Re Telmak Teleproducts Australia Pty Limited; Gulf Advertising Inc and Global Tool Corporation v Bond International Pty Limited; Country Television Services Limited and Total Media (Inc) Pty Limited [1986] FCA 28 (17 February 1986)

FEDERAL COURT OF AUSTRALIA

Re: TELMAK TELEPRODUCTS AUSTRALIA PTY LIMITED; GULF ADVERTISING INC and GLOBAL
TOOL CORPORATION
And: BOND INTERNATIONAL PTY LIMITED; COUNTRY TELEVISION SERVICES LIMITED and
TOTAL MEDIA (INC) PTY LIMITED
No. G345 of 1984
Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Wilcox J.

CATCHWORDS

Trade Practices - Copyright - Application to strike out portion of Statement of Claim - Lack of particulars as to copyright ownership - Whether film in respect of which copyright is claimed must be an original work, in the sense of being based on claimant's ideas - What constitutes infringement of copyright in film - Proper exercise of discretion on strike out application where allegation is one of substance.

Trade Practices Act 1974 s.52

Copyright Act 1968 ss.10, 32, 90

Zeccola v Universal City Studios Inc (1982) 46 ALR 189 referred to

HEARING

SYDNEY
17:2:1986

Counsel for the applicants: Mr B M James

Solicitors for the applicants: Messrs Moray & Agnew

Counsel for the first respondent: Mr A Martin

Solicitors for the first respondent: Messrs Baker & McKenzie

Appearance for the second respondent: Mr N Pappas (solicitor), Messrs Dawson Waldron

ORDER

1. Paragraphs 6(a) and 6(b) of the Amended Statement of Claim be struck out.

2. The Amended Statement of Claim, insofar as it alleges any infringement by any of the respondents of the copyright of the first applicant's script, be struck out.

3. Leave be granted to the applicants to further amend the Statement of Claim, within twenty-one (21) days, but not so as to add any new claim for relief, as distinct from better particularising the existing claims.

4. Leave be granted to the respondents to amend their Defences within fourteen (14) days of the amendments to the Statement of Claim.

5. The applicants pay to the respondents their costs of the amendments.

6. The costs of this motion be the costs in the principal proceedings of the first respondent as against the applicants.

NOTE: Settlement and entry of orders is dealt with in
Order 36 of the Federal Court Rules

DECISION

This is an application made on behalf of the first respondent to the principal proceeding, seeking that the Court strike out various elements of the Amended Statement of Claim.

2. The first matter concerns the position of the second and third applicants, who are each American corporations and who are said, in affidavits which were filed in the application for interlocutory relief, to be, or to have been at earlier stages, entitled to copyright in a script for a television advertisement, which was said to have been written by Mr Philip Felstead, an American citizen and resident, and for the film, referred to in the Amended Statement of Claim as "the US film", which was made in accordance with that script.

3. Paragraphs 6(a) and 6(b) of the Amended Statement of Claim deal with the position of the second and third applicants and assert respectively that they are the owners of the copyright in the original literary work comprising the script and that they are the owners of copyright in the cinematograph form. Certain particulars are included in each of the paragraphs but they do not indicate the manner in which the second and third applicants, or either of them, has become the owner of the relevant copyright. It seems to me that in that respect the particulars are defective and that -- in the absence of some appropriate amendment -- it would be appropriate to strike out paras.6(a) and 6(b) of the Amended Statement of Claim.

4. Counsel for the applicants does not contest that the paragraphs are inadequate but he seeks the opportunity to further amend the Statement of Claim so as to rectify the deficiencies. This is not seriously opposed on behalf of counsel for the respondents. I think that the appropriate course to be taken in regard to these paragraphs is for me to order that paras.6(a) and 6(b) of the Amended Statement of Claim be struck out but that the applicants have leave to file a further Amended Statement of Claim, repeating the allegations contained in those paragraphs with particulars supporting those allegations.

5. The second matter concerns the position of the first applicant, Telemak Teleproducts Australia Pty Limited, which -- as its name suggests -- is a corporation carrying on business in Australia. That applicant alleges an infringement by the respondents of its copyright in a film which was made in Australia by a Mr Mark Leonard pursuant to a script written in Australia by Mr David Hammer. Counsel for the first respondent submits that there can be no infringement by his client of any copyright of the first applicant in this film, which has been referred to as the Australian film, for two reasons. Firstly, he says that a film has to be original in order to attract copyright; he asserts that the Australian film which was made by Mr Leonard was not original because it attempted to reproduce as nearly as possible the images and sounds to be found in the American film. Secondly, he says that in order for there to be an infringement of copyright in the Australian film, it would be necessary that the respondents reproduce the Australian film in the sense of making an exact copy or facsimile of that film; it is not enough, he says, that they may have produced a film which is closely modelled upon the first applicant's Australian film, and which attempts to convey the same messages by the use of similar, or even identical, visual images and sounds. Both of the matters referred to by counsel are matters of some difficulty.

6. As at present advised, I am not persuaded that it is an essential ingredient of a claim for infringement of copyright that the claimant has made an original film, using original in the sense of being based upon the ideas of the claimant. I think that the concept embodied in the Copyright Act 1968 is that there is copyright in the collage of visual images and sounds which together constitute a film. I have in mind the definition of "copy", in relation to cinematograph film, in s.10 of the Act, whereby that word is defined as meaning "... any article or thing in which the visual images or sounds comprising the film are embodied". Section 90 of the Act provides that,"Subject to this Act, copyright subsists in a cinematograph film of which the maker was a qualified person for the whole or a substantial part of the period during which the film was made". In the present case it is alleged that Mr Leonard was the maker and was a resident of Australia, and therefore a qualified person, during the period during which the film was made.

7. It is, I think, noteworthy that s.90 does not include any ingredient of originality and in this respect stands in contrast to the works covered by Part III of the Act in relation to which originality is an essential ingredient: see for example s.32. My present view is that there is no necessity for a person claiming an infringement of copyright to show that the choice of visual images and sounds is original and, consequently, that it is no defence to the claim brought by the first applicant, if it be the position on the facts, that its own film attempted to reproduce the images and sounds in the American film.

8. The second matter relied upon by counsel is a matter to which I made reference in the judgment given by me on 12 July 1985 in relation to the application by the applicants for an interlocutory injunction. At that time, I was asked to compare the Australian film made by the first applicant with the second of the two Australian films made by the respondents; a different respondents' film from that now relevant. I took the view that, whatever may be the position in relation to a comparison between the respondents' film and any script which was used as a basis for the applicant's film, there could not be an infringement of copyright in the film itself unless there was an actual reproduction of the sounds and visual images contained in the applicant's film. I had in mind the actual camera shots and recorded sounds which constitute the applicant's film. Mr James, on behalf of the applicants, has today submitted that this conclusion was erroneous and that the definition of "copy", in relation to a cinemagraph film, in s.10, which I have already quoted, is apt to include as a copying a deliberate attempt to reproduce through the equipment of the copier visual images and sounds which were captured on the earlier film.

9. I am unpersuaded that this is so, but I do not think that it is appropriate to exercise the power of the Court under O.20, r.2, to strike out that part of the applicants' claim which alleges such an infringement. The matter is one of some substance, as was pointed out by the members of the Full Court who heard Zeccola v Universal City Studios Inc (1982) 46 ALR 189. It is a matter which is likely to be of some significance in the present litigation, and in relation to which the applicants, if my view is maintained, may wish to exercise a right of appeal. I think that it is better that, on a matter of some substance which is of importance to the parties, the facts be fully tried before there is any appeal in relation to any aspect of the matter.

10. I am influenced also by the consideration that whether or not the reproduction by the respondents of the applicant's Australian film is a breach of any copyright which the applicant may have, the applicants wish to prosecute a claim that the reproduction of this film constitutes misleading or deceptive conduct within the meaning of s.52 of the Trade Practices Act 1974. In other words, it will be part of their case at the trial to present a comparison between the two films. If this course is taken, there would be no additional material required because of the circumstance that the allegation of breach of copyright is left in the Statement of Claim as an issue for trial.

11. The power to strike out proceedings or a particular claim for relief is a discretionary one. It ought to be exercised having regard to the circumstances of the particular case and bearing in mind the course which is likely to be most conducive to resolution of the issues between the parties with a minimum of delay and expense. In this particular case the proper exercise of the discretion is to decline to strike out the allegation notwithstanding the fact that my present view is that it is unlikely to succeed and, indeed, that it is misconceived in law.

12. The third matter which arises under the notice of motion relates to the claim made by the first applicant of alleged infringement by the first respondent of copyright in the script written by Mr Hammer. In my reasons for decision in the interlocutory application I expressed the view that the first applicant had no such copyright because the script, which is a literary work within the definition of that term in the Copyright Act, lacked originality. Mr James, on behalf of the applicants, accepts that this is so and concedes that he cannot resist order 3. Consequently in regard to that matter I order that the Amended Statement of Claim, insofar as it alleges any infringement by any of the respondents of the copyright of the Australian script, be struck out.

13. In accordance with the orders which I have made it will be necessary for there to be some revision of the Amended Statement of Claim. There are a couple of other aspects which seem to me to warrant further consideration on behalf of the applicants and which were referred to in passing during the argument. I think that, under those circumstances, I should give leave to the applicants to further amend the Statement of Claim generally, but not so as to add any new claim for relief, as distinct from better particularising the existing claims. Such amendments due to be made within 21 days.

14. It will be necessary consequentially upon the filing of that further Amended Statement of Claim for there to be Amended Defences on behalf of the respondents. The respondents are to make any such amendments within 14 days of the amendments to the Statement of Claim. The applicants must pay the costs of the amendments. The costs of the motion are to be the costs in the principal proceeding of the first respondent as against the applicants. There will be no order in respect of the costs of the second or third respondent.