Remedies for infringement of copyright

Civil Remedies

  • Part V of the Copyright Act provides a range of civil remedies for infringement of copyright.
  • The Act is not exhaustive of available remedies, and that indeed any remedy which a court hearing a copyright matter may award in its inherent jurisdiction is available, for example, a declaration.
    • WEA International Inc v Hanimex Corp Ltd

Injunctions

  • An injunction is an available remedy (s 115(2)).
  • An injunction is the most common remedy – either interlocutory or final.
  • The principles upon which relief will be available are those applicable under the general law.

Damages

  • Damages is an available remedy (s 115(2)).
  • Damages cannot be obtained from an innocent infringer – that is, damages are not available if, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright (s 115(3)).

Kiama Constructions v MC Casella Building Co Pty Ltd

  • The plaintiff builder drew up a plan for a couple to build a house on a block of land. The couple made a pencil sketch of the plan and showed the defendant builder. The defendant builder suggested a draftsman should draw up more detailed plans.
  • Held, infringement of copyright, but that the defendant builder was an innocent infringer and was not liable to pay damages – the builder was unaware the couple did not own copyright in the plans.

Additional Damages

  • Additional damages of a punitive and/or aggravated nature may also be awarded (s 115(4)).
  • The court has regard to:
    • (i)  the flagrancy of the infringement; and
    • (ia)  the need to deter similar infringements of copyright; and
    • (ib)  the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and
    • (ii)  whether the infringement involved the conversion of a work or other subject matter from hardcopy or analogue form into a digital or other electronic machine readable form; and
    • (iii)  any benefit shown to have accrued to the defendant by reason of the infringement; and
    • (iv)  all other relevant matters.

Milpurrurru v Indofurn Pty Ltd

  • The artwork of eight Aboriginal artists had been reproduced without their permission on carpets manufactured overseas and imported into Australia by the defendants.
  • Held, copyright infringement – additional damages were assessed at $70,000 having regards to the cultural harm and personal distress caused.

Account of Profits

  • An account of profits is an available remedy (s 115(2)).
  • An account of profits and damages are alternative remedies.
    • The applicant must elect.
  • The applicant is entitled to recover a sum which represents that proportion of the respondent’s profits that was fairly attributable to the infringement of the applicant’s copyright.
    • Robert J Zupanovich v B & N Beale Nominees

Conversion Damages

  • Conversion damages is an available remedy (s 116).
  • The plaintiff takes control of infringing copies or devicies used to making infringing copies.
  • The provisions were substantially amended by the Copyright Amendment Act (No 1) 1998 with the effect of making the remedy a matter of discretion by the court. These new provisions are intended to avoid the possibility of the award of excessive damages.
  • Owner of copyright in a work or other subject-matter may bring an action for conversion or detention in relation to (s 116(1)):
    • an infringing copy.
      • “infringing copy” – an article, the making of which constituted an infringement of copyright in the work, sound recording, film, broadcast or edition, as the case may be, or in the case of an imported article would have constituted such an infringement if the article had been made in Australia by the importer (s 10(1)).
    • a device used for making infringing copies.
  • A court may grant those remedies that would be available as if (s116(1A)):
    • the copyright owner had been the owner of the infringing copy since the time the copy was made.
    • the owner of the device used or intended for use in making them.
  • Conversion damages is a remedy in addition to, for example, compensatory damages (s 116(1B)).
    • But, the court is not to make an award for conversion damages where it is satisfied, in essence, that an award of compensatory damages under s 115 is a “sufficient remedy” in the circumstances (s 116(1C)).
  • In deciding whether to grant conversion damages and in assessing the amount of such damages the court is to have regard, for example, to the expenses incurred by the defendant in manufacturing or acquiring the infringing copy and “any other matter that the court considers relevant” (s 116(1D)).
  • If only part of the infringing copy consists of material that infringes copyright, the court considers (s 1161E):
    • the importance to the market value of the article of the material that infringes copyright.
    • the proportion of the infringing material.
    • the extent to which the material that infringes copyright may be separated from the article.
  • Conversion damages cannot be obtained from an innocent infringer – copyright owner is not entitled to conversion damages if it is established that at the time of the conversion that (s 116(2)):
    • the defendant was not aware, and no reasonable grounds for suspecting that copyright subsisted in the work or other subject-matter; or
    • where the articles were infringing copies the defendant believed, and had reasonable grounds for believing, that they were not infringing copies.

Anton Piller Order

  • An ex parte interlocutory order that the defendant permit the plaintiff’s solicitors to enter premises forthwith to inspect and remove defined articles and documents.
  • Need to show a strong prima facie case and a real risk that the evidence will be destroyed:
    • Anton Piller KG v Manufacturing Processes Ltd
    • Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd

Criminal Provisions

  • Not every infringement of copyright is a criminal offence. Generally, only infringements of copyright that involve commercial dealings or infringements that are on a commercial scale are criminal.
  • Examples of criminal provisions:
    • commercial-scale infringement prejudicing copyright owner (132AC);
    • making infringing copy commercially (132AD);
    • selling or hiring out infringing copy (132AE);
    • offering infringing copy for sale or hire (132AF);
    • exhibiting infringing copy in public commercially (132AG);
    • importing infringing copy commercially (132AH);
    • distributing infringing copy (132AI);
    • possessing infringing copy for commerce (132AJ);
    • making or possessing device for making infringing copy (132AL);
    • advertising supply of infringing copy (132AM);
    • causing work to be performed publicly (132AN);
    • causing recording or film to be heard or seen in public (132AO).
  • Following the Copyright Amendment Act 2006 (Cth), there are now three tiered offences for most offences – indictable, summary and strict liability offences relating to copyright piracy.
  • The most serious offences are indictable.
    • Default fault elements of intention and recklessness.
    • Maximum penalties of 5 years imprisonment and/or between 550 to 850 penalty units ($60,500 to $93,500) for natural persons.
  • The summary offences have a lower threshold, with most containing fault elements of intention (by default) and negligence.
    • Maximum penalties of 2 years imprisonment and/or 120 penalty units ($13,200).
  • Strict liability offences do not have a fault element.
    • Maximum penalty for a strict liability offence is 60 penalty units ($6,600) for a natural person.
    • Regulations may provide for a scheme of infringement notices (on-the-spot fines) to be issued for strict liability offences up to 20% of the maximum penalty (s 133B)
    • Regulations in Part 6A of the Copyright Regulations 1969 set up an infringement notice and forfeiture scheme.
      • So far, we have seen little use of infringement notices by police in Australia.
  • Where a matter goes to court, courts can order that circumvention devices, infringing copies, and devices and equipment used to infringe, be destroyed, or handed over to relevant copyright owners, or otherwise dealt with.