FEDERAL COURT OF AUSTRALIA

Chhabra v McPherson as Trustee for the McPherson Practice Trust

[2019] FCAFC 228

ORDERS

THE COURT ORDERS THAT:

1.    The appeal is dismissed.

2.    The appellants pay the respondents’ costs of the appeal.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1    The two respondents, Jamie McPherson and Damien van Brunschot are partners in a law firm formerly named MVM Legal. In 2013, MVM Legal joined an international network of law firms using the name Kaden Boriss. Firms participating in the Kaden Boriss network used, as logos, the two artistic works depicted here:

2    The respondents’ firm continued to use the Kaden Boriss name and logos until 1 October 2017.

3    The first appellant, Sunil Lal Chhabra (known as Mr Lal) and the second appellant Kiran Ramrahka commenced proceedings in this Court alleging that Mr Lal was the sole owner of the copyright subsisting in the logos. The appellants claimed that the respondents used the logos and the Kaden Boriss name pursuant to a bare licence revocable at will. They claimed to have revoked the licence on 24 October 2016 or alternatively on 3 or 9 January 2017. They alleged that the respondents had, by continuing to use the name and logos, infringed copyright subsisting in the artistic works, engaged in passing off and contravened the Australian Consumer Law.

4    The primary judge concluded that the respondents’ liability had not been established and dismissed the originating application: Chhabra v McPherson as Trustee for the McPherson Practice Trust [2018] FCA 1755; (2018) 138 IPR 1. This is an appeal from that judgment.

ISSUES AND OUTCOME

5    The grounds of appeal are contained in an amended notice of appeal dated 1 May 2019. The grounds allege 18 errors on the part of the primary judge. It is convenient to address the grounds compendiously by reference to four substantive issues agitated at trial. The issues are confined to the claim founded in copyright. The appellants do not challenge the rejection of their claims founded in contravention of the Australian Consumer Law and the tort of passing off. In convenient order, the issues are as follows.

6    The First Issue is whether Mr Lal is the sole owner of copyright subsisting in the Kaden Boriss logos by virtue of (among other things) an agreement for the assignment of future copyright. The Second Issue (left undetermined by the primary judge) is whether Mr Lal could, as a co-owner of the copyright, independently revoke a licence that each of the co-owners had originally consented to grant. The Third Issue is whether the licence granted to the respondents was revocable at will. The Fourth Issue is whether the licence granted to the respondents was revoked on 3 or 9 January 2017.

7    The Fourth Issue includes a further argument not advanced at first instance, namely whether the respondents’ licence to use the logos was revoked as and from 11 January 2017.

8    The appellants also allege that the primary judge erred in concluding that they would be estopped from revoking the licence. The appellants complain that no defence founded on equitable estoppel had been advanced by the respondents at trial. That issue is considered in the course of determining the Third Issue.

9    For the reasons that follow, the primary judge did not err in holding that Mr Lal was not the sole owner of the copyright subsisting in the logos in Australia. Nor did the primary judge commit an appealable error by leaving undecided the question of whether Mr Lal as co-owner of the copyright could revoke the respondents’ licence without the consent of the other co-owner. There is no appealable error in the conclusion that the licence granted to the respondents was not effectively revoked by Mr Lal on 3 or 9 January 2017. The alternative argument that the licence was revoked on 11 January 2017 should also be rejected.

10    It follows that the appeal must be dismissed.

FACTS

11    The findings of fact bearing on the outcome of the appeal are for the most part unchallenged. The critical events are as follows.

2010 discussions

12    In 2010 Mr Lal commenced discussions with Hemant Batra, the managing partner of a law firm in Delhi trading under the name Kaden Boriss Legal LLP. The discussions related to the creation of an international network of law firms. Mr Lal was then a partner of the Sydney law firm LBR Legal together with Mr Ramrakha. The discussions between Mr Lal and Mr Batra took place with Mr Ramrakha’s knowledge and consent.

13    Mr Lal and Mr Batra approached the managing partner of a law firm based in Singapore, Chee Chun Woei (Mr Chee). Discussions then continued between Mr Lal, Mr Batra and Mr Chee to establish an alliance of firms. It appears that their initial discussions anticipated the involvement of a Kuwaiti firm of which Fayez Al Dosari (Mr Al Dosari) was a partner.

14    On 24 July 2010 Mr Lal, Mr Chee and Mr Batra held a meeting in Singapore to discuss the network. The minutes of that meeting state that the attendees had the “unanimous” view that:

a.    That final aim/object should be to bring all the alliance members under one brand name.

b.    All the member firms should eventually be known by same common name.

c.    Using/adopting ‘Kaden Boriss’ brand name should be explored in light of the fact that it’s already part of top prestigious legal directories/law firm rating associations.

d.    If ‘Kaden Boriss’ brand name will be adopted, Hemant K Batra will have to transfer the brand to the alliance entity.

e.    Though, the brand name will be the property of the alliance entity; however its founder members i.e. Chee Chun Woei, Sunil Lal and Hemant K Batra (and Fayez Al Dosari, subject to confirmation) will have exclusive legal right/ownership/veto re: Singapore, Australia, India and Kuwait, respectively.

f.    The alliance entity will offer the following in lieu of membership subscription – brand name franchise, marketing, research assistance, IT-Connectivity and Auditing.

15    The minutes go on to record 13 decisions said to have been made unanimously, namely:

1.    The alliance founder members shall be Chee Chun Woei, Hemant K Batra, Sunil Lal and (Fayez Al Dosari subject to confirmation).

2.    The alliance members shall agree upon a name for the proposed alliance by 3rd August 2010; all shall be free to suggest any name(s) by 1st August 2010; ‘Kaden Boriss’ shall be one of the name options.

3.    The alliance shall be established as a Singapore company by 7th August 2010 with Chee Chun Woei, Hemant K Batra, Sunil Lal and (Fayez Al Dosari subject to confirmation) as founder members/shareholders/promoters in equal proportion. Initially, each one will subscribe/pay for 1000 shares @ [US] $1 each.

4.    The first board of the alliance company shall comprise of Sunil Lal as Chairman & MD, Chee Chun Woei as Vice Chairman & Director, Hemant K Batra and (Fayez Al Dosari subject to confirmation) as Directors. Their term shall be initially for 1 year. Each founder/promoter will become CMD by rotation.

5.    The constitution and rules for the alliance and its membership shall be finalized by 7th August 2010. Hemant K Batra will circulate the existing draft of Orb Legal and any other relevant document in that respect.

6.    The initial budget for the alliance shall be worked out by Chee Chun Woei by 25th August 2010.

7.    Domain name(s) of the alliance name as finalized shall be registered by 7th August 2010.

8.    All the web sites maintained by the member law firms including those of founders shall become part of the alliance website.

9.    A road map and timeline shall be worked out soon to replace the names of the founder law firms with the name of the alliance.

10.    The membership fee for the alliance shall be as follows: US$2000 at the time of joining (US$1000 at the time of making application and US$1000 on admission) + US$500 per month. The founders shall pay only monthly fee of US$500. The said fee shall be for the principal office and in case of any additional office; the fee shall be US$250 per month additionally for each additional office.

11.    The alliance name shall be exclusive to the founders in their respective countries meaning thereby that no additional member can either be inducted or permitted to use the alliance name.

12.    Conference Call was scheduled for 30th July at Australia Time 6:PM; Hemant K Batra to provide for one common India no. for conference call.

 13.    Draft Minutes to be prepared by Hemant K Batra.

16    In a series of emails dated 30 July 2010 the parties discussed the incorporation of an “alliance entity” which would be a company incorporated in Singapore and would act as a service company for the network of firms. The four proposed shareholders were Mr Batra, Mr Chee, Mr Lal and Mr Al Dosari. Mr Batra referred to an “arrangement of brand transfer to the holding company” and continued:

…  We would also like to mention the fact that each of us will have exclusive legal right and ownership over the said brand in respect of our respective countries regardless of the transfer of the brand to the Singapore Brand holding company.

17    On 31 July 2010 Mr Batra circulated a document titled “Memorandum of Understanding” to Mr Chee, Mr Lal and Mr Al Dosari, containing the following statement:

16.    The alliance name shall be exclusive to the founders in their respective countries meaning thereby that no additional member can either be inducted or permitted to use the alliance name …

18    That document was never executed.

19    On 1 August 2010 Mr Batra sent a further email, stating:

As agreed, (1) ‘Kaden Boriss Pte Ltd.’ will have 4 equal shareholders, namely Chee Chun Woei, Fayez Al Dosari, Hemant Batra and Sunil Lal; (2) once the company is incorporated, it will sign membership/franchise documentation with Chee Chun Woei, Fayez Al Dosari, Hemant Batra and Sunil Lal to use the ‘Kaden Boriss’ brand name in their respective countries exclusively. As in India, we are already using the brand, the documentation may differ.

20    On 3 August 2010 Mr Chee confirmed that he was proceeding with the incorporation of the company that was to be the alliance entity. He went on to say:

… may I confirm that in the respective countries the individuals have ownership of the name and not through a licence from the entity:

a.    Though, the brand name will be the property of the alliance entity; however its founder members i.e. Chee Chun Woei, Sunil Lal and Hemant K Batra (and Fayez Al Dosari, subject to confirmation) will have exclusive legal right/ownership/veto re: Singapore, Australia, India and Kuwait, respectively.

21    Mr Batra replied on 4 August 2010 in the following terms:

Your understanding is correct regarding exclusivity and ownership in Australia with Sunil Lal, India with Hemant Batra and Singapore with Chee Chun Woei (except the Holding Company, which will have 3 shareholders to begin with and then 4). In respect of other countries, we will do license route through Singapore Holding Company.

… Our understanding is whatever is mentioned in the MoU read with Minutes.

Kaden Boriss Services Pte Ltd

22    A Singaporean company named Kaden Boriss Services Pte Ltd was registered on 10 August 2010. A draft constitution and membership agreement for the company was circulated on 6 December 2010. In the events that followed these documents were neither executed nor finalised.

23    In early 2011, Mr Lal and Mr Batra resolved that Mr Chee’s Singapore firm should not join the network. Kaden Boriss Services was wound up and struck off the relevant companies register on 14 October 2011. At the time of making the strike off application, Mr Lal, Mr Batra and Mr Chee certified that the company had no assets.

Creation and use of the logos

24    Prior to becoming deregistered, Kaden Boriss Services engaged another Singaporean company Pulse Creative Group Pte Ltd to create logos for the Kaden Boriss network. At trial, both parties relied on an unexecuted agreement dated 30 August 2010 (the Pulse Agreement) as evidencing the terms under which the logos were created. The respondents made the following admissions in relation to that topic:

1.    Kaden Boriss Pte Ltd commissioned Pulse Creative Group Pte Ltd to create the Kaden Boriss Logos (as defined in the Statement of Claim dated 17 January 2017), under the terms of the agreement between Kaden Boriss Pte Ltd and Pulse Creative Group Pte Ltd dated 30 August 2010.

2.    The Kaden Boriss Logos are each original ‘artistic works’ within the meaning of the term defined under the Copyright Act, 1968 (Cth).

3.    The joint authors of the Kaden Boriss Logos were Lani Fried and Manuel Lopes, each of whom were at all material times resident in Singapore and employees of Pulse Creative Group Pte Ltd.

4.    The Kaden Boriss Logos were created by Lani Fried and Manuel Lopes in the course of their employment with Pulse Creative Group Pte Ltd, and specifically pursuant to the Agreement.

5.    The Kaden Boriss Logos were created by Lani Fried and Manuel Lopes during the period of about August 2010 to February 2011 and were delivered as digital files.

6.    Pursuant to the Agreement, Pulse Creative Group Pte Ltd issued invoice #2192f on 23 September 2011.

7    Invoice #2192f was the final invoice associated with the ‘Kaden Boriss corporate Identity and Branding project’, which includes the creation of Kaden Boriss Logos.

25    Pulse Creative delivered the final version of the logos, being the copyright works depicted at [1] above, to Mr Lal and Mr Batra on 4 February 2011.

26    Kaden Boriss Services did not make any payment toward Pulse Creative’s fees. The evidence suggested that Kaden Boriss Services had never been “made operational”. Some of the invoices were paid by Mr Chee, although he was not a stakeholder in the network at the time that the final logos were delivered. Overall payment of Pulse Creative’s fees was otherwise shared between Mr Lal and Mr Batra as part of a cost sharing agreement. Mr Lal paid the final invoice.

27    Clause 8.1 of the Pulse Agreement provided:

All materials and property produced pursuant to this agreement including reports, recommendations, inventions, software, databases, systems, tools, designs, concepts, artwork, names, brands, logos, advertisements, images, layouts, proposals, storyboards, scripts, or works (‘Works’) created by the Agency for the Client pursuant to this Agreement resides in the Client. The Agency agrees to assign to the Client any present and future copyright, designs, inventions, trade marks and any other intellectual property in the Works upon payment of all Fees relating to the creation of such Works. The Agency agrees to execute all documents and do all things necessary to give effect to the assignment in this clause.

(emphasis added)

28    The primary judge held that this clause provided the “client” with an equitable entitlement to the assignment of copyright subsisting in the logos, conditional upon payment of all fees relating to their creation. His Honour held that at the time that Kaden Boriss Services was deregistered, Pulse Creative had not assigned the copyright to any person, nor had any assignment been requested. The primary judge otherwise identified a number of obscure features of the Pulse Agreement, including ambiguity in the definition of the word “client”. His Honour did not consider it necessary to resolve that ambiguity.

The respondents join the network

29    The appellants’ firm registered the name Kaden Boriss as a business name in New South Wales on 3 August 2011. The firm provided legal services under that name and used the Kaden Boriss logos from 1 September 2011 in Sydney and then from February 2012 in Perth and Canberra.

30    In 2013, Mr Lal was introduced to the respondents through a mutual acquaintance. He held discussions with Mr van Brunschot which resulted in the respondents’ firm joining the Kaden Boriss network. Their initial discussions were followed by an email sent by Mr Lal to Mr van Brunschot on 25 April 2013. Mr Batra was copied in. The parties accept that this document evidences the terms of their relationship. It states:

It was good to meet you and Jamie last week. Following on from our discussions regarding the inclusion of MVM Legal to Kaden Boriss, I have had detailed teleconferences with Hemant Batra who as I explained is the managing partner of our Delhi office and founder of Kaden Boriss.

I have copied Hemant in this email.

As explained we have great plans of expansion for Kaden Boriss globally and we are quite excited about this. Unfortunately time has restricted us in this regard over the past 12 months however there is real determination over the course of the year to have new firms join us. We are delighted about our discussions with you and feel you will enjoy being part of our Kaden Boriss. Our experience shows, the association will lift your profile in the local market and expose the office internationally to benefit from.

Our association with Delhi for example was an added advantage for us to secure a client in litigation over the Christchurch earthquake.

I can personally vouch that our office profile has been taken to another level and with larger client base. We are fortunate of seeing synergies between all offices although our Delhi office specialises in non insurance work.

At Kaden Boriss we are very proud of our growing brand and that has come through hard work.

We welcome your firm to the Kaden Boriss team and after further consideration, we request the following terms:

1.    You may retain MVM Legal and adopt the name Kaden Boriss. For example and not limited to, it could be MVM Kaden Boriss. If things work out over the next 12 months, we would request removal of MVM.

2.    Adopt a common style website at your expense through our nominated marketing firm in Singapore for consistency.

 3.    Consistent stationary [sic] and marketing material.

4.    As a goodwill gesture we shall waive US $5,000 to join the firm which I deliberately did not touch upon with you. I can advise that I paid this fee upon merging.

5.    You maintain autonomy in how you run your office as there is no sharing of financial information etc.

6.    We request agreement to share 20% of fees received from any referral of work for life of that client. This works both ways and is on mutual trust.

7.    We would like to commence the association from 1 July 2013. Prior to that, I can give you some ideas on transitioning as we have gone through this process and did not loose [sic] any corporate clients like Allianz, QBE and CGU to name a few.

Please give this some thought and should you have any questions or wish to discuss further, please do not hesitate to contact me.

On another issue, as mentioned, I am taking 13 people from the office to Singapore on 7 June. Hemant is looking to join with a couple of his partners. If things proceed between us, we welcome you to join in the meet and greet in Singapore which will be low key on this occasion but will give you the opportunity to meet some of the partners from Delhi. Something for you to just consider.

Hemant is also close to finalising an association with a Middle East firm in coming weeks and we will have good news to share.

We look forward to your reply.

31    From 3 July 2013, MVM Legal included statements on its external correspondence to the effect that it was part of the Kaden Boriss Group. From 1 October 2013, the firm officially assumed the name “Kaden Boriss Brisbane” and engaged in marketing activities to promote its business under that name using the Kaden Boriss logos and other indicia.

The appellants leave the Kaden Boriss network

32    By September 2016 the relationship between Mr Lal and Mr Batra had soured. They disagreed about ownership of the Kaden Boriss “brand” and about a proposal put forward by Mr Batra for the network’s website and social media services to be provided by a company in Bangalore.

33    On 6 October 2016, Mr Lal sent a WhatsApp message to Mr van Brunschot relevantly stating:

Hi as a courtesy events have taken place extremely fast in the past few days and as a consequence Sydney and associated offices with us will be removing ourselves from Kaden Boriss

…

We are very nervous in Sydney of passing control to a Bangalore company any other issues and feel for longevity and future partners sake, it will be unfair

34    In the days that followed two partners in the appellants’ firm, Mr Ramrakha and Mr Jay Chander exchanged emails with Mr van Brunschot of the respondents’ firm. The appellants raised the prospect of the respective firms continuing in a rebranded alliance, or forming a new alliance in Australia and Singapore using the Kaden Boriss name. Mr van Brunschot expressed concern about ownership of the name and suggested that the firms jointly obtain advice from an intellectual property lawyer in advance of a meeting that had been arranged for 24 October 2016. Mr Chander’s response included the following:

We need to guard the confidentiality of our meetings and discussion until we choose to communicate more widely – in this regard, we can refer to these discussions and forums as ‘Project WIN’? (What’s in a Name). Happy for alternative suggestions.

If we continue to use the name KB, we will always be presented with the threat (potential or real) of litigation, or in the least, some distraction. If we choose to abandon the name, this may be a fantastic opportunity for us to come together with our existing businesses and clients and to rebadge ourselves with a new name selected by all of us – this would give us ownership of the name and basis to venture forward cohesively. If we agree to this we may not have the need (or the costs) to obtain advice on the IP issues re the name in Australia.

35    By 18 October 2016, the partners of the respondents’ firm had decided that they would remain in the Kaden Boriss network and not form a new alliance with the appellants. That decision was communicated to Mr Lal and Mr Chander by email. The meeting proposed for 24 October 2016 nonetheless took place on Mr Chander’s urging. It was Mr Lal’s evidence at trial that at the conclusion of the meeting, he said words to the effect that he was the owner of the Kaden Boriss name and that the respondents could not continue to use it. It was alleged that by those words, Mr Lal had revoked the respondents’ licence to use the logos as and from 24 October 2016.

36    The primary judge did not accept Mr Lal’s evidence as to what occurred at the 24 October 2016 meeting and so rejected the claim that any licence had been revoked as at that date. There is no challenge to that finding on this appeal.

37    By December 2016, the appellants’ firm had left the Kaden Boriss network and assumed a new name.

Alleged revocation

38    In December 2016, the respondents’ firm sent an email to the appellants seeking a transfer of the Kaden Boriss business name that the appellants had first registered in 2011. The appellants refused. The parties threatened, and then commenced, litigation against each other.

39    Relevantly, the appellants filed a statement of claim in the Equity Division of the Supreme Court of New South Wales on 3 January 2017 (the NSW SOC). By the NSW SOC, the appellants pleaded:

9    The Plaintiffs permitted the Defendants to use the Kaden Boriss brand when the Defendant Firm joined the Network.

10    As the Plaintiffs decided to pursue a multi-disciplinary practice in January 2017, the Plaintiffs in order to protect its goodwill in the Kaden Boriss brand and get-up, no longer permit the Defendants to use the Kaden Boriss brand and get-up.

40    In a letter dated 9 January 2017 the appellants’ solicitors wrote to the respondents’ solicitors. The letter alleged that, in addition to the matters pleaded in the NSW SOC, the respondents had infringed copyright in the Kaden Boriss logos. The letter said:

While our clients provided you with a limited license to use the Kaden Boriss logos from October 2013 to October 2016, it is clear based on what has transpired since October 2016 that you no longer have our clients’ consent or permission to use the copyright works, being the logos at Figure 1 and 2. If there has been any doubt, please take this letter as formal written notice that our clients no longer licenses or authorise use of the Kaden Boriss logos.

(emphasis added)

41    The plea in [10] of the NSW SOC and the service of the 9 January 2017 letter were each alleged at first instance to be effective acts of revocation. Although not clearly pleaded, those allegations were considered and rejected by the primary judge.

42    The New South Wales proceeding and another action commenced by the respondents in the Supreme Court of Queensland were discontinued in circumstances that do not bear on the outcome of this appeal.

43    On 11 January 2017 Mr Batra sent a long email to Mr Lal, copying the respondents. The appellants rely on that email in support of an alternate claim (neither pleaded nor argued at trial) that the respondents’ licence to use the Kaden Boriss logos was revoked with Mr Batra’s consent on 11 January 2017. The email states in part:

In 2010 – 2011, we started talking of joining hands in profession under brand ‘Kaden Boriss’ with Chee also being part of the discussion (Kuwait Firm was never inclined). We 3 individually decided to launch a Global Network in equal shares, with understanding that India will be exclusively mine and Singapore and Australia Chee’s and yours (individually), respectively. Global was to belong to 3 of us. A Singapore Co. was formed, accordingly and then terminated as Chee took an exit. Yes, then only we two were left and it was an understanding that India territory will be exclusively mine and Australia your’s (with no interference from each other). Other than these two countries, Globally we were required to take each other’s consent as we both co-owned the ‘Global’ outfit. You changed the name of your firm in September 2011 to Kaden Boriss.

Unquestionably, Australia territory was yours re: Kaden Boriss.

You and me started to contributed a lot in time, money and resources for its expansion. No denying.

Regarding (Copyright) Pulse payments or for that matter website development and stationery etc. expenditures were co-shared (including expenses for forming Singapore Co.), it is also a matter of record that we both paid equally. Pulse was actually introduced by Chee. Though termination of Singapore Co. expenses were exclusively paid by Chee and never claimed. Thereafter, everything did proceed on joint basis between two of us. If Pulse claims that I am stranger to them then I am sure that they need to be in the witness box with each document of theirs going through the forensic test.

As Australia was completely under your domain, control and prerogative, there is no denying of the fact that it was you who identified/authorized Brisbane on the above premise.

Misunderstanding amongst partners, friends and brothers are natural but these should not build walls and that is why I humbly request you to resolve the matter in the interest of all concerned.

I have resolved to assume eventually ‘founder – advisory role’ in the Group in an independent capacity with Preeti as the Managing Partner of India – Kaden Boriss for the time being. I have decided to take an exit from the management and even divest my rights (whatever, I have). In the legal premise, the basic legal principle is ‘nemo dat quod non habet’ literally meaning ‘no one gives what he doesn’t have’. I will pass on only what I have and if I pass anything more, it has no meaning.

In all honesty, I am a lawful owner by all means of India territory and Globally we are definitely entangled together. Australia territory was yours, which is now sadly subject matter of litigation.

Confirmatory Deed

44    On 12 January 2017, the day after Mr Batra’s email was sent, Pulse Creative entered into a deed with Mr Batra and Mr Lal. The Confirmatory Deed refers to Pulse Creative as Assignor and Mr Batra and Mr Lal together as Assignees. The recitals to the Confirmatory Deed are as follows:

A.    In or around 2010, the Assignor agreed to, amongst other things, create a new Kaden Boriss corporate brand for the First and Second Assignees.

B.    Pursuant to that agreement, the Assignor agreed to assign to the First and Second Assignees any present and future copyright in all materials and property produced pursuant to the agreement upon payment of all fees relating to the creation of such material.

C.    The following Kaden Boriss corporate brands were delivered to the First and Second Assignees on or around 4 February 2011:

(Kaden Boriss Corporate Brand)

D.    All fees relating to the creation of the Kaden Boriss Corporate Brands were paid on 29 September 2011.

E.    This Confirmatory Deed, confirms the assignment of the intellectual property rights, including the copyright, in the Kaden Boriss Corporate Brand to the First and Second Assignees on 29 September 2011.

45    The Confirmatory Deed contains this single operative clause:

Assignment

The Assignor, as legal and beneficial owner, assigned to the First and Second Assignees all its right, title and interest in and to the Kaden Boriss Corporate Brands, including

(a)    all current and future copyright rights, and rights in the nature of copyright, throughout the world in the Kaden Boriss Corporate Brands; and

(b)    all accrued rights of action involving the Kaden Boriss Corporate Brands, throughout the world, with effect from 29 September 2011.

THE FIRST ISSUE: OWNERSHIP OF COPYRIGHT

46    The primary judge held that Mr Lal and Mr Batra were co-owners of copyright subsisting in the Kaden Boriss logos in Australia. The primary judge rejected the respondents’ case that Kaden Boriss Services was the owner of the copyright by virtue of clause 8.1 of the Pulse Agreement and the payment of the final invoice to Pulse Creative.

47    The primary judge reasoned as follows:

(1)    The common starting point was that Pulse Creative was the original owner of the copyright with title and capacity to transfer it (at [104]): Copyright Act 1968 (Cth), s 35(6); Copyright (International Protection) Regulations 1969 (Cth), reg 4.

(2)    An assignment of copyright does not have effect unless it is in writing and signed by or on behalf of the assignor (at [106]): Copyright Act, s 196(3).

(3)    The only relevant assignor could be (or could have been) Pulse Creative (at [106]).

(4)    Pulse Creative did not provide a written assignment of the copyright in the Kaden Boriss logos to Kaden Boriss Services (at [106]).

(5)    Even if Kaden Boriss Services was included in the definition of “client” in the Pulse Agreement, the most it could have under clause 8.1 of the Pulse Agreement was the benefit of an agreement to assign copyright, giving rise to an equitable interest (at [106]): Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 6 FCR 277; Robert J Zupanovich Pty Ltd v B & N Beale Nominees Pty Ltd (1995) 59 FCR 49.

(6)    As Kaden Boriss Services had been struck off, any interest it had in the copyright was no longer capable of being asserted as a matter of practical reality (at [106]).

(7)    The respondents did not have title or standing to assert the equitable interest of Kaden Boriss Services (if it existed) in competition with Mr Lal and Mr Batra (at [106]).

(8)    It was not necessary to form a final view as to whether Mr Lal and Mr Batra were the “Client” as defined in the Pulse Agreement (at [107]). Clause 8.1 of the Pulse Agreement did not have the effect of assigning Australian copyright in the logos to any person (at [107]).

(9)    Mr Lal and Mr Batra did not otherwise become the owners of the Australian copyright in the logos by paying the final invoice issued by Pulse Creative (at [107]).

(10)    The Confirmatory Deed was not “confirmatory” of existing rights, notwithstanding that it was expressed in confirmatory terms.

(11)    The Confirmatory Deed should be taken to be a present assignment of the copyright in the Kaden Boriss logos from Pulse Creative to Mr Lal and Mr Batra.

(12)    The Confirmatory Deed fulfilled the requirements of s 196(3) of the Copyright Act and had, in accordance with its terms, retrospective operation from 29 September 2011 (at [108]).

(13)    It followed that Mr Lal and Mr Batrra were the co-owners of the Australian copyright in the logos with title to exercise those rights from 29 September 2011 (at [108]).

(14)    That retrospective acquisition “fed” the entitlement of Mr Lal and Mr Batra to grant a licence of the copyright to the respondents when they joined the network in 2013 (at [108]): Patten v Thomas Motors Pty Ltd (1965) 66 SR (NSW) 458.

48    The primary judge held that there was no further or subsequent assignment of the Australian copyright from Mr Batra to Mr Lal in conformity with s 196(3) of the Copyright Act and so rejected Mr Lal’s claim to be the sole owner of the copyright (at [112]).

49    The primary judge also rejected Mr Lal’s claim that he was the sole owner of the Australian copyright by virtue of s 30 of the Copyright Act (at [111]). It provides:

In the case of a copyright of which (whether as a result of a partial assignment or otherwise) different persons are the owners in respect of its application to:

  (a)    the doing of different acts or classes of acts; or

(b)    the doing of one or more acts or classes of acts in different countries or at different times;

the owner of the copyright, for any purpose of this Act, shall be deemed to be the person who is the owner of the copyright in respect of its application to the doing of the particular act or class of acts, or to the doing of the particular act or class of acts in the particular country or at the particular time, as the case may be, that is relevant to that purpose, and a reference in this Act to the prospective owner of a future copyright of which different persons are the prospective owners has a corresponding meaning.

50    That section, his Honour said, recognised that there can be multiple owners of copyright in a work according to place, time and/or the acts involved, but did not provide the machinery by which ownership arises.

51    Finally on the question of ownership, the primary judge rejected an argument founded on an alleged assignment of future copyright in August 2010, raised belatedly by the appellants in their closing submissions in reply. In passages now challenged on this appeal, his Honour said:

111    As I understand it, the applicants’ submission is that Mr Lal and Mr Batra originally agreed that, so far as Australia is concerned, Mr Lal would have the exclusive right to use the Kaden Boriss ‘brand’. This agreement is reflected in the email of 11 January 2017. More relevantly, it is reflected in the correspondence passing between Mr Lal, Mr Batra and Mr Chee at the time they were seeking to establish a Singaporean company, and before Pulse was engaged to design and create the logos. In the course of oral closing submission, the applicants sought to argue that this email correspondence constituted an agreement in writing in relation to the ownership of future copyright in the Kaden Boriss Logos: see s 197(1) of the Copyright Act. However, the difficulty with this aspect of the applicants’ case is that it is not reflected in the Confirmatory Deed or (if it matters) the Agreement with Pulse. Further, general assertions about the exclusive right to use a ‘brand’ say little about the ownership of copyright in an artistic work. Even further, the email correspondence does not meet the formal requirements of s 197(1). Whatever agreements Mr Lal and Mr Batra might have come to in that correspondence, it cannot be construed as ‘an agreement made in relation to a future copyright’ and it is not ‘signed’, let alone signed by any person who would have been the owner of the Australian copyright in the Kaden Boriss Logos on its coming into existence (the parties agree that Pulse was the first owner).

112    Ultimately, the chain of title with respect to the Australian copyright in the Kaden Boriss Logos commences with Pulse and ends with the Confirmatory Deed under which Mr Lal and Mr Batra are, clearly, co-owners of the copyright that Pulse assigned. There is no further or subsequent assignment of the Australian copyright from Mr Batra to Mr Lal which meets the requirements of s 196(3) of the Copyright Act. I therefore reject the contention that Mr Lal is the sole owner of the Australian copyright in the Kaden Boriss Logos.

The appellants’ contentions

52    By [3] of their amended notice of appeal the appellants contend that the email from Mr Batra to Mr Lal of 4 August 2010, together with the Confirmatory Deed “meant that Mr Batra assigned his ownership of copyright to Mr Lal effective 29 September 2011”. It is alleged that, when read in conjunction with the minutes of the meeting dated 24 July 2010, “Mr Batra’s intention as to ownership of the Australian copyright is wholly apparent” and that the subsequent emails between Mr Batra and Mr Lal confirmed their respective intentions. The case as put in submissions is that his Honour erred by failing to determine in the appellants favour that by virtue of the 4 August 2010 email, and s 197 of the Copyright Act, the future copyright in the Kaden Boriss logos was placed by Mr Batra in the hands of Mr Lal. Upon the entry into the Confirmatory Deed on 12 January 2017 the automatic effect of the earlier agreement was that Mr Batra assigned his interest in the copyright to Mr Lal. The appellants submitted that the primary judge erred in determining that the 4 August 2010 email did not meet the requirements of s 196 or s 197 of the Copyright Act so as to constitute an effective assignment of future copyright vesting sole ownership in Mr Lal. Sole ownership in Mr Lal is said to have vested as and from 29 September 2011, the date on which the Confirmatory Deed took retrospective effect.

Consideration

53    Section 197 of the Copyright Act provides:

197    Prospective ownership of copyright

(1)    Where, by an agreement made in relation to a future copyright and signed by or on behalf of the person who would, apart from this section, be the owner of the copyright on its coming into existence, that person purports to assign the future copyright (wholly or partially) to another person (in this subsection referred to as the assignee), then if, on the coming into existence of the copyright, the assignee or a person claiming under him or her would, apart from this subsection, be entitled as against all other persons to have the copyright vested in him or her (wholly or partially, as the case may be), the copyright, on its coming into existence, vests in the assignee or his or her successor in title by force of this subsection.

(2)    Where, at the time when a copyright comes into existence, the person who, if he or she were then living, would be entitled to the copyright is dead, the copyright devolves as if it had subsisted immediately before his or her death and he or she had then been the owner of the copyright.

(3)    A licence granted in respect of a future copyright by the prospective owner of the copyright binds every successor in title to the prospective interest in the copyright of the grantor of the licence to the same extent as the licence was binding on the grantor.

54    The phrase “future copyright” in s 197(1) is defined in s 10(1) to mean “copyright to come into existence at a future time or upon the happening of a future event”.

55    The primary judge rejected the appellants’ argument on two principal bases, each of which was sufficient. The first was that the 4 August 2010 email upon which the appellants relied did not on its terms purport to effect an assignment of copyright. The email, his Honour said, contained general assertions about the right to use a “brand” but said little about the ownership of copyright in an artistic work.

56    The appellants’ arguments in relation to this issue may be dismissed at the first hurdle.

57    We agree with the primary judge’s conclusion that the 4 August 2010 email cannot, in context, be construed to be an assignment of future copyright in the Kaden Boriss logos. The email correspondence did not concern future copyright. It concerned a name or a brand. The email, his Honour said, contained general assertions about the right to use a “brand” but said little about the ownership of copyright in an artistic work. That conclusion is plainly correct.

58    The 2010 correspondence, and particularly the email of 4 August 2010, came into existence at a time when the original four stakeholders were promoting the incorporation of an entity that, they agreed, would own a “name” or a “brand”. To the extent that the correspondence deals with the rights of the participants vis a vis each other, the language is legally ambiguous, referring interchangeably to concepts of ownership or lesser rights in a “brand” or “name”. The confusing statement by Mr Batra in his email that “your understanding is correct regarding exclusivity and ownership in Australia ...” begs the question as to which statement was the subject of his agreement. In the email to which he responded, Mr Chee (a person who left the collaboration before it commenced) proposed variously that the individuals have “ownership of the name”, but then said that the brand name will be “the property of the alliance entity” with the founder members (Mr Chee, Mr Lal and Mr Batra). Mr Batra also refers to his apparent agreement with “whatever was in the MoU read with Minutes”. The 30 July 2010 exchange of emails referred to the transfer of the “brand” to the holding company. The repeated references to “brand” most naturally refer to the common law trade mark. No mention is made of the proposed creation of any copyright work. The primary judge did not err in concluding that the 4 August 2010 email (whether considered in isolation or in the context of the 24 July 2010 minutes or any other contemporaneous record) was generally concerned with the concept of a “brand” but did not purport to effect a transfer of any copyright in an artistic work that was yet to come into existence.

59    Even if the 2010 correspondence spoke, in terms, of a future assignment of copyright, we would nonetheless reject the contention that Mr Lal was the sole owner by virtue of the combined effect of the 4 August 2010 email, the Confirmatory Deed and s 197 of the Copyright Act for two reasons. First, Mr Batra was not, on 4 August 2010, a person entitled under the Copyright Act to assign the future copyright in the Kaden Boriss logos and, secondly, the 4 August 2010 email was not signed by Pulse Creative, as s 197 required it to be on the facts of the instant case.

60    Section 197(1) of the Copyright Act requires that an agreement made in relation to future copyright be signed by or on behalf of the person who would apart from that section be the owner of the copyright upon its coming into existence. The appellants submit that s 197(1) applies to the “assignment” from Mr Batra to Mr Lal via the email in August 2010. They submit that as at that date, Mr Lal and Mr Batra were the relevant owners of the future copyright as a result of Pulse Creative entering into the Confirmatory Deed and conferring on them the retrospective title to the Kaden Boriss logos. They submit that the learned primary judge put a gloss on the language of s 197(1) by finding that the words “owner of copyright on its coming into existence” meant that such person must be the first owner of such copyright. Mr Lal and Mr Batra were the future owners, and upon the coming into existence of the copyright they became persons who “would apart from this section, be the owner of the copyright coming into existence” by virtue of the Confirmatory Deed, so it was submitted.

61    The appellants support this construction by reference to the definition of “prospective owner” in s 10(1) of the Copyright Act which provides in subs (b) that the term prospective owner in relation to future copyright that is the subject of an agreement under s 197(1), is the person in whom, by virtue of that subsection, the copyright will vest on its coming into existence. They also draw on a comparison with s 91 of the Copyright Designs and Patents Act 1988 (UK). The English provision is cast in the following terms:

Where by an agreement made in relation to future copyright, and signed by or on behalf of the prospective owner of the copyright, the prospective owner purports to assign the future copyright (wholly or partially) to another person, then if, on the copyright coming into existence, the assignee or another person claiming under him would be entitled as against all other persons to require the copyright to be vested in him, shall vest in the assignee or his successor in title by virtue of this subsection.

62    In Davies G, Caddick N, Harbottle G, Copinger and Skone James on Copyright (17th ed Sweet & Maxwell 2016) Vol 1 at [5-112] opine that a “prospective owner” includes a person who is prospectively entitled to copyright by virtue of such an agreement as is mentioned in the English provision ([5-112(b)]) and that it follows, accordingly, that an effective assignment may be made not only by the prospective first owner but also by the prospective assignee of the future copyright from him, and so on (at (i)).

63    The appellants submit that Mr Batra was a “prospective owner” of copyright in the Kaden Boriss logos because by virtue of the Confirmatory Deed, the copyright would vest in him (or a part of it, the other part vesting in Mr Lal). As the appellants submit in their reply, “In the present case, the emails from Mr Batra demonstrate his intention that upon the copyright in the Kaden Boriss Logos being assigned to him in respect of Australia, such copyright would vest in Mr Lal.” By this the appellants contend that Mr Batra’s email to Mr Lal of 4 August 2010 effected an assignment of his future interest in the copyright of the logos. In other words, even though he was not the owner of the copyright upon its coming into existence, he was entitled to assign it as a prospective owner of that copyright, taking title under the Confirmatory Deed and it was not necessary for Pulse Creative to sign the assignment.

64    These submissions first focus attention on whether an “agreement made in relation to a future copyright and signed by ... the person who would but for this section be the owner of the copyright on its coming into existence” limit the agreement to one entered into by the first owner (here, Pulse Creative) or a person who may by prior agreement be the owner by virtue of a chain of prior assignments of future copyright upon which s 197 may operate.

65    For present purposes we assume, without deciding, that s 197, on its proper construction, permits of a chain of assignments of future copyright upon which s 197 may operate prior to the copyright subject matter coming into existence as the appellants contend.

66    However, even if s 197 is so construed, the appellants’ case must fail on the facts for a further reason.

67    There is no dispute that the relevant copyright came into existence between August 2010 and February 2011. The primary judge found (and it is not challenged on appeal) that at that time, the owner of the copyright was Pulse Creative. Accordingly, at the time that the relevant copyright came into existence, Mr Batra and Mr Lal were not, for the purposes of s 197(1) the owners of that copyright because it was not until some six years later, on 12 January 2017, that the Confirmatory Deed was entered. Furthermore, the primary judge found, and it is also not challenged on appeal, that the Confirmatory Deed was a present assignment of the copyright in the Kaden Boriss logos. The fact that, by contractual fiction, the Confirmatory Deed had retrospective operation as an assignment of the chose in action from 29 September 2011 does not resolve the difficulty for the appellants that at the time that the copyright work came into existence they were not (whether by assignment of the future copyright or otherwise) the owners of the copyright in the work. Further, the Confirmatory Deed in any event supplies retrospective title only from 29 September 2011, well after the copyright came into existence. As the primary judge held, any future assignment of the copyright by the 4 August 2010 email would be ineffective because it was not executed by Pulse Creative, the original owner on any view of the facts.

68    Having regard to these conclusions, it is not necessary to consider the further point raised by the appellants concerning the operation of s 10 of the Electronic Transactions Act 1999 (Cth).

THE SECOND ISSUE – UNILATERAL REVOCATION

69    The respondents’ case at trial was that it was not open to Mr Lal to revoke the licence without the consent of the other co-owner of the copyright, Mr Batra. The primary judge dealt with that submission as follows:

141    I was not taken to any authority on this point. The law of real property does not provide useful analogues: see, for example, the discussion in State of New South Wales v Koumdjiev [2005] NSWCA 247; (2005) 63 NSWLR 353 at [31]–[46] which recognises that one co-owner of real property may grant a licence of that owner’s interest which may or may not be revocable by another co-owner, depending on whether the licence is or is not reasonable and incidental to the grantor’s right to possession and use of the property.

142    Ultimately, in light of the factual conclusions I have reached, and the other considerations I have discussed which militate against acceptance of the applicants’ case on infringement, it is not necessary for me to express a concluded view on this question. However, given the fact that one co-owner of copyright cannot act independently of another co-owner (or at least independently of that co-owner’s consent) in granting a licence to use the copyright work, the better view must be that, similarly, one co-owner cannot act independently to revoke a licence that each or all have consented to grant. If the position were otherwise, then a valuable benefit enuring for all co-owners might be lost at the whim of one to the detriment of all. Take the present case: I can comfortably conclude from the evidence that Mr Batra considered it advantageous that the respondents remain in the Kaden Boriss network, using the Kaden Boriss name and indicia, including the Kaden Boriss Logos, regardless of the applicants’ desire to remove themselves from the network because of disagreements between Mr Lal and Mr Batra. I can think of no reason in principle why, in those circumstances, the licence granted to the respondents could be revoked simply on Mr Lal’s say-so without Mr Batra’s consent and apparently contrary to his wishes at the time.

70    Earlier in his reasons, the primary judge said (at [130]):

Ordinarily co-owners of copyright hold as tenants in common, not joint tenants. One co-owner cannot do an act comprised in the copyright or license a third party to do such an act, without the consent of the other co-owner(s). If a co-owner were to proceed otherwise, that co-owner and the putative licensee(s) would infringe the copyright and an injunction would lie at the suit of the other co-owner(s) to restrain continued infringement: see Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd [2005] FCAFC 144; (2005) 146 FCR 183 at [20] and the cases there cited.

71    By [9] of the amended notice of appeal the appellants allege that the primary judge erred in:

… finding (at [142]), if he so did, that one co-owner cannot act independently to revoke a licence that each or all have consented to grant.

72    It is alleged that the primary judge “ought to have found” that one of two co-owners of copyright could revoke a licence that both co-owners had consented to grant: amended notice of appeal, [10].

Consideration

73    The appellants provided no authority in support of the proposition that Mr Lal could unilaterally revoke a licence that had been granted to the respondents by him and Mr Batra jointly.

74    As the primary judge said at [130] (and as appears to be acknowledged in the appellants’ written submissions in reply (at [17])), ordinarily, a co-owner cannot do an act comprised in the copyright without the consent of the other co-owner: Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd (2005) 146 FCR 183 at [20] (Lindgren J), at [93] (Finkelstein J) and at [114] (Edmonds J). See also Prior v Lansdowne Press Pty Ltd (1975) 29 FLR 59 at 68. That is consistent with the principle that multiple owners of the same copyright will usually be treated as tenants in common of the copyright and not as joint tenants: see generally The Laws of Australia (Thomson Reuters subscription service) at Vol 23.1 [23.1.6480].

75    The primary judge declined to express a concluded view as to whether a licence granted by both co-owners could be revoked by one of them without the consent of the other. It is unnecessary to decide the question in the context of this appeal. For reasons explained below, there is no appealable error affecting his Honour’s findings in respect of the nature and terms of the licence. The effect of those findings is that Mr Lal’s words or conduct on 3 and 9 January 2017 would have been ineffective to revoke the licence in accordance with its terms, even if Mr Lal was the sole owner of the copyright or even if he acted as a co-owner with Mr Batra’s consent.

THE THIRD ISSUE - NATURE AND TERMS OF THE LICENCE

76    As has been said, it was the appellants’ pleaded case that Mr Lal had revoked the licence on 24 October 2016 when Mr Lal was alleged to have said that the respondents could not use the Kaden Boriss name if they remained in the Kaden Boriss network. That case was not proven at trial.

77    An alternate case on revocation was advanced in the course of closing submissions at trial and it is now re-agitated on the appeal. The alternative case is that the licence was revoked on 3 January or 9 January 2017 or, in a further alternative not advanced at trial, on 11 January 2017. The case founded on revocation occurring on 3 January 2017 depends for its acceptance on the proposition that the respondents’ licence was revocable at will and without advance notice.

78    The primary judge considered the nature and terms of the respondents’ licence in the course of explaining why the pleaded case based on revocation occurring on 24 October 2016 would have failed in any event, even if Mr Lal’s evidence as to what he said on that day had been accepted.

79    The nature and terms of the licence were to be discerned from the email transmission of 25 April 2013, which his Honour found was the source of the licence which was granted with Mr Batra’s consent (at [129], [132]).

Contractual licence

80    The primary judge held that the respondents’ financial obligation to pay the referral fees referred to in the email was adequate to give the licence contractual effect, whether or not such a fee was incurred or paid in the events that transpired (at [133]). His Honour concluded that the contractual licence could not be revoked without just cause for so long as the respondents’ firm participated in the Kaden Boriss network. It is convenient to extract that part of the reasoning in full:

134    Thirdly, the licence was granted to the respondents to enable them to participate in the Kaden Boriss network. As the 25 April 2013 email makes clear, the respondents’ participation in the network obliged them to adopt and use the Kaden Boriss name, and to adopt and use stationery and marketing materials that were consistent with the materials that had been devised for the network as a whole. Mr Lal’s evidence was that, in January or February 2011, he and Mr Batra worked with Ms Fried from Pulse to develop strict brand guidelines that were to be applied to the Kaden Boriss website, email signatures, stationery and marketing materials. Undoubtedly, this included the Kaden Boriss Logos, which were (as the present case recognises) an important indicium of the network. They provided the stylistic representations of the Kaden Boriss name that were permitted to be used. It is to be recalled that the Kaden Boriss Logos were delivered to Mr Lal and Mr Batra, in final form, at this time (on 4 February 2011). Mr Lal said that it was important to him that the brand be used consistently by everyone in the network. He said that, on a number of occasions, he discussed the importance of consistent branding with the respondents.

135    The point of present significance is that the respondents’ participation in the network obliged them to use trade indicia that had been developed for, and approved for use in, the network rather than other indicia of their own design and creation.

136    The corollary of this obligation is that, for so long as they were participants in the network, the respondents were entitled to use that indicia, including the Kaden Boriss Logos, to signify their participation in the network, unless that right could be withdrawn for just cause. This is a case where a contractual term to that effect would be implied in fact. Such a term would be necessary for the reasonable or effective operation of the contract: Byrne v Australian Airlines Limited (1995) 185 CLR 410 at 422 and 442. It is absurd to think that, absent just cause, the licence that the respondents were granted could be revoked simply because they expressed their intention to remain in the network and not to leave it. Any attempt to revoke the respondents’ licence in breach of that term—as suggested here—would have been ineffective, not merely a breach of contract sounding only in damages (as the applicants argued). An injunction would lie at the suit of the respondents restraining the applicants from taking steps to act on that purported revocation.

(original emphasis)

81    In relation to the 20% referral fee, the appellants submitted that the promise to pay was not conditional upon the use of the logos but was to be regarded as consideration to be paid in exchange for receiving a referred client.

82    That submission ignores both the content and the context of the 25 April 2013 email. The context is the inclusion of the respondents’ firm in a business network having the mandatory feature of common branding and facilitating the referral of clients between participating firms for the mutual benefit of all of them. There is an artificiality in attributing the promise to pay the referral fee to one benefit of the network such as referred clients, but not to the other features, such as mandated common branding signifying participation in the network to consumers of the firms’ legal services.

83    As to the terms of the contractual licence, the appellants submitted that the primary judge erred in identifying an implied contractual term to the effect that the respondents were entitled to use the logos to signify their participation in the network for so long as they participated in it.

84    The inference that the licence was intended to be conferred for the purpose of signifying participation clearly arose on the terms of the 25 April 2013 email. It can hardly be considered controversial in light of the evidence as a whole. The purpose for which the licence was granted was a finding of fact that was clearly open to the primary judge to make. That purpose was relevant to the identification of the terms on which the licence may lawfully be revoked.

85    In oral submissions the appellants contended that there was no basis for the factual implication of a contractual term of the kind implied at [136] of the reasons of the primary judge. It was said that the implied term was not a term for which either party had contended for at trial. It was also said that the respondents had contended only for a term to the effect that the licence was terminable on reasonable notice. The appellants submitted that they were deprived of an opportunity to adduce evidence of facts that might bear on the question of whether the term of revocation as identified by the primary judge ought to have been implied. The appellants did not identify what that evidence might have been.

86    There are three difficulties with the appellants’ submissions insofar as they complain of a denial of natural justice on the contractual case. The first is that on their own case the legal relationship between the parties was defined by the email of 25 April 2013. The question of whether the licence was contractual or gratuitous was clearly a live one. In the event that the primary judge found that the licence was contractual, it would have been necessary for the conditions of revocation to be identified in accordance with ordinary contractual principles.

87    Secondly, the appellants’ own case at trial drifted so far from their pleaded case that it cannot be said the respondents were to be strictly confined to their pleaded defence. In opening submissions, Counsel for the respondents made it plain that they would contend for a contractual term of the very kind ultimately identified by the primary judge in any event. Counsel said:

We also say not only that there is an implied term as to reasonable notice, hence it was repudiatory conduct to give a notice which didn’t give any period of time at all. We also say that because of the nature of the network and the agreements reached about that, it was necessarily implied into that arrangement that the licence to use the name Kaden Boriss and the licence to use the associated logos, in other words, the copyrighted works, you had that licence as long as you were a member of the alliance. It would be a completely uncommercial relationship otherwise.

88    The respondents did not depart from the latter aspect of that argument in their closing submissions. In the course of general submissions about the termination of commercial arrangements, Counsel for the respondents reiterated that the “permission to use the name and logos was clearly supported by a contract” and “was completely dependent on the respondent firm joining and remaining part of the Kaden Boriss Network”. The most that could be said is that the respondents disavowed any suggestion that the licence was irrevocable. There is no suggestion by the respondents on appeal that the licence was irrevocable and the primary judge made no such finding.

89    Thirdly, to the extent that the dispute at trial was confined to an analysis of whether reasonable notice (as opposed to no notice) was required, the question of what would be reasonable notice was clearly a question that was informed by the content of the 25 April 2013 email and the purpose for which the licence was granted. The appellants accepted that the legal relations between the parties was defined by that email. The term identified by the primary judge fairly arose from the email itself.

90    In oral submissions it was suggested that the appellants were deprived of the opportunity to adduce evidence to show that there was just cause in any event to terminate a licence in accordance with the contractual term ultimately identified by the primary judge. Just what that evidence might have been has not been identified. The proposition that the respondents had said or done something to justify termination of the contractual licence for just cause was not pleaded, is not in accordance with the contemporaneous record and does not find expression in the grounds of appeal before this Court in any event.

91    Even if the term identified by the primary judge went beyond that argued at trial by either party, no miscarriage of justice has been shown.

Gratuitous licence

92    The primary judge made the alternative finding that even if the licence was a gratuitous or bare licence, it would not necessarily follow that it was revocable at will (at [137]); Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46 at 49; Trumpet Software Pty Ltd v Ozemail Pty Ltd (1996) 34 IPR 481 at 498. The question of whether such a licence is revocable at will depended, his Honour said, on the circumstances in which, and the purposes for which, the licence was granted. There is no error in these statements of principle.

93    The primary judge went on to say:

138    In the present case, it would have been destructive of the purpose for which the respondents’ licence to use the Kaden Boriss Logos was granted, and unconscionable to permit the licensors to revoke the licence peremptorily, in the circumstances that existed as at 24 October 2016. The respondents entered into the Kaden Boriss network not only on the assumption that they were required to adhere to the obligations expressed in the email of 25 April 2013 but also on the assumption that they would have the right to use the Kaden Boriss name, including in the stylised form of the Kaden Boriss Logos. Their change of name from MVM Legal to Kaden Boriss Brisbane was not only central to their participation in the Kaden Boriss network but also a matter that required careful handling by the respondents at the time of the change. Indeed, they delayed the commencement of their participation in the network because an earlier change in name would have been disruptive to the conduct of their practice, particularly at a time when they were seeking to tender for work. The applicants knew this. Further, they accepted that the respondent’s change to the Kaden Boriss name would be disruptive for them. As the email of 25 April 2013 recognised, the respondents were allowed a period of transition in which they could continue to use MVM Legal as part the name and style of their professional practice.

139    Thus, if the licence to use the Kaden Boriss Logos was a gratuitous or bare licence, it was nevertheless a promise by Mr Lal, with Mr Batra’s consent, that the respondents could use the logos in and for the purpose of their participation in the network. It was also a promise, on which the respondents undoubtedly acted with Mr Lal’s and Mr Batra’s knowledge, that while that purpose was being fulfilled, their permission to use the Kaden Boriss Logos would not be withdrawn, at least not without just cause being established or, perhaps, reasonable notice being given: Waltons Stores (Interstate) Limited v Maher (1988) 164 CLR 387 at 406 per Mason CJ and Wilson J. Had Mr Lal made the peremptory statement attributed to him at the meeting on 24 October 2016, the respondents would have been entitled to restrain the licensors from departing from the assumed state of affairs on which they (the respondents) had acted. Put another way, the licensors would have been estopped from denying the continuing right of the respondents to use the logos as members of the Kaden Boriss network.

94    By [13] of the amended notice of appeal, the appellants contend that the question of whether the circumstances would give rise to an estoppel “involves findings of fact which were not available to the primary judge because it was not a matter of factual enquiry in the primary proceedings, nor was it a case which was advanced by the Respondents in their defence, abandoned cross-claim, written submissions or oral submissions”.

95    As the primary judge said, the appellants conducted their case on the assumption that a gratuitous licence was revocable at will. That assumption was wrong in principle. If the licence was not contractual, then the conditions in which the gratuitous licence may be revoked was always a fact specific matter to be determined at trial. The respondents maintained a case that effective revocation of the licence (whether contractual or gratuitous) required the provision of reasonable notice. What was “reasonable” depended upon all of the circumstances of the case, including the factual circumstances referred to at [138] and [139] of his Honour’s reasons. If there be procedural unfairness, it appears to be limited to the question of whether the facts, as found, would give rise to a promissory estoppel.

96    It is unnecessary to determine whether there was a breach of procedural fairness of the kind complained of. There is no error in the principal conclusion that the licence was contractual and not gratuitous. It follows that no occasion arose of the application of the principles in Waltons Stores (Interstate) Ltd v Maher (1988) 164 CLR 387 at 406 (Mason CJ and Wilson J). Accordingly, if there be error in the obiter remarks of the primary judge on the assumption that the licence was gratuitous, the error would not be material to the outcome of the appeal.

THE FOURTH ISSUE - NO EFFECTIVE REVOCATION

97    The primary judge concluded that there was no evidence that Mr Batra had consented to Mr Lal revoking the respondents’ licence. “In fact,” he said, “the evidence is to the contrary. Mr Batra purported to licence the respondents’ continuing use of the logos”.

98    By [11] of the amended notice of appeal it is alleged that the primary judge erred in “failing to consider the evidence before the Court below that Mr Batra consented to the revocation by the Appellants by his email dated 11 January 2017 and/or by the earlier agreement evidenced by the email of 4 August 2010 and the minutes of the meeting of 24 July 2010.” The “earlier agreement” is the same agreement upon which the appellants relied in support of their contention that Mr Lal was the sole owner of the copyright in Australia. As the primary judge said, the legal effect of the communications in mid-2010 did not deal with the subject matter of copyright in the logos. As observed earlier in these reasons, the communications were legally ambiguous. On any reasonable view, they do not evidence consent by Mr Batra for Mr Lal to unilaterally revoke a licence that would, some two years later, be jointly granted to the respondents. Nor did Mr Batra, by his exasperated communication of 11 January 2017 purport to revoke the licence. The email makes no reference to the acts of revocation upon which the appellants now rely. It is not apparent from that email that Mr Batra was aware of those acts. The primary judge did not err in concluding that there was no evidence of Mr Batra’s consent.

99    The appellants’ failure to show that Mr Lal’s purported acts of revocation of 3 or 9 January 2017 had the consent of Mr Batra rendered it unnecessary for the primary judge to decide whether those acts might otherwise have been effective to revoke the licence.

100    Plainly, the acts of revocation were not in accordance with the contractual terms of the licence as the primary judge had correctly identified them to be. As there is no error affecting the nature and terms of the licence, it is unnecessary for this Court to determine whether the acts of revocation might otherwise have been effective had the terms of the licence been different. In the interests of finality, it is nonetheless appropriate in the present case to explain why the appellants’ case could not otherwise succeed.

101    Even if the licence was able to be revoked upon the giving of reasonable notice, on the evidence no such notice was given. The purported revocation said to have been effected by the service of the NSW SOC was made with no notice at all.

102    The appellants’ letter of 9 January 2011 did not, on its terms, revoke the licence upon reasonable notice. Rather, the letter:

(1)    asserts (wrongly) that Pulse Creative had assigned the copyright to the appellants on 4 February 2011;

(2)    asserts that the appellants provided the respondents “with a limited licence to use the Kaden Boriss logos from October 2013 to October 2016”, so relying on an earlier purported act of revocation that the trial judge found did not occur;

(3)    states “If there has been any doubt please take this letter as formal written notice that our clients no longer licences [sic] or authorise use of the Kaden Boriss logos…”;

(4)    alleges, without qualification, that the respondents “have infringed” the appellants’ copyright in the logos and that any continued use “amounts to flagrant infringement entitling our client to additional damages”;

(5)    demands that the respondents give undertakings within a specified time (three days) that they would cease reproducing, publishing or communicating the Kaden Boriss logos or “otherwise infringe” the copyright in the logos; and

(6)    states that if the undertakings are not given in the specified time, steps would be taken to file proceedings in this Court for copyright infringement.

103    The letter alleges present and ongoing infringement by the respondents by reference to an ultimately unfounded assertion that there was a “limited licence” granted until October 2016. To the extent that the letter is otherwise relied upon as constituting notice of revocation in and of itself, the revocation was not effected with reasonable notice. To the contrary, the respondents were accused of present and ongoing infringement and given three days to cease their use of the logos under the threat of infringement proceedings in this Court. Ongoing use of the logos was said to justify a claim for “additional” damages.

104    The primary judge did not err in concluding that the purported acts of revocation of 3 January and 9 January 2017 were ineffective.

105    Before concluding on this topic it should be recalled that as at 9 January 2017, the Confirmatory Deed was not in existence. That raises issues as to the nature, source and existence of the appellants’ title to terminate the licence on that date. Whilst the primary judge held that the Confirmatory Deed operated retrospectively to feed the necessary title to grant the licence in 2013 it does not necessarily follow that in the circumstances of this case the respondents may be held to have infringed the appellants’ copyright at any time in the period before the Confirmatory Deed was made in fact. It is difficult to imagine how persons in the respondents’ position could be liable for infringement of the appellants’ copyright by reference to an act of breach following a purported revocation made at a time when the appellants were not the owners of the copyright at all. On the facts found at trial, the only person capable of asserting infringement of copyright subsisting in the logos on 9 January 2017 was Pulse Creative.

106    The appellants’ case on this aspect of the appeal assumes that their absence of title to assert infringement and to claim damages from 9 January 2017 is cured by the retrospective effect of an assignment agreement made with the owner of the copyright some three days later. The finding of the primary judge that the Confirmatory Deed operated with retrospective effect was not challenged by the respondents on this appeal and so it has not been necessary for this Court to determine whether the finding was correct.

107    As none of the grounds are established, the appeal should be dismissed with costs.

Associate:

Dated:    13 December 2019