Editors --- "Milpurrurru And Others v. Indofurn Pty Ltd And Others - Case Summary" [1996] AUIndigLawRpr 20; (1996) 1(1) Australian Indigenous Law Reporter 28

Milpurrurru And Others v Indofurn

Federal Court of Australia (von Doussa J)

25-29 July, 22 November, 1, 13 December 1994, Northern Territory

Copyright -- Aboriginal paintings -- Artwork or parts thereof reproduced on Vietnamese made woollen carpets -- Importation into Australia for sale -- Copyright ownership -- Whether reproduction of a substantial part of the artwork -- Whether importer knew or ought reasonably to have known that the making of the carpets, if made in Australia, would have constituted infringing copies -- Whether directors personally liable for infringements by company -- Misleading and deceptive conduct -- Order for delivery up -- Assessment of conversion damages -- Assessment of compensatory damages for depreciation of value of copyright -- Additional damages -- Flagrancy -- Relevance of Aboriginal law and custom and notions of collective ownership by traditional owners.

In 1991, the first respondent commenced importation of carpets manufactured in Vietnam which reproduced Aboriginal artworks, the copyright in which was owned by the applicants. The applicants had not given permission for their artworks to be reproduced on the carpets, nor for the carpets bearing the artworks to be imported into Australia.

The first three applicants were well-known Aboriginal artists who resided in the Northern Territory. There were five other artworks of deceased Aboriginal artists reproduced, the copyright in which vested on their deaths in the fourth respondent, the Public Trustee of the Northern Territory. Each of the artworks reproduced were well-known and were reproduced in a number of authorised publications to which the Vietnamese factory which made the reproductions, on behalf of the first respondent, had access.

Of the eight artworks reproduced, one was reproduced partly and two others were reproduced both entirely and partly. One of the main questions for determination was whether the partial reproductions constituted substantial reproductions.

The applicants claimed infringement of copyright by reason of the unauthorised importation of carpets, on the grounds provided for in s. 37 of the Copyright Act 1968 (Cth). They also claimed breaches of ss. 52 and 53(c) and (d) and 55 of the Trade Practices Act 1974 (Cth) with specific regard to the form of labelling used in connection with the carpets which stated that the carpets had been designed by Aboriginal artists and that royalties were paid to the artists on every carpet sold.

In about May 1992, after some of the importation had been undertaken, the second respondent, the managing director of the first respondent, took steps to obtain permission for the importation of the carpets from the artists concerned. He did so by retaining the services of an employee non-lawyer of the Western Australian Aboriginal Legal Aid Service, who sought, on behalf of the first respondent, to secure permission for the importation from an organisation representing Aboriginal artists, known as the Aboriginal Arts Management Association Inc. A letter seeking permission was incorrectly addressed and not received by the organisation, and there was no permission of any kind communicated to the first respondent by any representative on behalf of the artists or any of the individual artists. The importation proceeded and the first respondent organised a selling exhibition of the carpets in Perth in October 1992. The Aboriginal Arts Management Association Inc obtained information about the sale of the carpets and took steps to require that the first respondent cease its importation and selling activities. The first respondent refused to meet the demands of Aboriginal Arts Management Inc and made various unsuccessful attempts to deal directly with some of the artists.

Proceedings were commenced in April 1993 alleging infringement of copyright and breaches of ss. 52 and 53(c) and (d) and 55 of the Trade Practices Act. Notwithstanding the commencement of the proceedings, the conduct complained of by the applicants continued.

The third and fourth respondents were at all material times directors of the first respondent. They did not give any evidence at trial. The second respondent, who did give evidence, stated that the third and fourth respondents had no role in the importation and selling activities of the first respondent, which was the subject of the proceeding.

Held:

(1) The unauthorised importation of the carpets constituted infringement of copyright of the applicants in the artworks by the first respondent.

(2) The partial reproductions of artworks were in each case substantial reproductions.

(3) In having regard to whether a reproduction is substantial, it is appropriate to consider a number of matters as follows:

(a) the volume of the material taken;

(b) how much of the material is the subject matter of copyright and how much is not;

(c) whether there has been an animus furandi on the part of the designers of the carpets, being an intention by such people to take from the copyright works for the purpose of saving themselves labour;

(d) the extent to which the copyright works and the infringing work are competing.

Ravenscroft v. Herbert & New English Library Ltd [1980] RPC 193 at 203, followed.

(4) The second respondent was also liable for infringement of copyright by reason of his authorising the infringement of the first respondent.

University of New South Wales v. Moorhouse [1975] HCA 26; (1975) 133 CLR 1; Kalamazoo (Aust) Pty Ltd v. Compact Business Systems Pty Ltd (1985) 84 FLR 101 at 126-127; Australasian Performing Right Association Ltd v. Jain (1990) 26 FCR 53 at 60-61, applied.

(5) The provisions of s. 36 of the Copyright Act, in so far as they deem authorisation as infringing conduct, do not apply to s. 37 of the Copyright Act.

(6) Under the general law where two or more people act together in furtherance of a common design to commit a tort, the infringement of the copyright statute being considered tortious, they will be responsible as joint tortfeasors.

Morton-Norwich Products Inc. v. Intercen Ltd [1978] RPC 501 at 515-516; Wah Tat Bank Ltd v. Chan Cheng Kum [1975] AC 507 at 514-515; C Evans & Sons Ltd v. Spritebrand Ltd [1985] 1 WLR 317; [1985] 2 All ER 415; A P Besson Ltd v. Fulleon Ltd [1986] FSR 319; Kalamazoo (Aust) Pty Ltd v. Compact Business Systems Pty Ltd (1985) 84 FLR 101; Martin Engineering Co. v. Nicaro Holdings Pty Ltd (No. 2) (1991) 100 ALR 358, discussed.

(7) The third and fourth respondents were also liable for infringement of copyright. Service of the proceedings would have brought to their notice the fact that the first respondent was continuing to engage in infringing conduct. The third and fourth respondents as directors of the first respondent were under a duty to take such steps as were reasonably available to them to prevent serious breaches of the law of the kind alleged against the first respondent, but failed to take any steps at all. From the degree of indifference exhibited by the inaction of the third and fourth respondents, authorisation and permission for the conduct of the first respondent which followed should be inferred.

Morley v. Statewide Tobacco Services Ltd [1993] VicRp 32; [1993] 1 VR 423 at 448-449; Naffai v. Haines (unreported, Court of Appeal, NSW, 26 November 1991); Group Four Industries Pty Ltd v. Brosnan (1992) 59 SASR 22 at 30, 68-70; AWA Ltd v. Daniels (t/a Deloitte Haskins & Sells) (1992) 10 ACLC 933 at 1012-1013; Performing Right Society Ltd v. Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 at 15; City of Adelaide v. Australasian Performing Right Association Ltd [1928] HCA 10; (1928) 40 CLR 481 at 487, 490-491, 504-505; University of New South Wales v. Moorhouse [1975] HCA 26; (1975) 133 CLR 1 at 12-13, discussed.

The decision is reported in (1994) 54 FCR 240.

See also [1995] AboriginalLawB 13; (1995) 3(72) Aboriginal Law Bulletin 36.