Remedies for infringement of copyright

The Copyright Act provides that a copyright owner may bring an action for infringement of the copyright. 1)

There are a number of remedies available to copyright owners which include civil remedies such as injunctions and damages 2) and remedies available through criminal proceedings. These remedies will be discussed in detail in this chapter.

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. 3)

Injunctions

An injunction is one of the most common remedies and may either be an interlocutory injunction or a final injunction. An injunction is an equitable remedy which seeks to prevent a person from doing a particular thing or demands a person to do a particular thing.4)

An interim injunction (or interlocutory) is granted in a situation where the person seeking the injunction can establish that there is a question which needs to be tried by the court. 5)

A final injunction will be made to ensure a particular course of action is taken - whether to stop or demand action. The principles upon which relief will be available are those applicable under the general law.

Damages

Pursuant to the Act, damages is an available remedy and can be awarded in certain circumstances. 6)

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. 7)

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 in certain circumsatnces. 8)

In these instances the court has regard to:

  • (i)  the flagrancy of the infringement;
  • (ia)  the need to deter similar infringements of copyright;
  • (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;
    • (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;
    • (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

Pursuant to the Act, an account of profits is an available remedy. 9)

An account of profits is an alternative remedy to damages and the applicant must choose which they will be seeking. An account of profits provides for the applicant 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. 10)

Conversion Damages

There is also another remedy available known as conversion damages. 11)

In conversation, the plaintiff takes control of infringing copies or devices used in the making of infringing copies.

These 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.

An owner of copyright in a work or other subject-matter may bring an action for conversion or detention in relation to: 12)

  • an infringing copy.

An “infringing copy” is defined as 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. 13)

  • a device used for making infringing copies.

A court may grant those remedies that would be available as if: 14)

  • 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. 15) 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. 16)
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”. 17)

If only part of the infringing copy consists of material that infringes copyright, the court considers:18)

  • 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. A copyright owner is not entitled to conversion damages if it is established that at the time of the conversion that:19)

  • 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

The last civil remedy available to copyright owners is an Anton Piller Order. An Anton Piller Order is an ex parte interlocutory order that requires the defendant to permit the plaintiff’s solicitors to enter their premises forthwith to inspect and remove defined articles and documents.

In order for an Anton Piller Order to be granted, the plaintiff needs to show a strong prima facie case and there is a real risk that evidence will be destroyed if an order was not made. 20)

The Copyright Act includes non-civil remedies which are found in the 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; 21)
  • making infringing copy commercially; 22)
  • selling or hiring out infringing copy; 23)
  • offering infringing copy for sale or hire; 24)
  • exhibiting infringing copy in public commercially; 25)
  • importing infringing copy commercially; 26)
  • distributing infringing copy; 27)
  • possessing infringing copy for commerce; 28)
  • making or possessing device for making infringing copy; 29)
  • advertising supply of infringing copy; 30)
  • causing work to be performed publicly; 31) and
  • causing recording or film to be heard or seen in public. 32)

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. These offences have default fault elements of intention and recklessness. They carry 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. The maximum penalties of 2 years imprisonment and/or 120 penalty units ($13,200).

Strict liability offences do not have a fault element. The 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. 33)

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 circumvention devices, infringing copies, and devices and equipment used to infringe, be destroyed, or handed over to relevant copyright owners, or otherwise dealt with.


1)
s115)(1)
2) , 6) , 9)
s115(2)
3)
WEA International Inc v Hanimex Corp Ltd
4)
s115(2
5)
Castlemaine Tooheys Lyd v South Australia (1986) 161 CLR 148
7)
s 115(3)
8)
s115(4)
10)
Robert J Zupanovich v B & N Beale Nominees
11)
s116
12)
s116(1)
13)
s10(1)
14)
s116(1A)
15)
s116(1B)
16)
s116(1C)
17)
s116(1D)
18)
s116(1E)
19)
s116(2)
20)
Anton Piller KG v Manufacturing Processes Ltd; Polygram Records Pty Ltd v Monash Records (Australia) Pty Ltd
21)
132AC
22)
132AD
23)
132AE
24)
132AF
25)
132AG
26)
132AH
27)
132AI
28)
132AJ
29)
132AL
30)
132AM
31)
132AN
32)
132AO
33)
s133B
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