Raymond John Polglaze v Director of National Parks and Wildlife and Others [1998] ACTSC 96 (10 September 1998)

Last Updated: 13 October 1999

Raymond John Polglaze v Director of National Parks and Wildlife and Others

[1998] SCACT 96 (10 September 1998)

CATCHWORDS

COPYRIGHT - alleged infringement - whether serious arguable case that second defendant's report to first defendant was in breach of proposal for publication of handbook prepared by plaintiff - no issue of principle.

PRACTICE AND PROCEDURE - interlocutory injunctions - grounds for granting or refusing - no issue of principle.

Australian Capital Territory (Self-Government) Act 1988 (Cth), s.43A

Copyright Act 1968 (Cth)

Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth), subs 4(1)

National Parks and Wildlife Conservation Act 1975 (Cth), s.15

Spratt v. Hermes [1965] HCA 66; (1965) 114 CLR 226 referred

Autodesk Inc. v. Dyason (1992) 66 ALJR at 233 referred

Lahore, Intellectual Property in Australia, para.6030, note 1

No. SC 00450 of 1998

Coram: Miles CJ

Supreme Court of the ACT

Date: 10 Septemer 1998

IN THE SUPREME COURT OF THE )

) No. SC 00450 of 1998

AUSTRALIAN CAPITAL TERRITORY )

BETWEEN: RAYMOND JOHN POLGLAZE

Plaintiff

AND: DIRECTOR OF NATIONAL PARKS AND WILDLIFE

First Defendant

AND: WORLD WIDE FUND FOR NATURE AUSTRALIA

ACN 001 594 074

Second Defendant

AND: WETLAND INTERNATIONAL - OCEANIA ACN 075 581 574

Third Defendant

ORDER

Judge Making Order: Miles CJ

Where Made: Canberra

Date of Order: 10 September 1998

THE COURT ORDERS THAT:

1. The plaintiff's application be refused.

1. This is an application made by motion for interlocutory injunctions and orders based on alleged or apprehended breach of copyright.

2. The motion was filed on 7 July 1998 and, in accordance with a direction of the Court, a statement of claim was filed on 18 August 1998. The statement of claim is deficient in several respects. For instance, I understand that the plaintiff wants a permanent injunction or injunctions, yet none is claimed in the statement of claim. Nor does the statement of claim identify the literary work in respect of which copyright is claimed. No defence has been filed.

3. The statement of claim alleges, in addition to breach of copyright, a claim, whether in law or in equity, of so-called breach of confidentiality. However, as I understand it, the plaintiff does not rely on the latter for the purposes of the present application.

4. No contest to the jurisdiction of the Court was made. Indeed, Mr. Loughton, in his helpful submissions for the first defendant, supported the jurisdiction of the Court by reference to s.43A of the Australian Capital Territory (Self-Government) Act 1988 (Cth) and the line of cases in which the leading authority is perhaps Spratt v. Hermes [1965] HCA 66; (1965) 114 CLR 226.

5. It may be observed further that the Copyright Act 1968 (Cth) does not expressly confer jurisdiction on Territory courts, but seems to assume that such jurisdiction exists: see ss. 131A, 131B, 132(7), 203, 248K, 248S, cp. subs 161(7).

6. Jurisdiction may also be supported by reference to subs 4(1)of the Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth).

7. The interlocutory orders sought in the notice of motion are lengthy and some of them are clearly unsustainable, but, as I understand it, those pressed include orders that the defendants be restrained from publishing or further publishing certain material prepared by the second defendant in breach of the plaintiff's copyright in the literary work which is the author.

8. For the purposes of the application and except where indicated, the following facts are established in the sense that there is credible evidence to support them.

9. Australia is a party to an international Convention on Wetlands of International Importance, commonly known as the Ramsar Convention. It obliges parties to provide guidelines for the management of wetlands to the community and to prepare literature and publications that promote the objectives of the Ramsar Convention.

10. The plaintiff is an environmental consultant. The first defendant (the Director) is a corporation established by s.15 of the National Parks and Wildlife Conservation Act 1975 (Cth). In about September 1995 the plaintiff was engaged by the Director to prepare a handbook on the management of wetlands for the guidance of local government bodies, landowners and others interested in that subject.

11. The plaintiff was retained under a standard form consultancy contract dated 29 May 1977. It provided, inter alia, that ownership of intellectual property in all contract material (defined to mean "all Material created or provided by the Consultant as part of or in performance of the Consultancy Services") should "vest immediately on its creation in joint ownership by the Director and the Consultant". It further provided that "both the Director and the Consultant have permanent, non-exclusive, royalty free licence to use, reproduce, adapt and exploit such Contract Material anywhere in the world" (Schedule 1 Item B1).

12. At about the same time the Director engaged the second defendant, World Wide Fund for Nature Australia (WWF), to produce a review of wetlands management of the National Estate in Australia. That contract was in the same standard form as the consultancy contract between the plaintiff and the Director. It was intended to be used for the purpose of Australia reporting to a forthcoming meeting of the Ramsar Convention . It is dated 26 May 1997.

13. The plaintiff considers that he has prepared a draft of the handbook which was made available to the Director in two parts, the first in October and the second in November 1997. Neither part of the draft handbook was in evidence. The plaintiff has not finished work on the handbook. He said that there is a dispute between him and the Director which prevents him from producing the finished product.

14. In February 1998, the plaintiff spoke to Ms. Michelle Handley, who was responsible for preparing the review by WWF. Both the plaintiff and Ms. Handley were aware that each was preparing a document that would deal with management of wetlands. Ms. Handley was concerned that, as far as possible, there should be no overlapping between the two documents on that subject. It is likely that she expressed that concern during the conversation. The plaintiff entertained concern of a different nature. He did not want Ms. Handley to pass on the information that he gave her during the conversation. He said that he discussed with her the structure of his proposed handbook, the sequence of topics, case studies and threats to wetlands management. Ms. Handley denies that the discussion was in such specific terms, but I think that for the purposes of the application, I should prefer the plaintiff's account.

15. By the end of February 1998 (it is not clear whether before or after the conversation just referred to) the plaintiff produced a document entitled "New Structure/Content Proposal" for the purposes of completing the wetlands handbook. This document (the Content Proposal) was forwarded to the Director, but it is not clear when. The plaintiff claims that the Content Proposal is the literary work of which he is the author and in which his copyright has been infringed.

16. Ms. Elizabeth Thorburn was the responsible officer of the Director in charge of the WWF consultancy. In normal circumstances she had nothing to do with the plaintiff's consultancy. However, on 11 March 1998, during the absence of the officer normally responsible for the plaintiff's consultancy, she attended a meeting with other officers and the plaintiff. She said in evidence that she had with her a "draft handbook" which was about 60 pages long. If this were so, and there is no reason to disbelieve her, then she did not have with her the Content Proposal. Ms. Thorburn returned all files on the plaintiff's consultancy to her superior officer within several days of the meeting on 11 March 1998.

17. On 26 March 1998 Ms. Thorburn had a meeting with Ms. Handley in the course of which Ms. Handley handed over a progress report on the state of the preparation of the review. During that conversation Ms. Thorburn and Ms. Handley spoke about the relationship between the project for which the plaintiff had been retained and the project for which WWF had been retained and which was the subject of the report delivered by Ms. Handley. The discussion was in general terms about the nature of each project. Ms. Thorburn did not provide and Ms. Handley did not seek any written material produced by the plaintiff in relation to his project. In particular, Ms. Thorburn did not make available the Content Proposal to Ms. Handley.

18. By June 1998 when the plaintiff had further discussion with Ms. Handley, he formed the opinion that "what she was doing was very similar" to his own project and, as I understand it, he drew the inference that the Content Proposal had been supplied to her by Ms. Thorburn. In the subsequent impasse between the plaintiff and the Director as to the completion of the handbook, the plaintiff fears that WWF has used and profited, or will use and profit, from the plaintiff's ideas as expressed, inter alia, in the Content Proposal.

19. It is submitted on behalf of the plaintiff that Ms. Handley's report of 26 March 1998 infringes the copyright of the plaintiff in the Content Proposal.

20. The inference drawn by the plaintiff that the Content Proposal was made available to WWF cannot be sustained, even accepting the whole of the evidence upon which the plaintiff relies.

21. That is not to say, however, that an examination of the Content Proposal and the report cannot disclose an arguable case that the latter is an infringement of the former.

22. However, it is necessary to bear in mind that there is no copyright in ideas as such. As Lahore, Intellectual Property in Australia, para.6030, note 1, observes, it is incorrect to assert that there is no protection for ideas in copyright law, and that protection extends only to the form in which the ideas have been expressed. In Autodesk Inc. v. Dyason (1992) 66 ALJR at 233 Dawson J, with whom the other members of the High Court agreed, referred at 238 to "the traditional dichotomy in the law of copyright between an idea and the expression of an idea". His Honour stated:

"The distinction has been criticised and it is true that it is often difficult to separate an idea from its expression, but it is nevertheless fundamental that copyright protection is given only to the form in which ideas are expressed, not to the ideas themselves. The protection of ideas, at all events when the subject of manufacture, is the province of patent law."

23. One must look then first to the content and form of the two documents in questions in order to see whether it is arguable that the review is a copy or part of a copy of the content proposal. If the comparison favours the plaintiff's case, then it may be that the factual background to which I have referred may be of assistance in deciding such issues as whether Ms. Handley's product is an independent creation. However, unless the plaintiff can get over the threshold by an examination of the two documents, he must fail.

24. The two documents are sufficiently brief for copies of them to be annexed to these reasons.

25. The two documents are so obviously dissimilar that it is difficult to identify, let alone discuss, any relevant similarities. There is one fundamental dissimilarity. It is that the plaintiff's Content Proposal does not purport to be a draft of the text of the handbook but rather a set of instructions or proposals as to what the contents ought be and how they should be set out. Apart from a few phrases here and there, none of it is in a text suitable for the eventual reader of the handbook.

26. The report of Ms. Handley, on the other hand, contains more in the nature of text directed to the eventual reader and is less directive and more descriptive than the plaintiff's Content Proposal.

27. The plaintiff himself asserted that the "themes and structures" which he had described to Ms. Handley over the telephone in February 1998 and which appear in the Content Proposal have been copied by Ms. Handley.

28. Further, as I understand the argument put on his behalf, it was submitted that the report was a colourable disguise of the Content Proposal in the following respects.

29. First, in s.1 of the plaintiff's Content Proposal there appear the following:

"Narrative;

Explain what wetlands are - including descriptions, definitions, the range of kinds, variability, usages, inter-relationships, boundaries, outward links, catchments, affects/damage caused by humans, and the like.

Present the overall benefits of wetlands. This will be the focus of this section, because it is the benefits that will cause people to act."

30. 31. Ms. Handley's report contains the following:

"Chapter 1 - Introductory topics including what is a wetland, why conserve wetlands, what is the value of wetlands, how does one identify wetland values?"

32. Secondly, the plaintiff's Content Proposal contains the following:

"Explain threats to wetlands - including affects and damage caused by humans, animals and climate. Note that many of the threats to wetlands result from overusing or ignoring their benefits."

33. Ms. Handley's report contains the following:

"Chapter 2 - A `key' to the major processes that threaten the ecological integrity in wetlands in Australia. This will serve to facilitate the identification of threats that need to be addressed in management planning and implementation."

34. Thirdly, the plaintiff's Content Proposal contains the following:

"Section 2 - How you can help

Narrative:

Describe broadly how landholders, groups and communities are already supporting and managing wetlands."

35. Ms. Handley's report contains the following:

"Chapter 3 - A range of management options currently used in Australia to mitigate the impact of threatening processes identified in Chapter 2."

36. Fourthly, the plaintiff's Content Proposal contains the following:

"Section 3 - How others help

Narrative:

Explain what government agencies and other groups are doing on behalf of wetlands."

"Section 2 - How you can help

..... - outline the steps in successful wetland management. These include collecting information, identifying benefits, threats and actions and monitoring to see if the benefits are still there."

37. 38. Ms. Handley's report contains the following:

"Chapter 4 - The importance of monitoring and its need to be incorporated into the management planning and implementation process will be outlined."

39. The above comparison was made during the course of cross-examination of Ms. Handley. No other comparison or identification of alleged similarities was made during the course of submissions on behalf of the plaintiff. The concession obtained from Ms. Handley that the plaintiff's project and the project of Ms. Handley were "starting to sound fairly similar" is of no assistance to the Court.

40. The alleged similarities, if they can be so described, are by no means striking or substantial. One has to take into account that the Director had engaged both consultants to prepare documents relating to the management of wetlands and it is not suprising that there is some overlap in the subject matter, and to some extent, the format of the documents. The dissimilarity between the two documents is so great and so obvious that it cannot be said that there is a serious issue to be tried on the question of the alleged infringement of the plaintiff's copyright. It would be reasonable to expect that both projects would include an examination, to whatever extent, of the nature of wetlands, the threat to wetlands and the monitoring of their management. The fact that the plaintiff may have told Ms. Handley that he intended to include these matters, or some of them, in his handbook together with his subsequent meetings with officers of the Director and his subsequent discussions with Ms. Handley, may have led to an understandable apprehension that his ideas were being pirated, but none of this supports his case for infringement of copyright.

41. In any event, if there were a triable issue of infringement, I would conclude that the plaintiff has not shown that damages are not an adequate remedy. Further, if I had to decide where the balance of convenience lay, I would say that it lay in allowing the Director to prepare a proper report for the purposes of the Ramsar Convention.

42. Other factors which weigh against the granting of interlocutory relief, even if an arguable case were made out, include the provisions in the consultancy contract that copyright in consultancy material is shared jointly between the Director and the plaintiff, and that the Director has an unfettered right to use or disseminate that material. Further, the plaintiff was frank in conceding that he is not in a financial position to give the usual undertaking as to damages which I would regard as a condition of granting relief in the nature of an interlocutory injunction.

43. Further, if there were a seriously arguable case of infringement against WWF, there is no evidence that the Director or the third defendant was a party to that infringement. As far as the third defendant is concerned, all that the evidence shows is that it carried out part of the consultancy work for WWF on a sub-contract basis.

44. The plaintiff's application is refused. Unless the parties wish to be heard, I propose to order that the plaintiff pay the defendants' costs of the application. As foreshadowed, I will give directions as to the further conduct of the matter. I also suggest that the parties try to settle their differences before costs escalate out of proportion to what is truly at stake. There are abundant avenues for mediation in this Territory and I commend them to the parties.

I certify that this and the eight (8) preceding pages are a true copy of the Reasons for Judgment herein of his Honour, the Chief Justice.

Associate:

Date: 10 September 1998

Counsel for the plaintiff: F. MacDonald

Instructing solicitors: F. MacDonald

Counsel for the first defendant: G. Loughton

Instructing solicitors: Australian Government Solicitor

Counsel for the second defendant: S. Lee

Instructing solicitors: Blake Dawson Waldron

Counsel for the third defendant: S. Adams

Instructing solicitors: Colquhoun Murphy

Dates of hearing: 21 August 1998

Date of judgment: 10 September 1998