University of Waikato v Benchmarking Services Ltd

[2004] NZCA 90

IN THE COURT OF APPEAL OF NEW ZEALAND

CA216/03

BETWEENTHE UNIVERSITY OF WAIKATO

Appellant

ANDBENCHMARKING SERVICES LTD

First Respondent

ANDACCLIPSE ACCOUNTING LTD

Second Respondent

Hearing:26 April 2004

Coram:McGrath J
Glazebrook J
Randerson J

Appearances:  D L Marriott and I Finch for Appellants

D G Jones for Respondents

Judgment:11 June 2004 

JUDGMENT OF THE COURT DELIVERED BY RANDERSON J

Introduction

[1]       On 11 September 2003, Master Christiansen dismissed the appellant’s application for summary judgment against the respondents in proceedings alleging infringement of copyright.

[2]       For some 18 years, the Management Research Centre at the University of Waikato has compiled and published the results of an annual survey entitled “New Zealand Business Benchmarking Survey”.  The survey compiles financial data relating to New Zealand businesses.  It provides benchmark information for a large number of New Zealand industry groups which is then available for use by businesses as a tool to compare operating performance with industry standards.

[3]       The survey comprises three main stages:

a)Data collection;

b)Analysis and calculation;  and

c)Reporting.

[4]       Client accounting firms register with the Management Research Centre (MRC) and provide financial and other data from their clients’ business records on a confidential basis.  The process starts with the completion of a questionnaire developed by the MRC which seeks information from the accounting firms on revenue, expenditure, profitability and other details.  The MRC then analyses the data and calculates various ratios from it.  Examples of such ratios include the percentage of specified overhead items to total overheads, the percentage of operating profit as a percentage of income, and net profit as a percentage of total income.  The results for all participants are also tabulated for comparative purposes under headings such as the 25^th percentile, the median, the 75^th percentile, average result, and the average of the best three participants in 176 different business classifications.

[5]       After the data is gathered and the ratios calculated, the results are formatted and presented in a printed report and in a CD‑ROM version of it.  The survey is then published for sale each year and provided to the participating accounting firms.

[6]       In late 2002, the manager of the MRC, Mr R J Douglas, received information that a rival benchmark survey known as BenchmarkIT was in the course of development.  He gained access via the internet to a website being operated by the second respondent, Acclipse Accounting Ltd of Christchurch.  The website home page contained a link to BenchmarkIT with a further link to a Sample Business Benchmark Report.  This report had a sample page displayed for a lawnmowing business for the year ended 31 March 2001.  It appeared to Mr Douglas that the report on the website was an exact copy of the layout and ratios used in MRC’s 2001 survey.  Mr Douglas accepted that the data was different but the majority of the ratios used were, he considered, exactly the same. 

[7]       In February 2003, a copy of the BenchmarkIT brochure was obtained.  It is not in dispute that the brochure was produced for the first respondent, Benchmarking Services Ltd, also of Christchurch.  The brochure states that BenchmarkIT was designed to take the manual work out of producing benchmarking reports.  BenchmarkIT is said to have made use of a on‑line connection for synchronising statistical data and it has the ability to import a client’s financial results directly from the client accounting system.  The brochure offered the BenchmarkIT software in the form of a CD‑ROM which would contain the BenchmarkIT software and documentation.  The brochure contains, at pages 6 and 7, a Business Benchmark Report for a sample company described as Lawnmowing Services Ltd for the year ended 31 March 2001. 

[8]       It appeared to Mr Douglas that this portion of the first respondent’s brochure had copied a substantial part of the appellant’s 2001 report in the section for lawnmowing and gardening businesses.

[9]       Mr Douglas also compared the BenchmarkIT collection and reporting software and the appellant’s 2001 questionnaire and associated explanations.  He noted that there were many similarities.

The appellant’s claim

[10]     The appellant claims that it is the owner of four copyright works relevant to this proceeding:

a)The 2001 version of its report;

b)The CD‑ROM version of the 2001 report;

c)The 2001 version of the questionnaire in written form;  and

d)The Email version of the 2001 questionnaire.

[11]     In its statement of claim, the appellant alleged that the respondents have infringed the appellant’s copyright in the copyright works by reproducing a substantial part of those works in material form.  Specifically, the appellant alleged that:

a)The data, ratios, typographical information, and layout in its 2001 report have been copied by the respondents at pp 6 and 7 of the respondent’s brochure (both in the printed version and the CD‑ROM version);

b)The data, ratios, typographical information, and layout at p 72 of its 2001 report have been copied by the respondents in the material shown on the respondents’ website;

c)The typographical information contained in the appellant’s questionnaire (both the printed and electronic versions) has been copied in the respondents’ software.

[12]     In consequence, the appellants sought summary judgment against the respondents for:

a)A declaration that the respondents have breached its copyright in the relevant works;  and

b)An injunction against the respondents requiring delivery up of all material in their possession or control which is a copy, (or a copy of a substantial part) of the copyright works and requiring them to refrain in future from copying or otherwise unlawfully dealing with the copyright works. 

[13]     The appellant accepted that quantum issues should be dealt with at trial.

The Master’s decision

[14]     The Master noted that the respondents accepted copyright subsisted in the appellant’s works and that the appellant owned the copyright in them.  The disputed issue was whether copyright had been infringed by the respondents. 

[15]     The Master recorded that his initial view was that the respondents had substantially copied the appellant’s format in the sample lawnmowing and gardening business material used in the respondents’ brochure and website.  His initial view was that the respondents’ use of an additional column in their sample and their minor re‑wording in some cases of headings or sub‑headings was “a rather crude attempt to disguise what … was a virtual direct copy of the [appellant’s] work”.  Although there were superficial differences, the Master’s initial perception was of two works that “in terms of quality, were very similar”.

[16]     The Master then stated:

However, upon further analysis I could not be satisfied, from the material available to me, that the [appellant’s] work was truly unique.  Undoubtedly, the [appellant’s] work was developed using independent skill, labour, time and judgment.

[17]     And at paragraph [15], the Master stated:

Mr Marriott's careful analysis of the claimed similarities between the plaintiff's work and the defendants' documents is compelling. However the works in question appear to, on the information available to me, deal with headings, sub-headings, terms, material, ratios and use of columns in a manner which is common in modern day accounting practice. Further, it must be remembered that the survey is designed to gather information and to provide reports for accountants. Therefore, this Court should hesitate before concluding that what at first appeared to be a quantitative similarity is also a comparison that is quantitatively similar. A large number of similarities do not necessarily, of themselves, equate to a comparison that is essentially also qualitative.

[18]     In the penultimate sentence of this paragraph, the reference to “quantitatively” is no doubt intended to read “qualitatively”.

[19]     The Master went on to accept that there were a number of elements of dissimilarity in comparison including the use in the respondents’ works of the ANZSIC Business Classification which is a generic standard used by organisations in Australasia to classify industries.  This was in contrast to the appellant’s use of its own classifications.  The Master stated he was unable to make assumptions, much less reach conclusions, on the basis of the evidence before him on such issues as whether the words used in the headings and sub‑headings or the survey layout were unique or were merely a consequence of the function necessary to source the relevant information.

[20]     After reference to the decision of Master Thomson in Horticultural Automation Ltd v ATI Engineering Ltd and Ors (High Court, Napier, CP.10/96, 5 September 1996) and Leco Instruments (UK) Ltd v Land Pyrometers Ltd [1982] RCP 133, 143, the Master determined that he could not be as certain about the outcome as the appellant urged him to be in undertaking the objective comparison, as a matter of fact and degree, of the overall similarity between the competing works. On that basis, the application for summary judgment was dismissed.

Submissions on appeal

[21]     For the appellant, Mr Marriott accepted it was relatively unusual for summary judgment to be sought in copyright claims.  Nevertheless, he submitted that in the present case, the Master had erred in declining the summary judgment.  There was, he submitted, no arguable defence on the issue of liability.  The specific points taken by Mr Marriott were:

a)The Master had failed to make separate determinations on the appellant’s pleadings which alleged that the appellant’s four distinct copyright works had been infringed by three separate works produced by the respondents;

b)The Master had wrongly equated the originality required under the Copyright Act with novelty or uniqueness.  It was submitted that the Master had incorrectly assumed that the copying of non‑unique components could not amount to an infringement of copyright;

c)On the evidence, the Master ought to have found that the three elements necessary to prove infringement in copyright cases had been established as set out in Wham‑O Manufacturing Co v Lincoln Industries Ltd [1984] 1 NZLR 641, 666.

[22]     Mr Jones confirmed on behalf of the respondents that it was not disputed that copyright subsisted in the appellant’s works.  The issue was whether the appellant had proved there was no arguable defence to the appellant’s claim that its copyright had been infringed. 

[23]     He submitted that infringement by reproduction of a substantial part of a copyright work was to be decided by reference to the quality of any parts reproduced, not the quantity.  On this issue, Mr Jones submitted there was a significant factual dispute as to the quality of the materials allegedly reproduced and whether the respondents’ works were derived from those of the appellant. 

[24]     He further submitted that visual similarity is relatively unimportant because the essence of the works in question was a collocation of data.  In cases of factual compilations, he submitted that infringement was to be tested by reference to the interest protected by the copyright (in this case the collection, analysis, and calculation of the data) and not by visual similarity. 

[25]     He submitted there was a factual dispute on the essential elements of infringement including issues of substantiality, objective similarity, and causal connection.  These were issues which should be dealt with at trial with the advantage of discovery and cross‑examination in the usual way.  There was, he said, a denial of copying other than what was said in the respondents’ affidavits to be inadvertent copying of some data from the appellant’s 2001 report which was reproduced in the respondents’ brochure. 

[26]     In that respect, Mr R J Dalloch deposed on behalf of the respondents that only 50 copies of the brochure had been produced and that this version of the brochure had not been printed or distributed since February 2003.  He further deposed that the promotional material and reports now used random data or data collected and collated by the respondents.  Otherwise, he asserted, there was no copying and the respondents’ works had been produced through the independent skill and labour of their employees.

Principles

[27]     For the purposes of the Copyright Act 1994, it is accepted that the appellant’s works are literary works as defined by s 2.  Copyright is a property right which exists in such works where they are original:  s 14(1).  The threshold test for originality is not high.  The determining factor is whether sufficient time, skill, labour, or judgment has been expended in producing the work.  As confirmed in the Wham‑O Manufacturing case, copyright is not concerned with the originality of ideas but with the form of their expression.  As the Court stated:

The originality that is required by the Act relates to the manner in which the claimant to the copyright has expressed his thought or ideas.  The Act does not require that the work be novel in form but that it should originate from the author and not be copied from another work.  (Page 664)

[28]     This last point is made in the Act itself:  s 14(2).  Here, the Master accepted that the appellant’s copyright works were undoubtedly developed using independent skill, labour, time and judgment.  It necessarily follows, as was admitted, that copyright subsisted in the appellant’s works irrespective of whether those works were unique or novel.  The only possible relevance of the Master’s reference to the issue of uniqueness was in considering whether infringement had occurred by copying a substantial part of the appellant’s copyright works.  In that context, the extent of novelty in the copyright works may be relevant to whether copying should be inferred.  Where there is a high degree of novelty in the plaintiff’s copyright work, it may be more difficult for an alleged infringer to assert that the alleged infringing copy was sourced from elsewhere. 

[29]     It is common ground that there are three requirements to establish infringement by copying in the form of reproduction:

a)The reproduction must be either of the entire work or of a substantial part;

b)There must be sufficient objective similarity between the infringing work and the copyright work, or a substantial part thereof;

c)There must be some causal connection between the copyright work and the infringing work.  The copyright must be the source from which the infringing work is derived:  Wham‑O Manufacturing at p 666.

[30]     Whether a copyright work is infringed depends more on the quality than on the quantity of what has been taken.  As Gault J explained it in delivering the judgment of this court in Bleiman v News Media (Auckland) Ltd [1994] 2 NZLR 673, 678:

It is perhaps more helpful to consider whether the effort, skill and judgment of the copyright owner in the making of his original work has been taken in the making of what appears, on a realistic assessment, to be a reproduction of a substantial part.

[31]     As Gault J also observed, that in the case of literary works, inexact reproduction frequently is held to infringe.  Textual reproduction is not essential. 

[32]     Lord Reid discussed what is meant by copying a substantial part in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465, 469 (HL):

Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying.  If he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken.  One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data.  So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright.  But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiff's work as a whole is 'original' and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.  A wrong result can easily be reached if one begins by dissecting the plaintiff's work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on.  To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be.  Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright.

[33]     In shorter form, the test is whether the essence of the copyright work has been taken:  Bleiman at 678.

[34]     As to causation, it is sufficient for the appellant to establish some chain of causation linking its copyright work with the alleged infringing copy.  What must be shown is that, either directly or indirectly, the respondents have, in making their copies, appropriated the labours of the appellant.  The starting point on this issue normally lies in the establishment of objective similarity combined with proof of access to the appellant’s works:  Wham‑O Manufacturing at p 668.

Copyright in compilations of data

[35]     It is important to consider what is protected by copyright in the appellant’s works.  The definition of “literary work” in s 2 includes a table or a compilation.  The expression “compilation” is itself defined in a non‑exclusive way to include a compilation consisting wholly of works or parts of works; a compilation consisting partly of works or parts of works;  and a compilation of data other than works or parts of works.  It is well established that copyright may subsist in publications such as dictionaries, directories, maps, or in the mere preparation of lists:  Laws of New Zealand, Copyright, vol.15A, paragraph 16. 

[36]     In such cases, there can be no claim to any right in the information contained in the compilation where the compiler of factual information is not the author or originator of the individual facts recorded in the compilation.  So, the appellant is not entitled to copyright in the raw accounting information supplied by the client firms in the present case.  The only claim can be to copyright in the compilation itself.  It must be shown that a sufficient degree of labour, skill, and judgment is involved in preparing the compilation.  That may arise, for example, through the manner in which the information is selected for inclusion in the publication, the format or presentation of the data or, relevantly to the present case, the selection and calculation of the relevant ratios, percentiles, averages, and other details. 

[37]     One of the leading English authorities on compilations is Ladbroke (Football) Ltd v William Hill (Football) Ltd.  There, the House of Lords upheld a claim for infringement of copyright in relation to betting coupons.  The coupons were a sheet of paper on which were printed 16 lists of matches to be played each week.  Each list was headed with an appropriate name and offered a variety of wagers at stated odds and contained explanatory notes.  One of the lists contained the full list of matches to be played at the end of the week.  Others were shorter lists of matches selected by the respondents from the full list.  Altogether, the coupon offered 148 varieties of wager at differing odds. 

[38]     While some of the information (for example, the full list of matches) was obtained from the Football League (who owned copyright in that list) the House of Lords found that a great deal of skill, judgment, experience and labour had gone into devising the coupon.  It was found that the appellants had copied a substantial part of the copyright work.  As expressed by Lord Pearce at p 481:

The appellants clearly modelled their coupon on the respondents’ coupon and copied many of the things that gave it this individuality.

[39]     Both counsel referred to us the decision of the Federal Court of Australia in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 55 IPR 1. That case was concerned with alleged copyright infringement in relation to Telstra’s white and yellow page telephone directories. It was admitted that the appellant copied the data from Telstra’s directories and had produced directory products in CD‑ROM form. The authorities were extensively reviewed, particularly in the judgments of Lindgren and Sackville JJ. It was found that copyright subsisted in Telstra’s directories even though the labour and expense incurred by Telstra was substantially in collecting, verifying, recording and assembling the relevant data: per Lindgren J at paragraph 160 and per Sackville J at paragraph 409. It was held that there was a sufficient causal link between the copyright work and the alleged infringing work. It was also accepted that there was sufficient objective resemblance between the appellant’s products and those of Telstra. Visual similarity (which was not present) was not considered to be necessary to establish infringement in the circumstances of the case.

[40]     Of interest in considering the present case is the finding that copyright also subsisted in the headings adopted by Telstra in its directories:  per Lindgren J at paragraph 180.

Discussion

[41]     The starting point for consideration of whether there has been infringement of copyright is to consider those elements of the appellant’s copyright works which attract copyright protection. 

[42]     It was accepted on behalf of the appellant that the raw data included in the report does not attract copyright protection.  Considered in isolation, some elements of the report are commonplace such as the inclusion of income, the derivation of gross profit, the deduction of overheads, and the calculation of operating profit.  But there are a number of unusual or unique features which clearly result from the expenditure of significant creative effort and skill on the appellant’s part.  These include the headings adopted;  the order in which they appear;  the selection and calculation of ratios;  the presentation and calculation of figures and percentages (designed to show a range of performances of businesses in the category selected);  and the overall format and presentation of the report.

[43]     To take some examples, the adoption of headings such as personnel (full‑time equivalents) and the items under the heading “Other information” would not routinely be found in financial statements for businesses of the kind surveyed.  So too the selection of columns under the headings “25^th percentile”, “Median”, “75^th percentile”, “Avg Best 3” and “Average”. 

[44]     While the raw data used for the appellant’s report does not itself attract copyright, the selection of ratios and the manner in which those ratios are calculated and expressed does, in our view, attract copyright protection.  Many of the ratios adopted are unusual.  For example, the expression of net profit per working owner, the expression of revenue and fees per person engaged in the firm, and the assessment of gross profit, overheads and operating profit on a per person employed basis.

[45]     As well, it is a significant feature of the appellant’s report that many of the figures are expressed as a percentage rather than in dollar terms.  For example, the cost of goods sold and gross profit is expressed not in dollar terms but in percentages under the column headings already discussed.  The items listed as overheads are also all expressed as a percentage of total overheads rather than in dollar terms.  Under the heading “Other information”, an unusual feature is a calculation of assets per person engaged in the company.

[46]     When one compares the appellant’s report with pp 6 and 7 of the respondent’s brochure, there is a striking similarity.  The respondent’s brochure copies, with only minor changes of detail, the headings adopted by the appellant in its report (left hand column).  As well, the respondents’ brochure adopts five columns which are either the same or very close to the description adopted by the appellant in its report.  These are the columns headed in the appellant’s report as 25^th percentile, Median, 75^th percentile, Avg Best 3, and Average.  In the respondents’ brochure, these columns are described as Median, Lower Quartile, Average, Upper Quartile and Avg Top 3. 

[47]     Importantly, the respondents’ brochure adopts the same format as the appellant’s report in the inclusion of dollar figures and percentages in exactly the same places as the appellant’s report. 

[48]     We accept there are some differences in the respondents’ brochure.  For example, the respondents’ brochure includes a column headed “Client Result” which is not in the printed version of appellant’s report.  As well, there is a column headed “Variance” which does not appear in the appellant’s report.  But we are not persuaded that these differences are sufficient to avoid the conclusion that there is a very strong objective similarity between the respondents’ brochure and the appellant’s report.

[49]     The issue of a causal connection between the appellant’s report and the respondents’ brochure is clearly established by the following matters:  First, there is a frank admission by the respondents that they copied (albeit inadvertently) the appellant’s data when preparing pp 6 and 7 of the brochure.  That is obvious when comparing the relevant documents.  The same data (whether expressed in dollar terms or percentage terms) is employed in each of the columns which are repeated in the respondents’ brochure. 

[50]     Secondly, Mr Dalloch admits in his affidavit that BenchmarkIT was developed to compete with the appellant’s product.  Importantly, Mr Dalloch admits that BenchmarkIT is able to use the comparative data in the appellant’s report to populate “the comparative data fields” in the respondents’ reports.  In other words, the same data fields are adopted as those used by the appellant.

[51]     Thirdly, we find that the similarity between the appellant’s report and the respondents’ brochure is so obvious in the respects we have identified that we consider there is an irresistible inference of copying, not only of the appellant’s data but also its headings, ratios, columns and format.  We are able to reach that conclusion on the basis of the documents presented and notwithstanding the denials of copying made on behalf of the respondents in their affidavits. 

[52]     We reach the same conclusion in relation to a comparison between the CD‑ROM version of the appellant’s report and the brochure for much the same reasons.  There are slight differences between the CD‑ROM version of the appellant’s report and the printed version but they are not sufficiently material to alter the conclusions already made.  Indeed, in some respects, the respondents’ brochure is even closer to the CD‑ROM version of the appellant’s report.  For example, the CD‑ROM version of the appellant’s report has two additional columns present which are not utilised in the paper version of the report.  These are “Your Result Was” and “Diff. You and Median”.  The respondents’ brochure has two corresponding columns under the headings “Client Result” and “Variance” which show the difference between the client result and the median for the business category in question.

[53]     Comparing the appellant’s report with the respondents’ website, the same layout is employed as in the respondents’ brochure.  The only difference between the respondents’ brochure and the website version of the sample accounts for Lawnmowing Services Ltd is in the data employed.  That is not a material difference in the circumstances of this case.  Again, the same conclusions apply in relation to a comparison between the CD‑ROM version of the appellant’s report and the respondents’ website. 

[54]     That leaves a comparison between the typographical information contained in the appellant’s 2001 questionnaire and associated explanations and the respondents’ software.  Here, the appellant relies primarily on similarities in the wording of the explanations used in the respective questionnaires.  The appellant has both a printed and electronic version of its questionnaire while the respondents’ version is solely electronic.  Both systems are designed to extract the necessary business data in a form in which it can be collated and analysed for the survey.  The appellant’s data collection system is primarily a manual system while the respondents’ product is said to be automated. 

[55]     Mr Marriott accepted there was a functional difference between the two systems but submitted the appellant was nevertheless entitled to copyright protection in respect of the wording of the explanations.  He submitted these had been developed by the appellant and that there is evidence of copying by the respondents of substantial parts of the appellant’s material.  In his affidavit, Mr Douglas set out a number of instances where the explanations used by the respondents are similar to those used by the appellant.  While we accept there are some similarities in wording in some of explanations and that it is likely the appellant’s material was used as a source, we are not taken to the point of being satisfied that the appellant has shown there is no defence to its claim on this aspect of the case. 

[56]     It must be recalled that copyright is concerned with the form in which ideas are expressed.  While some of the respondents’ explanations may derive from the appellants’ ideas (for example, on how depreciation should be treated for the purposes of the survey), the wording used in the respondents’ material does not bear the same high level of objective similarity with the appellant’s explanations as we have found to exist in other aspects of the appellant’s case.  We cannot be confident that the respondents could not succeed at trial on this aspect of the case.  Whether the appellant would have a sufficient case to sustain the grant of an interim injunction in relation to the questionnaires is not before us and we express no opinion on that subject. 

[57]     We do not overlook Mr Jones’ submission that the appellant’s survey has common elements with other similar surveys.  However on the evidence, the only other business survey of a similar kind produced in New Zealand is published by Statistics New Zealand.  It is readily apparent that the format and content of the Statistics New Zealand survey is significantly different from the appellant’s survey. 

[58]     Mr Jones also invited us to compare the printed version of the appellant’s report with an Australian survey published by CCH Australia and prepared by the Financial Management Research Centre.  However, it quickly became apparent in oral argument that there were substantial differences between the Australian survey and the appellant’s report.  These differences included the headings in the left hand column as well as the headings moving progressively across the page of the report.  Just to take one obvious example, the Australian survey contains columns grouping those businesses whose total income is less than $400,000 and those whose total income ranges between $400,000 and $800,000.  Neither of those columns appears in the appellant’s report.

[59]     We assume that this material was placed before us in an attempt to demonstrate that there is nothing particularly unusual or unique in the appellant’s report and that in consequence, it would not be appropriate to infer that the respondents’ had copied the appellant’s work. 

[60]     We cannot accept that submission for two reasons.  First, there is little in the way of objective similarity between the appellant’s report and the other surveys placed before us.  Secondly, there is no assertion by the respondents that they derived their product content and format from elsewhere.  Rather, the respondents’ assertion is that they developed their product themselves from their own resources.  For the reasons we have already given, we reject that submission.

Is summary judgment appropriate?

[61]     In terms of r 136 the appellant must satisfy the court that the respondents have no defence to the claim or a particular part of it.  It is well settled that the onus is on the plaintiff/appellant to satisfy the court on this issue.  The level of satisfaction must be such “that the court is confident, sure, convinced, is persuaded to the point of belief, is left without any real doubt or uncertainty”:  Pemberton v Chappell (1986) 1 PRNZ 183, 185.

[62]     And as Somers J stated in the same case:

Where the defence raises questions of fact upon which the outcome of the case may turn it will not often be right to enter summary judgment. There may however be cases in which the Court can be confident-that is to say, satisfied-that the defendant's statements as to matters of fact are baseless. The need to scrutinise affidavits, to see that they pass the threshold of credibility, is referred to in Eng Mee Yong v Letchumanan [1980] AC 331, 341 and in A-G v Rakiura Holdings Ltd (1986) 1 PRNZ 12.  (Page 185)

[63]     Mr Jones referred us to the decision of the Court of Appeal in Leco Instruments (UK) Ltd v Land Pyrometers Ltd (1982) RPC 133. There, the plaintiff sought a declaration that certain products it was selling did not infringe copyright in the defendant’s drawings. The issue was whether the plaintiff had copied a substantial part of the defendant’s drawings on the basis of a comparison between the product in issue and the drawings relied upon by the defendant. At first instance, the Judge decided, on the basis of the materials before him, that it was appropriate to give summary judgment in the form of a declaration that the plaintiff’s product did not infringe the defendant’s copyright. However, on appeal that decision was reversed and leave to defend was granted. Delivering the judgment of the court, Fox LJ considered there were close similarities in the relevant dimensions between the plaintiff’s product and those shown on the defendant’s drawings. The court was not satisfied that further evidence as to the nature and extent of copying would not be relevant to the ultimate determination of the court. It was also considered that the defendant should not be denied the ordinary right of discovery.

[64]     Leco is a somewhat unusual case in that a declaration in negative form was being sought.  In the circumstances, the Court of Appeal did not feel confident that there was no reasonable prospect of the defendant establishing there was an infringement of copyright in their drawings.  We accept that care is necessary before taking the step of granting summary judgment in a case such as this.  But the present case is one of alleged infringement of copyright in literary works where it is simply a matter of comparing the form and content of the appellant’s report with the corresponding material in the respondents’ brochure and website.  The determination of the issue of infringement is a matter for the court.  However, we are satisfied that no further evidence or discovery of documents would produce further material bearing on the issue of infringement.

Result

[65]     We are satisfied that the appellant has demonstrated that the respondents have no defence to the appellant’s claim that they have infringed its copyright in the subject report, both in the printed and electronic versions.  We are satisfied that in preparing and publishing pages 6 and 7 of the respondents’ brochure and the corresponding material on their website, the respondents have copied a substantial part of the appellant’s copyright in those works. 

[66]     However, we are not persuaded that the appellant has shown there is no defence to the claim for copyright in the questionnaire, either in the printed or electronic versions thereof. 

[67]     We are satisfied that the Master erred in declining to enter summary judgment.  The appeal is allowed and relief granted to the appellant in the following form:

a)A declaration that the respondents have breached the appellant’s copyright in the 2001 New Zealand Business Benchmarking Survey in both the printed and CD‑ROM versions (the “Copyright Works”);

b)An injunction against the respondents requiring delivery up of all material in their possession or control which is a copy, or a copy of a substantial part, of the Copyright Works, and requiring them to refrain in future from copying or otherwise unlawfully dealing with a substantial part of the Copyright Works.

[68]     All remaining matters, including damages, are remitted to the High Court for determination.

[69]     The appellant is entitled to costs in this court and in the High Court.  The costs in the High Court are to be fixed by that court.  We award the appellant costs in this court of $6000, together with reasonable disbursements including travel and accommodation costs of two counsel to be agreed by the parties or, failing agreement, to be fixed by the Registrar.

Solicitors:

James and Wells, Auckland, for Appellant
Lane Neave, Christchurch, for Respondents