films, 'Jaws' and 'Great White' are genre films based upon the idea of a savage monster menacing a community. Each is a film about a killer shark terrorizing human beings and it was said that neither film was entitled to protection as there is no copyright in that general idea.
The difficulties involved in severing films into parts which are capable of characterization as original works and other parts that are not is obvious. Indeed, it is the subject of only limited exploration by the laws of this country and the United Kingdom. We were referred to certain decisions of United States' courts where this question has been considered from time to time and we have found those cases helpful in resolving the questions before us. In general, there is no copyright in the central idea or theme of a story or play however original it may be; copyright subsists in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme. If these are totally different the taking of the idea or theme does not constitute an infringement of copyright.
Of necessity certain events, incidents or characters are found in many books and plays. Originality, when dealing with incidents and characters familiar in life or fiction, lies in the association, grouping and arrangement of those incidents and characters in such a manner that presents a new concept or a novel arrangement of those events and characters. We accept that where a story is written based on various incidents which in themselves are commonplace a claim for copyright must be confined closely to the story which has been composed by the author. Another author who materially varies the incidents and characters and materially changes the story is not an infringer of the copyright. If a literary or dramatic work is not wholly original there is no copyright in the unoriginal part so as to prevent its use. Additional factors may fall for consideration where the alleged infringement is by cinematograph film.
The primary Judge closely analysed the two films 'Jaws' and 'Great White". Notwithstanding that the subject matter of the film 'Jaws' was not particularly striking his Honour held the view, in essence, that the combination of the principal situations, singular events and basic characters was sufficient to constitute an original work that was susceptible of protection under the law of copyright in this country. In our opinion his Honour's finding has not been shown to be in error. It must be remembered that all his Honour did was make his findings on the basis that a prima facie case was established. He did not make any final or definitive finding on this, or indeed any other question.
It was submitted that his Honour erred in holding that the question whether the respondent's copyright was infringed by the making and showing of the film 'Great White' came down to a question of whether 'Great White' was a substantial adaptation or reproduction of the book or screen-play 'Jaws' or a substantial copy of the film 'Jaws'. Counsel for the appellants submitted that the film 'Great White' could not be said to constitute an infringement of any copyright of the respondents in the film 'Jaws' unless it was an exact or facsimile copy of the film 'Jaws'.
The argument was based on various matters including certain sections of the Act. Section 10 _ which defines the word copy _ and ss. 86 and 101 are some of the sections referred to. No authority was cited for this proposition but counsel adopted as part of his argument a passage from Lahore's 'Intellectual Property in Australia'. We do not find it necessary to answer this question. It raises important and difficult questions which, if they are relevant on the final hearing, may be debated then.
At its narrowest the major issue is whether or not the appellants' film 'Great White' substantially reproduced the novel 'Jaws' or the screen-play based upon that novel from which the respondent's film 'Jaws' was made. In the resolution of that question it is appropriate to have regard to the operation of s. 21 of the Act which deems cinematographic films to be reproductions of literary or dramatic works in certain circumstances. If the primary issue is so stated any problems of statutory interpretation arising out of the definition of 'adaptation' in the Act, or as to what constitutes an infringement of one cinematographic film by another, can be avoided without risk of limiting the substance of the relief sought which is to restrain the exhibition of the appellants' film 'Great White'.
The primary Judge correctly realised that two questions were involved in the resolution of what is the major issue; namely, the degree of objective similarity between the appellants' film and the respondent's novel and screen-play and, given sufficient objective similarity, whether copying was established. In relation to the question of copying, the appellants sought to show that the inspiration for the film 'Great White' came partly from the imagination of its producer, Dr. Tucci, and partly from a book by one Ramon Bravo called 'Carnada' which is published only in Spanish.
His Honour was provided with a copy of the novel and screen-play 'Jaws' but did not have time to read them in the circumstances attending the claim for interlocutory relief. However the proceedings before him were conducted on the basis that the screen-play closely followed the novel and that the film 'Jaws' closely followed the screen-play. Thus the exercise of comparison between the novel and the screen-play 'Jaws' on the one hand and the film 'Great White' on the other hand was regarded as appropriately undertaken by a comparison of the two films. Further, all his Honour had of the book 'Carnada' was a translation in condensed form. His Honour, with some degree of fortitude, viewed both films, one after the other.
The comparative exercise which his Honour undertook was central to his decision. He considered that there was such a marked degree of similarity between the two films that there was an inescapable inference of copying and that the respondent had an excellent chance of success at the trial. The strength of his views in relation to the similarity between the two films influenced the attitude which he took to much of the evidence, including expert evidence, and to the appellant's denial of copying, most of which was held to be inadmissible.
Much criticism was levelled by the appellants at the approach which his Honour took to such evidence and at the inference of copying which he drew. Whilst our own viewing of the films did not instill in us the same degree of conviction that his Honour felt, we are not persuaded that his Honour was wrong.
Further it seems to us that it was not only open to his Honour to place the emphasis which he did upon his view of the similaritites between the two films but was the appropriate course for him to take in the particular circumstances in which he was placed with an application for interlocutory relief. Similarly it was appropriate for him to adopt the attitude which he did to the evidence upon which he placed no reliance whether or not such evidence is admissible or may be accepted at the trial.
His Honour's findings in respect of these matters to which we have referred have not been shown to be incorrect. Similarly we are of the view that the attempt by the appellants to dissect the films and to exclude from consideration stock scenes and banal events were of little value to the proceedings before his Honour in the circumstances as he found them. He faced a broader question which was not to be resolved by the drawing of fine distinctions.
No doubt numerous factors, including differences of sequence and of dialogue, aspects of idea or theme which lack originality and various other matters were all properly to be considered, at least subconsciously but only as part of a process of forming an overall impression as to the originality of the respondent's novel, screen-play and film, the originality of the appellants' film, the extent of similarity or disimilarity and whether or not there was copying.
It is no part of this Court's function to seek to identify isolated points in the expression of his Honour's reasons in respect of which minds might differ in order to substitute some other view for that which was clearly open to the primary Judge.
It was submitted by counsel for the appellants that his Honour erred in holding that the balance of convenience favoured granting interlocutory injunctions. His Honour said that if injunctions were not granted the respondent '...will undoubtedly suffer a very substantial economic loss. This will be difficult to quantify and damages would not provide an adequate remedy'. Although this finding was impugned, plainly there was evidence before his Honour upon which he was entitled to rely to support that conclusion, although the precise nature and extent of any damage which may be sustained by the respondent was not clearly established.
His Honour also held that if damages proved to be substantial the ability of the appellants to pay remained 'highly questionable'. This finding of his Honour was not attacked by the appellants. His Honour held that if injunctions were granted the appellants would suffer financial loss from their inability to show the film, but that in all the circumstances the undertaking as to damages offered by the respondents would be sufficient to safeguard any potential loss to the appellants. No real attack was made on this finding. In our view no case has been established to interfere with his Honour's findings as to the balance of convenience.
In our opinion none of the findings made by the primary Judge which have been challenged by the appellants have been shown to be in error.
No attempt was made to deny the existence or validity of the respondent's trademark, nor was any challenge made before us to any finding of his Honour with respect to the infringement by the appellants of the respondent's trademark.
We would dismiss the appeal with costs. As no submissions were made to us in relation to the particular orders made by his Honour, whether as to form or otherwise, there is no occasion for us to consider whether any of the orders require variation.
Appeal against interlocutory injuctive orders restraining exhibition of a film called "Great White" which the respondent alleges infringes its copyright in a novel called "Jaws", a scenario and script of a film of the same name, and a film of that name.The judge below construed the word "copy" in section 86(a) of the Copyright Act 1968 in a sense other than that provided by the definition of the word in section 10(1) and addressed himself to the question whether the film "Great White" is a "substantial copy" of the film "Jaws". He appears to have guided himself in resolving that question by reference to some observations by Sargant J. in a case about copyright in a novel alleged to have been infringed by a dramatic work: Corelli v. Gray (1913) 30 TLR 116. The appellants submit that the word "copy"in section 86(a) is to be read in its defined sense.
It was conceded by counsel for the parties before the learned judge and before this court that the screen-play closely follows the novel and that the film "Jaws" closely follows the screen-play. In his reasons for judgement the learned judge, after noting those concessions and after stating that he had not in the time available had time to "fully read the novel or the screen-play", made this statement:
'However, it seems to me that for present purposes I can sufficiently decide the question of the plaintiff's prospects at trial by asking whether the film is a substantial copy of Jaws. It was suggested by Mr. Lyons that at the trial the question may present itself in a less simple form but I intend to consider the application in the way that I have indicated'.
Having concluded upon a viewing of the two films that "Great White" was a substantial copy of "Jaws" and that those who made "Great White" intended to make such a substantial copy, his Honour concluded that the plaintiff had "an excellent chance at the trial of proving an infringement of its copyright in Jaws and in the book and screen-play".
If the appellants be correct in the construction of section 86(a) which they advance, there is yet a question as to whether the respondent's copyright in the novel and the scenario and script has been infringed by reproduction in a material form by the making of "Great White". See sections 31(1)(a)(i), 36(1) and 21(1). In determining the answer to that question effect would have to be given to section 14(1)(b), in my opinion. (Compare Copinger & Skone James on Copyright (12th edition), paragraph 800. The definition of "copy", in section 13(10) of the English Copyright Act 1956 is materially different from the definition of "copy" in section 10(1) of the Copyright Act 1968). Relying on the concessions to which I have referred, I have viewed the two films and have concluded, notwithstanding evidence to the contrary, that it is very probable that the making of the film "Great White" will be held at trial to have constituted a reproduction in material form of the novel and of the screen-play. The similarities between the two films stated in his Honour's reasons for judgment, considered in the light of the concessions, provide the ground for that conclusion.
It was submitted for the appellants that those of the similarities which were found in occurrences patterned according to the commonplace in animal or human behaviour or character, or in drama or cinematographic art, or in a particular genre of either of those two fields of activity, should be disregarded in determining whether copyright had been infringed. It is unnnecessary to express an opinion upon the correctness of the submission in its application to copyright in a film conceived as analagous to copyright in a novel or a dramatic work, but I have assumed for the purpose of disposing of this appeal that the appellants' construction of section 86(a) is correct, because I incline to the opinion that it is correct and because the appellants by their counsel maintain it. Accordingly it is the copyright in the novel and the scenario and script deriving from sections 31(1)(a)(i) and 21(1) which is here in question. See section 113. Cinematographic reproduction of such works is in my opinion necessarily more completely reproduction within section 21(1) the more faithfully the occurrences narrated or otherwise given verbal representation in the works are portrayed by the visual images and sound of the cinematograph film, which section 10(1) defines; and in my opinion the greater the number of those occurrences so portrayed the more completely is such a work reproduced. If it should happen that some or all of those occurrences are commonplace within one or more of the conceptual frames of reference specified in the appellants' submission, that circumstance cannot, in my opinion, diminish the significance for the purposes of section 31(1)(a)(i) of a similarity discerned between an occurrence communicated in the literary or the dramatic work and an occurrence communicated in the film.
It was a ground of the appeal that the learned Judge had been in error in treating certain evidence of expert opinion as inadmissible. This ground is based on that part of his Honour's reasons for judgment which is contained in the last paragraph on page 718 of the appeal book. It is not altogether clear to me what his Honour comprehended by the expression "the question of copying". It does seem that he regarded that as a question purely of fact. If it was a question of fact there arises a question as to which there still, I think, remains some doubt in the courts: whether an expert may directly and in terms express his opinion on the question. If there were involved, as I strongly suspect, in that question a legal element, then it is almost certain that his Honour was correct in declaring expert opinion on the question inadmissible. There is, I think, nothing in the passage to which I refer from his Honour's judgment to suggest that his Honour excluded from consideration evidence by experts pointing out similarities and disimilarities. I do not consider in all the circumstances that error vitiating the excise of his Honour's function has been shown.
Concerning the other grounds of appeal, I do not desire to add anything to what has been said on behalf of the other two members of the court. I agree that the appeal should be dismissed and I agree in the order proposed.
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