FEDERAL COURT OF AUSTRALIA
AUSTRALIAN OLYMPIC COMMITTEE INC v THE BIG FIGHTS INC
[1999] FCA 1042
NG 41 of 1997
NG 481 of 1998
SUMMARY
Introduction
In accordance with the practice of the Federal Court in certain cases of public interest, I have prepared a brief summary to accompany the reasons for judgment that are being delivered today. But the only authoritative pronouncement of my reasons is that contained in the full reasons for judgment. This summary is necessarily incomplete.
Summary of Judgment
Between 22 November and 8 December 1956, the sixteenth modern Olympic Games were held in Melbourne. The main issue in this case is the present ownership of the copyright in certain films of those Games. There is also a dispute over the present ownership of certain copies of those films which are being held in safe storage pending this decision. In both respects, I decide that the Australian Olympic Committee, or the AOC, succeeds.
The case has involved facts extending over some forty years and many complex issues – too many to relate here. What follows is a summary of some of the issues and my conclusions on them.
In 1956, the Australian Olympic Federation, or AOF, was the National Olympic Committee for Australia, recognised by the International Olympic Committee, or IOC. Organisation of the Games was entrusted to a company formed for the purpose called the “Organising Committee for the Games of the XVIth Olympiad Melbourne 1956”, known as “OCOG”. OCOG established an “Official Film Unit” and appointed Reginald Peter Whitchurch, known as Peter Whitchurch, as its director.
Cameramen in the Official Film Unit shot a large quantity of footage during the Games. The rules of the IOC required that certain edited films of the Games be produced. OCOG engaged Peter Whitchurch to produce those edited films from the unedited ones.
This case has concerned the unedited films shot by the Official Film Unit, the edited films subsequently produced by Peter Whitchurch, and certain newsreel type films which OCOG permitted two private companies to produce, using their own cameramen.
In 1960, OCOG granted certain rights in respect of the edited films to Peter Whitchurch in return for payment by him of £100. This was done, not by way of a professionally prepared legal document, but by an exchange of letters between OCOG and Peter Whitchurch. The letters have given rise to this question in the case: Did OCOG assign the copyright in the edited films to Peter Whitchurch or did it give him only a non-exclusive right to reprint and sell copies of them?
The main protagonists in these proceedings are the AOC on the one hand, and The Big Fights Incorporated on the other. The AOC is the successor to the AOF. The business of The Big Fights was the building up and commercial exploitation of extensive libraries of films of sporting events, in particular, boxing films and films of Olympic Games. Part of its business involved the licensing of others, such as television broadcasters, to use its films.
The AOC is supported in the proceedings by Mr John Whitchurch, the son of the late Peter Whitchurch. The Big Fights is supported by Mrs Lynette Benson and Mrs Diane Talbot, daughters of the late Peter Whitchurch and sisters of John. The Big Fights is also supported by ESPN Enterprises Inc which purchased The Big Fights’ film libraries, including its Olympic Library, after the proceedings began.
The AOC claims that OCOG originally owned the copyright in all the films as well as the copies of them that are in storage, and that in one of two possible ways, the AOC is now the owner. One way is this. Following the dissolution of OCOG on 30 April 1974, OCOG’s remaining assets passed under companies legislation, eventually to the Australian Securities Commission, or the ASC. On 20 October 1997 the ASC executed a deed assigning to the AOC all the interest in the films and the copyright in them which OCOG had upon its dissolution in 1974.
The Big Fights, on the other hand, claims that in one of various possible ways it is now the owner of the copyright in the edited films and of the copies of them in storage. It claims either that Peter Whitchurch was the original owner of the edited films and of the copyright in them once he completed his editing work, or that OCOG assigned both to him in 1960. Alternatively, The Big Fights claims that the AOC is now prevented from asserting that it owns the films and the copyright, because Peter Whitchurch, a company established by him and his wife, and his three children, dealt with the films for many years as though they owned the copyright in them, without protest by the AOF or the AOC. It is true that it was not until 1996, some forty years after the Games, that the AOC became active in asserting its rights. Mr Coates, the President of the AOC, gave evidence in relation to the delay.
The Big Fights claims that the films and the copyright were sold to it by Peter Whitchurch’s company. At the time, Mrs Benson and Mrs Talbot constituted a majority of the board of directors, and Mr John Whitchurch, a minority. In substance, the sale was effected by the majority.
I will now summarise my conclusions:
· OCOG was the owner of the copyright in the films as well as the copies of those films now held in storage;
· OCOG did not assign to Peter Whitchurch the copyright in the edited films, nor did it sell to him the copies of the edited films now held in storage;
· in 1960, OCOG granted to Peter Whitchurch, for the duration of the copyright, a non-exclusive right to reprint and sell copies of the edited films, and, for that purpose, the right to possess the copies of the edited films now held in storage;
· OCOG’s copyright in the films and the copies of the films now held in storage are transferred to the AOC pursuant to a deed between the AOC and the ASC dated 20 October 1997;
· the AOC therefore now owns the copyright in the films as well as the copies held in storage;
· the AOC is not prevented from asserting its copyright or its ownership of the copies;
· the AOC is not, however, entitled to terminate the 1960 contract between OCOG and Peter Whitchurch;
· the rights of reprinting and selling the edited films granted by OCOG to Peter Whitchurch passed through his estate and that of his wife to their three children in equal shares;
· Mr John Whitchurch has transferred his one third interest in those rights to the AOC;
· Mr Whitchurch and Mrs Benson, who were the executors of the will of Mrs Whitchurch, now hold those rights on trust for Mrs Benson, Mrs Talbot and the AOC in three equal shares;
· the AOC has not at this stage shown that any of the respondents have infringed its copyright or are threatening to do so.
I will now proceed to make the formal orders of the Court.
LINDGREN J
3 AUGUST 1999
FEDERAL COURT OF AUSTRALIA
Australian Olympic Committee Inc v The Big Fights Inc [1999] FCA 1042
COPYRIGHT – cinematograph films – whether films of sporting events made before enactment of Copyright Act 1968 (Cth) original dramatic works or only artistic works consisting of individual photographs constituting films – ownership of copyright – whether copyright in edited films owned by person who owned material on which photographs comprising films taken or person who edited films – whether copyright assigned to producer of edited films or whether producer simply licensed to reprint and sell copies of edited films – whether producer’s estate has repudiated agreement.
ESTOPPEL – whether owner of copyright estopped from asserting copyright by reason of representations and silence in face of competing assertion of ownership – whether representations or silence relied upon – whether detriment suffered in reliance upon representations or silence – whether successor in title entitled to rely on estoppel – whether delay by owner of films amounted to laches or abandonment – whether proceedings for delivery up of films barred by statute of limitations.
ADMINISTRATION OF DECEASED ESTATES – whether estate fully administered – whether one co-trustee has power to bind other co-trustees and those beneficially entitled.
Copyright Act 1968 (Cth) ss 31, 35, 204, 207, 208, 213, 221, 222
Copyright Act 1912 (Cth) s 8
Copyright Act 1911 (UK) ss 1(2), 35(1)
Companies Act 1961 (Vic) ss 264, 308, 310
Companies (Application of Laws) Act 1981 (Vic) s 23
Companies (Victoria) Code ss 460 – 464
Australian Securities Commission Act 1989 (Cth)ss 253 – 257
Limitation Act 1969 (NSW) s 65
Berne Convention for Protection of Literary and Other Artistic Works art 14(2)
Nordisk Films Co Ltd v Onda [1917-1923] MCC 337, referred to
Canadian Admiral Corporation Ltd v Rediffusion Inc (1954) 20 CPR 75, considered
Empirnall Holdings Pty Ltd v Machon Paull Partners Pty Ltd (1988) 14 NSWLR 523, applied
Helstan Securities Ltd v Hertfordshire County Council [1978] 3 All ER 262, applied
United Dominions Trust (Commercial) Ltd v Parkway Motors Ltd [1955] 1 WLR 719, referred to
Linden Gardens Trust Ltd v Lenesta Sludge Disposals Ltd [1994] 1 AC 85, referred to
Re Turner Corp Ltd (in liq) (1995) 17 ACSR 761, referred to
Don King Productions Inc v Warren [1998] 2 All ER 608, referred to
Westgold Resources NL v St George Bank Ltd (1998) 29 ACSR 396, referred to
Liverpool and District Hospital for Diseases of the Heart v Attorney-General [1981] Ch 193, considered
Waltons Stores (Interstate) Ltd v Maher (1988) 164 CLR 387, applied
Commonwealth v Verwayen (1990) 170 CLR 394, applied
Thompson v Palmer (1933) 49 CLR 507, applied
Grundt v Great Boulder Proprietary Gold Mines Ltd (1937) 59 CLR 641, applied
Hamilton v Geraghty (1901) 1 SR (NSW) (Eq) 81, applied
Willmott v Barber (1880) 15 Ch D 96, considered
Svenson v Payne (1945) 71 CLR 531, followed
Re Vandervell’s Trusts; White v Vandervell Trustees Ltd [1974] 1 All ER 47, referred to
Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd [1982] 1 QB 133, considered
Horn v Cole (1871) 51 NH 287; 12 Am Rep 111, considered
Vine Products Ltd v Mackenzie & Co Ltd [1969] RPC 1, considered
Australian Provincial Assurance Co Ltd v Coroneo (1938) 38 SR (NSW) 700, referred to
Johnstone & Wilmot Pty Ltd v Kaine (1928) 23 Tas LR 43, considered
Moorhouse v Angus and Robertson (No 1) Pty Ltd [1981] 1 NSWLR 700, applied
Cook v Saroukas (1989) 97 FLR 33, applied
Orr v Ford (1989) 167 CLR 316, applied
Masterton Homes Pty Ltd v LED Builders Pty Ltd (1996) 33 IPR 417, referred to
Union Bank of Australia v Harrison (1910) 11 CLR 492, applied
Luke v South Kensington Hotel Co (1879) 11 Ch D 121, applied
Sky v Body (1970) 92 WN(NSW) 934, applied
In the estate of Dunn, deceased [1963] VR 165, applied
Re Ponder [1921] 2 Ch 59, considered
Stokes v Churchill (1994) NSW ConvR ¶55-694, considered
AUSTRALIAN OLYMPIC COMMITTEE INC v THE BIG FIGHTS INC
NG 49 of 1997
NG 481 of 1998
LINDGREN J
3 AUGUST 1999
SYDNEY
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IN THE FEDERAL COURT OF AUSTRALIA |
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NG 49 OF 1997 NG 481 OF 1998 |
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BETWEEN: |
AUSTRALIAN OLYMPIC COMMITTEE INC First Applicant
JOHN PETER ELLIOTT WHITCHURCH Second Applicant
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AND: |
THE BIG FIGHTS INC First Respondent
PETER WHITCHURCH PRODUCTIONS PTY LTD ACN 000 213 258 Second Respondent
BECK HOLDINGS PTY LTD ACN 000 166 594 Third Respondent
FILMWORLD PTY LTD ACN 008 565 222 Fourth Respondent
LYNETTE JUNE BENSON Fifth Respondent
DIANE YVONNE TALBOT Sixth Respondent
AUSTRALIAN SECURITIES COMMISSION Seventh Respondent
ESPN ENTERPRISES INC Eighth Respondent
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DATE OF ORDER: |
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WHERE MADE: |
IN EACH PROCEEDING
1. As at the date of the dissolution of The Organising Committee for the XVIth Olympiad Melbourne 1956 (“OCOG”) on 30 April 1974, copyright in the films described in the First Schedule below (“the Films”) and the general property in the copies of the Films now held by Comcopy Pty Ltd were vested in OCOG.
2. The deed expressed to be made between the applicants on or about 20 October 1997 is void and of no effect.
3. The second applicant and the fifth respondent hold, as trustees for the first applicant and the fifth and sixth respondents in three equal undivided shares, the rights granted on or about 23 November 1960 by OCOG to Peter Whitchurch in respect of the edited films described in the Second Schedule below.
4. The first applicant is the owner of copyright in the photographs of which the Films consist.
5. The first applicant is the owner of the copies of the Films currently held by Comcopy Pty Ltd.
THE COURT DIRECTS THAT:
1. The proceedings be stood over to 9.30am on 11 August 1999 for the making of directions and orders as may be appropriate.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
FIRST SCHEDULE
SECOND SCHEDULE
The films numbered 1 to 90 (inclusive), 92 to 120 (inclusive) and 122 to 176 (inclusive) in the First Schedule.
AUSTRALIAN OLYMPIC COMMITTEE INC v THE BIG FIGHTS INC....................................................................... 2
INTRODUCTION..................................................................................................................................................................... 2
THE FIRST OWNER OF THE COPYRIGHT IN THE FILMS....................................................................................... 10
Subsistence and nature of copyright in respect of cinematograph films........................ 10
Who owned the copyright in the photographs comprised in the Unedited Films and the Edited Films? 167
Who owned the copyright in the photographs comprised in the Newsreels and the Sports TV Films? 25
THE AGREEMENT OF 23 NOVEMBER 1960................................................................................................................. 28
Events from the end of the Games on 8 December 1956 to the dealings between OCOG and Peter Whitchurch in 1960................................................................................................................................................................................. 28
OCOG’s transaction with Peter Whitchurch......................................................................................... 34
THE PASSING OF COPYRIGHT FROM OCOG TO THE AOC.................................................................................. 50
ESTOPPEL............................................................................................................................................................................. 56
Factual background............................................................................................................................................ 56
The case of estoppel as pleaded................................................................................................................. 1012
The first pleaded estoppel case.................................................................................................................. 1023
The second pleaded estoppel case............................................................................................................... 104
1. Did the Whitchurch interests make or maintain the assumption in question?................................ 1067
2. The AOC’s role in relation to the making or maintenance of the relevant assumption by the Whitchurch interests 10910
3. Did the AOC know that the Whitchurch interests would act or refrain from acting in reliance on the assumption or intend them to do so?......................................................................................................................................................... 1145
4. The Whitchurch interests’ reliance upon the assumption; and........................................................ 11920
5. The suffering of detriment by reason of reliance upon the assumption........................................... 11920
6. In all the circumstances, would it be unconscientious for the AOC to depart from the
assumption?............................................................................................................................................................ 1212
the limitation ACT 1969 (NSW), abandonment AND LACHES........................................................... 1289
Limitation Act 1969 (NSW)................................................................................................................................ 12930
Abandonment......................................................................................................................................................... 1312
Laches.......................................................................................................................................................................... 1334
THE CROSS CLAIM BY BENSON AND TALBOT.................................................................................................. 1367
Was John Whitchurch entitled as surviving executor of the will of Peter Whitchurch to enter into the deed of assignment to the AOC dated 20 October 1997?................................................................ 1389
Was John Whitchurch entitled to enter into the deed of assignment to the AOC dated 20 October 1997 as a co-executor of the will of Elsie Whitchurch?............................................................................... 140
REPUDIATION OF THE 23 NOVEMBER 1960 AGREEMENT............................................................................... 1445
INFRINGEMENT OF COPYRIGHT BY TBF, ESPN, BENSON AND TALBOT................................................... 1478
CONCLUSION.................................................................................................................................................................. 1478
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IN THE FEDERAL COURT OF AUSTRALIA |
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NG 49 OF 1997 NG 481 of 1998 |
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JUDGE: |
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DATE: |
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PLACE: |
REASONS FOR JUDGMENT
INTRODUCTION
1 In the year 776 BC a cook called Koroibos (or Coroebus) from the city of Elis in Greece won a foot race 192 metres long which was held in the city of Olympia as part of a festival in honour of Zeus, the father of the Greek gods and goddesses. He is the first known champion of a festival that was held every four years afterwards and became known as the “Olympic Games”. Over the centuries, events were added and competitors were attracted from further afield. There were many famous competitors such as Milo of Kroton who won the wrestling competition five times between 532 and 516 BC and Leonidas of Rhodes who won three foot races in each of four Games between 164 and 152 BC. The ancient Olympic Games were also host to scandal and political controversy. In the second century BC, following the conquest of Greece by the Roman Empire, the Games lost their religious significance and contestants became interested only in winning money. The Olympic Games of the ancient world were ended in 393 AD by the Roman Emperor Theodosius I because of a decline in quality.
2 National Olympic Games were held in Greece on four occasions between 1859 and 1889. Then, in 1894, Baron Pierre de Coubertin proposed resurrecting the quadrennial festival and involving athletes from around the world. His suggestion was well received and the first modern Olympic Games were held in Athens in 1896. Since then, the Games have been held every four years except in 1918, 1940 and 1944, although, unlike their ancient counterparts, they are not held in the same city each time. Since 1924, separate Winter Olympic Games have also been held.
3 The present case concerns a contest over claims to ownership in respect of certain films of the Olympic Games held in Melbourne in 1956 (after this, “the 1956 Games” or simply “the Games”). There are, in substance, two claimants. One is the first applicant (“the AOC”) which is supported by the second applicant (“John Whitchurch”), the son of the late Reginald Peter Whitchurch (“Peter Whitchurch” – as he was known and will be called). Peter Whitchurch was the Director of the Official Film Unit of The Organising Committee for the XVIth Olympiad Melbourne 1956 (which was referred to by the parties and to which I will refer as “OCOG”) which was responsible for the filming of the Games. The opposing claimant is the first respondent (“TBF”), a corporation incorporated in the United States of America. TBF is supported by the second respondent (“PWP”), an Australian company which was originally under the control of Peter Whitchurch, and by the fifth and sixth respondents (respectively “Benson” and “Talbot”) who are the daughters of Peter Whitchurch, sisters of John Whitchurch and a majority of the directors of PWP. In fact, by the time the present proceedings were heard, TBF had purported to assign its interest in the films to the eighth respondent (“ESPN”) which also supports TBF. The third respondent (“Beck”) also at one stage asserted ownership of the property in question but apparently no longer does so.
4 Resolution of the dispute has called for an investigation of facts spanning some forty years. Three features of the case deserve to be noted at once. First, in the early years following the Games, OCOG dealt with the matters of ownership of the films in question and of the copyright in them and of the granting of rights in respect of them to Peter Whitchurch, in what can only be described as a relatively informal and amateurish way. There was evidence before me that “amateurishness” was characteristic of sports administration at the time. Second, neither the AOC nor its predecessor body did anything to assert any claim in respect of the films until after, and as a response to, the commencement of a proceeding in 1996 by TBF against the fourth respondent Filmworld Pty Ltd (“Filmworld”). By that proceeding TBF asserted that it was entitled to possession of the films, which were at that time in the possession of Filmworld as bailee. Third, unfortunately the children of the late Peter Whitchurch and of his widow the late Elsie Mavis Whitchurch (“Elsie Whitchurch”) are divided over the present dispute. As I noted above, John Whitchurch supports the AOC while Benson and Talbot support TBF. Accordingly, the proceeding has involved the unseemly spectacle of a funding of John Whitchurch’s stance in a family dispute by the AOC and a funding of Benson’s and Talbot’s stance in that dispute by TBF.
5 The modern Olympic Games are conducted under the auspices of the International Olympic Committee (“the IOC”). The IOC is based in Lausanne, Switzerland. It has governed the modern Olympic movement since its formation in 1894 and has directed and controlled the summer Olympic Games since 1896 and the winter Olympic Games since 1924. The IOC recognises “National Olympic Committees”. When the IOC decides that the Olympic Games are to be held in a particular city, it entrusts the organisation of them to the National Olympic Committee of the country in which that city is located.
6 In 1914, the “Olympic Federation of Australia and New Zealand”, an unincorporated association, was constituted as the National Olympic Committee for Australia and New Zealand. In 1920 the Australian and New Zealand contingents separated, the Federation was dissolved, and a committee called the “Australian Olympic Council” took its place in respect of Australia. That body changed its name to the Australian Olympic Federation (“the AOF”) in 1923. The AOF was the National Olympic Committee of Australia recognised by the IOC from 1923 until 24 April 1985 – a period of sixty two years. That period embraced the period 1956-1960 in which the Games were held and in which certain dealings between OCOG and Peter Whitchurch in 1960, which are the genesis of the present proceeding, took place.
7 The AOF was a non-profit unincorporated association. On 24 April 1985, it became incorporated under the Associations Incorporation Act 1981 (Vic) under the name Australian Olympic Federation Inc (“the AOF Inc”) and replaced the AOF as the National Olympic Committee for Australia. The AOF Inc later resolved to change its name to its present name, “Australian Olympic Committee Inc”. Apparently the resolution for the change of name was passed on 25 June 1990 but it was not registered until 17 February 1994. Accordingly, the incorporated entity that is the AOC has been the National Olympic Committee of Australia since 24 April 1985, although it has been incorporated under its present name only since 17 February 1994. Although I will refer to “the AOF”, “the AOF Inc” and “the AOC” it must be remembered that the last two references are to the same legal entity. Accordingly, it will be correct to refer to the AOF as the predecessor (unincorporated body) of the AOC (and also of the AOF Inc), but incorrect to refer to the AOF Inc as the predecessor of the AOC.
8 At its 43rd Session, in April 1949, the IOC awarded the right to host the 1956 Games to the City of Melbourne. It was therefore the responsibility of the AOF to organise the Games. The AOF established as the organising committee for the Games, OCOG, which was incorporated as a company limited by guarantee under the Companies Act 1938 (Vic) on 17 September 1951.
9 Rule 49 of the Rules and Regulations of the IOC (“IOC Rule 49”) provided as follows:
“The Organizing Committee [OCOG in this case] must make the necessary arrangements for the production of a complete moving picture of the Games including shots of at least the final of each sport without interfering with the conduct of the events. It shall have the exclusive commercial rights to this film until one year after the close of the Games. At that time [one year after the Games] a copy of this complete record must be given to the International Olympic Committee for its museum without charge. National Olympic Committees and International Federations are allowed to purchase copies at a reasonable price. Immediately after the Games, a thirty minute 16 mm. film covering the highlights of the Games must be provided [by the Organising Committee] at cost for National Olympic Committees and International Federations, for their own non-commercial use only.
International Federations are permitted to take 16 mm. technical films of the events in their sports for non-commercial use only. News reel coverage available at a reasonable cost must be arranged by the Organising Committee.” (emphasis supplied)
10 Accordingly, OCOG was required by IOC Rule 49 to produce a “record” film (including at least shots of the final of each sport) and a “highlights” film. IOC Rule 49 said little about commercial exploitation. It provided that OCOG was to have the right, to the exclusion of all others, to exploit the record film commercially for one year after the Games but otherwise its terms were silent on the subject. The intention seems to have been that after the year following the Games OCOG would no longer have a right of commercial exploitation to the exclusion of all others, or, perhaps, even at all.
11 On 28 March 1956, OCOG placed advertisements in the Sydney Morning Herald and The Age newspapers seeking tenders for the filming of the Games in the following terms:
“Olympic Games Organising Committee
Filming of Games
The Organising Committee recently decided to throw the film and television rights to the Olympic Games open to World Wide tender. That invitation is still open to all organisations likely to be interested, but tenders should be submitted by April 21 next.
At the same time the Organising Committee is considering the more likely alternative of accepting a quotation from an organisation whose facilities are considering competent to handle the job. Under this arrangement the Committee would itself market the film footage.
Invitations to Quote
Quotations are invited, on or before April 21, 1956, for the production of a black and white film in either 35mm or 16mm of the finals of the Olympic games. This covers the filming of day and night events, processing, assembling and editing as required, supply and delivery to the Committee of the master negative and one print. Additional fine grain and standard prints will be needed to a strict time-table for use in Australia and for air despatch overseas, and the price of such prints and time of delivery should be quoted. Footage of each day’s filming should be assembled in sequence, but not finally edited.
The negative and all rights in all footage shot will be the property of the Olympic Organising Committee.
A firm quoting must indicate its capacity in terms of cameras, trained manpower, and other facilities, to film events spread over eight to ten venues and also state the time required to process and assemble each day’s filming for delivery, with adequate dope-sheets, ready for despatch within Australia and overseas. Normally each day’s footage will need to be available for censoring and despatch overseas on the morning of the following day.
In addition, quotes will be required for a film edited from the footage shot with commentary, music, sound effects and titles is to be supplied, of a total approximate length of 45 minutes.
Particulars of the extent to which individual events are to be filmed, the number and time of the events to be covered, and other information required will be supplied on application to the Organising Committee for the Games, Post Office Building, Elizabeth Street, Melbourne. The lowest or any quotation will not necessarily be accepted.” (emphasis supplied)
12 The two films described in the advertisement correspond roughly to those described in IOC Rule 49, although there is a discrepancy of fifteen minutes in the duration of the second one.
13 Only one tender was received in response to the advertisement but it was from a group which was considered to have no “real financial backing” and whose technical competence was also described as “suspect”. No contract was entered into with it.
14 By a letter dated 6 July 1956, OCOG offered to appoint Fremantle Overseas Radio & TV Inc (“Fremantle”) of New York as its agent in respect of the sale of film rights. An OCOG minute of 24 July 1956 records that Mr Paul Talbot (“Paul Talbot”), the President of Fremantle, wrote accepting OCOG’s offer. By a letter dated 20 November 1956, OCOG advised Paul Talbot that it had appointed him as its “representative for all negotiations with respect to the filming of the Games” and authorised him “to sign contracts on behalf of the Olympic Organising Committee, Melbourne”.
15 On 24 July 1956, an OCOG sub-committee resolved to accept an offer by Peter Whitchurch, who was Fremantle’s agent in Australia, “to take charge of the Managerial side of production of the film” in return for a lump sum payment of “£750, plus expenses”. The sub-committee’s minutes record that “a letter ... was accordingly sent to Mr Whitchurch accepting his offer as Manager of the Games film activities”. His appointment commenced on 1 August 1956. OCOG assembled an “Official Film Unit” with him as its Director.
16 The Games were held in Melbourne between 22 November and 8 December 1956. It is the films produced by the Official Film Unit, both during the Games and shortly afterwards, along with certain films of the Games produced by others with which this litigation is concerned.
17 The films in question fall into four categories:
1. “Unedited Films”: These films constitute the complete film record of the Games as filmed by the Official Film Unit. They are also called “rushes” and were referred to by Peter Whitchurch as “negative (x)”. According to him, negative (x) constituted the “most comprehensive coverage” of the 1956 Games, comprising “all worthwhile footage on each sport, assembled and tinned under the heading of that sport”. The Unedited Films also included “all the offcuts on each sport”, that is, lengths of exposed film left over after the making of the “Edited Films” referred to below. The Unedited Films are said to comprise some 216 rolls of 16 mm film along with separate 16 mm soundtracks.
It appears that there may no longer exist a complete copy of the Unedited Films in a physical form separate from the Edited Films. What exists are the Edited Films and the remainder of the Unedited Films, that is, those parts of the Unedited Films that were not used in the Edited Films.
2. “Edited Films”: These are the following three 16 mm Edited Films of individual sports and of overviews of the Games: (a) a one hour colour film entitled “Olympic Games 1956” which is sometimes referred to in the evidence as the “official” film (this film or the next one to be mentioned must represent the thirty minute “highlights” film called for by IOC Rule 49); (b) a twenty minute “summary” film in black and white with soundtrack; (c) the “films of record”, being several hours of edited films of the finals of the individual sports, either in colour or black and white, and in all cases but one, with soundtrack (these constitute the film first referred to in IOC Rule 49).
The Edited Films comprise some 174 rolls of film and range from twenty minutes to sixty minutes in duration. In all, the Edited Films number twenty five and are of some nine hours in duration.
3. “Newsreels”: These films are both edited and unedited films of a “newsreel” type and are in addition to the Unedited Films and the Edited Films. The edited prints state that they were “distributed by Pacific Films”. They consist of eighteen rolls of 35 mm film and were not the work of OCOG’s Official Film Unit.
4. “Sports TV Films”: These films consist of thirty seven rolls of 16 mm film, negatives and positives, which are identified either by a clapperboard at the beginning of the footage or by a marking on the canister in which the film is stored, as footage shot for or by “Sports TV”. These films were also not the work of OCOG’s Official Film Unit.
18 I will call all four classes of film “the Films”. These proceedings involve a dispute as to ownership of the copyright in the Films and ownership of certain particular physical copies of them. I will call those particular copies “the physical Films” but this is not to say that there are not other physical copies of the Films in existence. Moreover, it will be appreciated that the Films and the physical Films are referring to the same thing looked at from different perspectives.
19 The course of the parties’ forensic contest has been unusual. On 30 August 1996, TBF commenced proceeding NG 715 of 1996 against Filmworld. Filmworld had refused to release the physical Films to TBF because it was not satisfied that TBF was entitled to possession of them. That proceeding came to the attention of the AOC which then commenced the first of the two proceedings presently before me, proceeding NG 49 of 1997, against TBF seeking, inter alia, declarations that the AOC was the owner of copyright in the Films and was entitled to immediate possession of the physical Films and an order for delivery up of the latter. On 4 February 1997, I ordered that the physical Films be removed to the custody of Comcopy Pty Limited for safekeeping pending resolution of the dispute as to their ownership. Subsequently, on 7 March 1997, the AOC discontinued as against Filmworld.
20 The AOC claims that it owns the physical Films and the copyright in the Films on any one of the following bases:
(1) the physical Films and the copyright in the Films were owned by OCOG to which the AOC is the successor in title, the AOC’s title as successor having, in any event, been perfected by two deeds entered into by the AOC and the Australian Securities Commission (“the ASC”) on 8 December 1997 and 5 June 1998, referred to later;
(2) the physical Films and the copyright in the Films were owned by the AOF to which the AOC is the successor in title;
(3) if, which the AOC denies, the late Peter Whitchurch had any proprietary rights in respect of the Films and the copyright in the Films, the AOC is the assignee of those rights by deed dated 20 October 1997 executed by John Whitchurch, who is not only the son of Peter Whitchurch, but is also the sole surviving executor of his will, and a co-executor with Benson of the will of Peter Whitchurch’s widow, the late Elsie Whitchurch, who was alone beneficially entitled to Peter Whitchurch’s estate.
It will be noted that the deed referred to in (3) above was entered into on 20 October 1997. This was long after the commencement of proceeding NG 49 of 1997. The other proceeding with which I am presently concerned, NG 481 of 1998, was brought to overcome this difficulty. However, there is no difference in substance between the two proceedings. John Whitchurch was added as second applicant to proceeding NG 49 of 1997 on 20 October 1997. Benson and Talbot have filed cross-claims in both, seeking declarations that the deed dated 20 October 1997 between John Whitchurch and the AOC is void.
21 The deed between the AOC and the ASC of 5 June 1998 referred to in (1) above was entered into after the commencement of both proceedings, that is, NG 49 of 1997 and NG 481 of 1998. TBF at one stage objected to the AOC’s seeking to rely on that deed but has since withdrawn that objection, while reserving its position as to costs. On 12 December 1997, the applicants discontinued as against Beck and the ASC.
22 TBF, Benson and Talbot have, together with the eighth respondent (“ESPN”), filed a second cross-claim seeking, inter alia: a declaration that TBF was, as at 6 May 1998, the owner of the copyright in the Films and of the physical Films; a declaration that on 6 May 1998 TBF assigned the whole of its right, title and interest in the copyright in the Films and the physical Films to ESPN; and an order for delivery up of the physical Films.
23 TBF, and through it, ESPN, claims to have derived title through PWP. TBF claims that PWP acquired title through Peter Whitchurch. Alternatively, TBF claims that it derived title through an assignment effected by Benson who was, with her brother John, an executrix of Elsie Whitchurch’s will. TBF claims that Peter Whitchurch acquired copyright in the Edited Films by virtue of his having been the author of them and by virtue of an assignment in his favour from the AOC on 23 November 1960. Alternatively, TBF claims that the AOC is estopped from denying the title of Peter Whitchurch (and of his successors in title, PWP, TBF and ESPN) to the Films, by virtue of the AOC’s acquiescence in, and encouragement of, the Whitchurch interests’ dealings with the Films over many years. TBF also claims that John Whitchurch is estopped from denying that PWP had title to the copyright in the Films and from denying that Benson and Talbot had authority to bind PWP in dealing with TBF in respect of that copyright.
24 It will be seen from the above brief outline that the issues involved in the proceedings are numerous and complex. I do not propose to outline them further at this stage. Rather, I will deal with them in turn in approximately chronological order, starting with the question who originally owned the copyright in the Films.
25 On 6 May 1998, I ordered that the trial be limited to the issue of liability. I will have occasion to refer to the significance of that order later. Submissions were made on behalf of the applicants jointly and on behalf of the first, fifth, sixth and eighth respondents (“the respondents”) jointly. For convenience, when speaking of the respective parties’ submissions, concessions and forensic positions generally, I will usually refer to “the AOC” as representing the applicants and to “TBF” as representing the respondents.
THE FIRST OWNER OF THE COPYRIGHT IN THE FILMS
Subsistence and nature of copyright in respect of cinematograph films
26 The parties agree that copyright subsists in the Films. However, they disagree as to the nature of the copyright that subsisted in the Edited Films.
27 The filming and editing took place before the commencement of the Copyright Act 1968 (Cth) (“the Act”) on 1 May 1969. Section 207 of the Act provides that except as otherwise provided in Part XI (ss 204-248 – “Transitional”) of the Act, the Act applies in relation to things existing at its commencement in like manner as it applies in relation to things coming into existence after its commencement. But s 221 in Part XI provides:
“Copyright does not subsist by virtue of section 90 in a cinematograph film made before the commencement of this Act.”
Section 90 is the section of the Act which, for the first time, provided for the subsistence of copyright in cinematograph films.
28 Part XI provides specially in relation to cinematograph films made before the commencement of the Act. Although copyright does not subsist in such films, this does not mean that they lacked or lack all copyright protection. Section 222 of the Act provides:
“(1) Where a cinematograph film made before the commencement of this Act was an original dramatic work as defined by section 204, this Act (other than this subsection) has effect in relation to the film as if the film had been an original dramatic work as defined by section 10 and the person who was the author of the work for the purposes of the Copyright Act, 1911 shall be deemed to be the author of the work for the purposes of this Act as having effect by virtue of this subsection.
(2) This Act has effect in relation to photographs forming part of a cinematograph film made before the commencement of this Act in like manner as it has effect in relation to photographs not forming part of a cinematograph film.” (emphasis supplied)
29 Section 10 (referred to in s 222(1)) is the general definition section of the Act. The definition of “dramatic work” in that section need not be discussed for present purposes. Section 204(2) of the Act defines “dramatic work” to include:
“a piece for recitation, a choreographic work or entertainment in dumb show the scenic arrangement or acting form of which is fixed in writing or otherwise, and a cinematograph production where the arrangement, the acting form or the combination of incidents represented gives the work an original character”. (emphasis supplied)
30 This definition is substantially the same as that found in s 35 of the Copyright Act 1911 (UK) (“the 1911 UK Act”), which applied in Australia at the time the Films were made by virtue of s 8 of the Copyright Act 1912 (Cth) (“the 1912 Act”). The definition of “photograph” in s 204(2) of the Act is also substantially the same as the definition of “photograph” in s 35 of the 1911 UK Act, but the terms of the definition are not of present importance.
31 Section 10 of the Act defines “artistic work” to include a “photograph” as s 35 of the 1911 UK Act had done. The parties accept that the Unedited Films are not original dramatic works, and that in respect of the Unedited Films, copyright subsists only in the photographs which constitute them and not in the films as a whole.
32 In relation to the Edited Films, however, TBF submits, contrary to the AOC’s submission, that those films were original “dramatic works” as defined by s 204(2) of the Act.
33 The Edited Films are not in evidence, but they are described in evidence which reveals their general nature. The one hour colour film (2(a) earlier) and the twenty minute black and white “summary” film (2(b) earlier) contain selected highlights of the 1956 Games as a whole. The record film (2(c) earlier) contains highlights of individual sports. All the Edited Films have narrated soundtracks. It is apparent, therefore, that skill and labour, perhaps considerable skill and labour, was exercised in selecting and editing from the Unedited Film and in writing and narrating the soundtracks in order to produce the Edited Films. Peter Whitchurch undertook this work for which he was paid by OCOG.
34 There is a paucity of authority on the question when a cinematograph film constitutes an original dramatic work. The issue was raised in Nordisk Films Co Ltd v Onda [1917-1923] MCC 337 but the report does not describe the nature of the film or disclose Eve J’s reasons for concluding that it was not a dramatic work, beyond recording that it was submitted that there was no evidence that the film satisfied the statutory definition. Moreover, the decision was interlocutory and Eve J was satisfied that whether or not the film as a whole was a dramatic work, the plaintiff had copyright in the artistic work consisting of the individual photographs constituting the film, and that this afforded a sufficient basis for the grant of an injunction. It seems that detailed consideration was not given to the present question.
35 In Canadian Admiral Corporation Ltd v Rediffusion Inc (1954) 20 CPR 75, Cameron J in the Exchequer Court of Canada had to consider whether films of football games were original dramatic works. The relevant definition was the same as that in the Act. His Honour held that they were not and quoted (at 93-94), with apparent approval, the following passage from Copinger and Skone James on Copyright (8th ed, 1948 at p 221):
“Turning now to the protection which is accorded to the film itself, we do not find the Act [the 1911 UK Act] to be very clear upon the point. The difficulty arises from the fact that the film may be regarded from two points of view: it consists of a series of photographs, and from this point of view it is an ‘artistic work’ (Pathé Frères v Bancroft (1933) Macg Cap Cas 403); but where scenes are arranged for the purpose of being filmed there may be copyright in these arrangements as a dramatic work, for dramatic work is defined (s 35(1) [of the 1911 UK Act]) as including ‘any cinematograph production where the arrangement or acting form, or the combination of incidents represented give thework an original character’. It seems fairly clear that the cinematographing of a series of events in real life is not a ‘production’ within the meaning of the definition since there is no acting form or arrangement. Even where the work is a ‘production’ it must have an original character; this would seem to be so apart from the definition since copyright only subsists in original dramatic works, but the effect of the definition is no doubt to point out where the originality in a cinematograph production must subsist.”
36 The following passage had appeared in the sixth edition of the same work, the first published after the passing of the 1911 UK Act:
“The producer of [a] film may adopt one of several courses:
1. He may photograph a single incident or series of consecutive incidents actually occurring in life – eg, the race for the Derby.
2. He may photograph a series of disconnected incidents and combine them in such a way as to make them appear as though they had happened consecutively – eg, by photographing incidents in the life of an individual which actually happened on different days, but which, upon the cinematograph, are made to appear as though no interval of time had elapsed between the various incidents.
3. He may re-enact, by his own actors, in front of the camera selected incidents as he may conceive them to have in fact happened – eg, a life of Mary Queen of Scots or Queen Victoria.
4. He may dramatise the novel of another and perform his work in front of the camera, arranging the scenery and engaging the performers....” (p 217)
Referring to examples 1 and 2 above, the learned author stated:
“It seems fairly clear that the cinematographing of a series of events in real life is not a ‘production’ within the meaning of the definition since there is no acting form or arrangement. Even where the work is a ‘production’ it must have an original character; … Thus it is submitted that a person could not obtain copyright in an existing non-copyright play merely by making a film from a stage performance, but that if he imparted originality to the arrangement or acting form for the purposes of the film he would obtain copyright in such new arrangement.” (p 220)
37 The correctness of the passage from the eighth edition of Copinger set out earlier was questioned in Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (1st ed, 1980) in the following passage (at para 7.9, pp 273-274):
“We can see that in the definition there are two references to ‘original’. The first, [is] in the expression ‘original dramatic work’ .... The second reference, in the words ‘give the work an original character’, is used to limit further the scope of this category of copyright work but the extent of this limitation is unclear. Presumably the legislature intended to give extra protection to works which involved greater intellectual effort than was necessary merely to produce a photograph…. It has been suggested … that filming events occurring in real life or filming a performance of a stage play would not produce a cinematograph film within the definition of dramatic works. [Copinger (8th ed) p 221] It is submitted that there is no reason why such films should fall outside the scope of the definition. For example in the case of a natural history documentary great skill and care will normally go into selecting the subject matter and the manner in which the film is shot and then into editing the final product. The resulting film will be more than just a record of naturally occurring phenomena but will have its own ‘story’ and frequently will be designed so as to provoke sympathy or awe in the mind of the viewer. It is submitted that a court would be more than likely in such a case to say that the ‘combination of incidents represented give the work an original character’. [By similar reasoning, there is no good reason why a documentary such as Leni Reifenstahl’s on the 1936 Munich Olympics should not qualify as a dramatic work.] Similarly there can be little doubt that a film of, say, a live performance of ‘Aida’ would have original character qua film and there is no good reason why that should be denied the greater protection afforded to other films which qualify as dramatic works.” (emphasis supplied)
38 TBF suggests that Peter Whitchurch likened his film to Riefenstahl’s. In a letter to OCOG written in 1960 (discussed in detail later) Peter Whitchurch said:
“I would draw your attention to the fact that prints of the 1936 film (Berlin), are occasionally required. They can be obtained from the Producer, Leni Riefenstahl. Twenty five years later she knows exactly what happened and can answer queries. The copyright and sales exclusivity of prints are apparently, and I consider rightly, vested in her.” (emphasis in original)
Even if the letter should be taken to be an assertion by Peter Whitchurch that his films were, for copyright purposes, of the same nature as Riefenstahl’s, the assertion would not be probative in relation to any issue I have to decide.
39 Importantly, the authors of Laddie, Prescott and Vitoria changed their opinion on the present issue in the second edition of their book published in 1995. After referring to the passage from their first edition set out above, they said (at 5.13),
“on further reflection we perceive weighty arguments to the contrary”
and concluded:
“It is therefore suggested that the function of the concluding words [of the definition of “dramatic work”] was to specify what sorts of material, present in a film, would count as relevant for dramatic copyright purposes. The mere shooting of a real life scene eg a street procession, would not. The originality would have to reside in the arrangement, acting form or combination of incidents represented, these being the original contribution of the author. He might also get a copyright merely by capturing living images, but this would have to be photographic and not dramatic copyright.”
40 The authors’ change of mind seems to have been due in part to the discussion of the topic by Professor Ricketson in his book, The Berne Convention for the protection of literary and artistic works: 1886-1986 (Centre for Commercial Law Studies, Queen Mary College, University of London, 1987). The definition of “dramatic work” in the 1911 UK Act apparently reflected an attempt to give effect to art 14(2) of the Berne Convention. The United Kingdom acceded to the Berne Convention on its own behalf and on behalf of Australia on 1 July 1912, the day from which the 1911 UK Act was deemed to have been in force in the Commonwealth: see s 8 of the 1912 Act. Article 14(2) of the Berne Convention provided:
“(2) Cinematographic productions shall be protected as literary or artistic works, if, by the arrangement ofthe acting form or the combination of the incidents represented, the author has given the work a personal and original character.”
In construing the statutory definition of “dramatic work”, one may refer to the provisions of the Convention to which the statute was intended to give effect: see Acts Interpretation Act 1901 (Cth) s 15AB(2)(d) and the cases referred to in Pearce and Geddes, Statutory Interpretation in Australia (Butterworths, 4th ed, 1996) at [3.13].
41 Ricketson (above) says of art 14 (2) (at 550-551):
“It seems clear from the wording of this paragraph that protectable ‘cinematographic productions’ were regarded simply as another species of dramatic work, and little, if any, account was to be taken of the technical skills required to make them – skills that were usually required in equal measure for films of ‘unordered’ subjects such as landscapes, street scenes or public events. In other words, under para (2) cinematographic films were not to be protected because they themselves represented ‘productions in the literary, scientific and artistic domain’, but only insofar as they might embody works that came within this definition by reason of the personal and original character given them by the arrangement of the acting form or combination of incidents. The necessity for a provision limited in this way may be questioned, as such works should already have been protected as dramatic or dramatico-musical works that were simply expressed in a novel form.”
In other words, the intention was, perhaps unnecessarily, to protect the intellectual contribution to that which was filmed, not the skill and effort involved in filming or editing.
42 The AOC submits that the definition of “dramatic work” requires that the “author” orchestrate or dictate the events captured on film. It emphasises the definition’s reference to “cinematograph production”. The word “production” does indeed suggest that more is required than the recording of real life events. In my opinion, the notion of “cinematograph production” in the definition necessarily presupposes that the “producer” has been responsible for “the arrangement, the acting form or the combination of incidents” which gives the end product an original character. The expression “dramatic work” itself also suggests that the action must be staged, contrived or directed, and not simply recorded. Perhaps it is possible to film naturally occurring events and then, through a process of editing, create a drama or story that is not otherwise present in them. There is no suggestion that this happened in the present case. The editing process may have highlighted the drama of events at the Games but it did not “produce” that drama. In my view, the exertion of skill and labour in filming and editing does not characterise what remains essentially a film of real life events over which the producer of the film had no control as an original dramatic work for the purposes of s 222(1) of the Act.
43 In the result, neither the filming nor editing work produced an original dramatic work. It follows that the Edited Films, like the Unedited Films, attract copyright only in the artistic work that is constituted by the individual photographs of which those Edited Films consist.
Who owned the copyright in the photographs comprised in the Unedited Films and the Edited Films?
44 As noted earlier, s 207 of the Act provides that except in so far as Part XI otherwise expressly provides, the Act applies in relation to things existing at the commencement of the Act in like manner as it applies in relation to things coming into existence after that commencement. The photographs constituting the Films were “things existing at the commencement of” the Act.
45 Section 208 of the Act provides that in relation to a photograph taken before the commencement of the Act, a reference in the Act to the “author” of a photograph is a reference to the person who, at the time the photograph was taken, was the owner of the material on which the photograph was taken. Subject to subss 213 (5) and (6) of the Act, it is the “author” of such a photograph who is the owner of copyright in it: ss 35(2) and 213(3) of the Act. Subsections 213(5) and (6) are special provisions which are, relevantly, as follows:
“(5) Where, in the case of a work being a photograph, ... :
(a) a person made, for valuable consideration, an agreement with another person for the taking of the photograph, ... by the other person; and
(b) the work was made in pursuance of the agreement;
the first-mentioned person is the owner of any copyright subsisting in the work by virtue of Part III.
(6) Where the work was made by the author [the owner of the material on which the photograph was taken] in pursuance of the terms of his or her employment by another person under a contract of service or apprenticeship, that other person is the owner of any copyright subsisting in the work by virtue of Part III.”
46 I will consider first the operation of s 208. There is no suggestion that Peter Whitchurch or any of the cameramen owned the unexposed film on which the photographs were taken. There is no suggestion that anyone other than OCOG was the owner of the unexposed film. Either OCOG is shown to have been the author or no one is shown to have been the author.
47 The AOC submits that OCOG was the owner of the copyright in the photographs constituting both the Edited Films and the Unedited Films on two alternative bases. The first is that it was the owner of the film that was exposed to create the photographs and was therefore the author of the photographs: see s 35(2) of the Act. The alternative ground is that by reference to s 213(5), OCOG made, for valuable consideration, an agreement with Peter Whitchurch and the other cameramen for the taking of the photographs. I will turn first to the evidence relevant to the first ground.
1. Peter Whitchurch presented to OCOG a “Report on TV and Films Operation”. It is undated but must have been presented in around August 1956. We know this because OCOG appointed Peter Whitchurch as Director of the Official Film Unit from 1 August 1956, and because the Official Report of OCOG published in 1958 referred to a major change in policy that OCOG made at that time from allowing outsiders to film the Games to undertaking the task itself (see 8 below) and this change of policy is reflected in the document as a recent development.
Peter Whitchurch’s report to OCOG contained the following:
“BACKGROUND
1. When Fremantle – Overseas Radio and TV Inc, New York were appointed by the Olympic Committee to be sole Agents for the world wide sale of Olympic Games film rights, Mr Peter Whitchurch as Mr Talbot’s Australian Film Representative no longer had any responsibility as a ‘go-between’ or liaison officer for Mr Talbot and the Committee.
2. Mr Talbot is now the Agent of the Olympic Committee and all correspondence should be direct and not through any third party (Mr Whitchurch or any other deputy acting as Australian representative of Fremantle).
3. There are NO different viewpoints to be reconciled. In the event of a divergence of opinion Mr Talbot must conform with the policy (if any) laid down by the Committee.
4. Mr Talbot has been appointed to SELL on a commission basis and it is therefore clearly the responsibility of the Olympic Committee to PRODUCE that which Mr Talbot is selling.
5. This means that the Olympic Committee finances the entire film operation, recouping costs plus profit from sales, less commission, from Mr Talbot.
6. These costs include those services provided by agreement with the ‘Pool’ for which there will be a contractual arrangement covering reimbursement of its costs of procurement in Australia.
7. Recommendation. It is essential that there be legal contracts:
(a) Between the Olympic Committee and Fremantle.
(b) Between Fremantle and the ‘Pool’.
(c) The Pool must be clearly defined listing the legally liable
members. This list is subject to the approval of the Committee.
(d) Provision must be made for all other users to purchase under
separate contract from Fremantle.
(e) It is of vital importance that aggressive steps be taken to
protect the world wide copyright to all film exposed in areas
under the control of the Committee.
PRESENT POSITION
8. For technical liaison work and to safeguard the Committee’s Film operations step by step the Olympic Committee has appointed a TV and FILM EXECUTIVE, ie Mr Peter Whitchurch
9. Production will require an outlay of considerable expense and the immediate appointment of KEY PERSONNEL in order to undertake this mammoth task.
10. It is clear that the TV and FILMS project has been seriously handicapped by a late start and no effort and expense should be spred [sic] in organising this project with the same efficiency and attention to detail which has been characteristic of all other aspects of the Games.
11. In fact we are so far behind schedule in film and TV preparation by comparison with previous Olympic Games that the situation should be treated as an EMERGENCY and Mr Whitchurch given PRIORITY assistance in everything that he calls for.
12. One small compensation for the late TV and FILM start is that little expense has been incurred to date.
PLAN OF ACTION – PERSONNEL
13. ..................................................................................................................
PLAN OF ACTION – FINANCE
14. It is recommended that the financing of the film and TV operation be handled on the following basis:
(A) A preliminary Budget is attached covering the complete operation and estimating every contingency it is possible to foresee at this stage [the document is not attached to the copy of the Report in evidence]. This is in the nature of a forecast and by necessity can only be in broad terms. Attached to this Budget is all available information re Fremantle negotiations to date.
(B) This Budget to be revised and resubmitted to the Committee as soon as it is possible to more accurately obtain quotations and establish more detailed costing. In any case this Budget to be resubmitted before 31st September.
(C) Thereafter, the Budget to be revised and resubmitted to the Committee as often as called for together with a complete accounting report.
(D) Payments of accounts, wages, and expenses to be by the IMPREST system. The Committee to pay into a nominal Bank A/c a working sum of, say £500, on which amounts may be drawn by Mr Whitchurch, the Administrative Assistant and/or other approved signatory.
(E) A weekly reconciliation and reimbursement of expenses to be carried out with proper analysis of items in accordance with the accounting requirements of the Committee’s Auditors.
(F) Items of a capital nature, ie, camera stands in arena, sound proofing of studios etc, to be the subject to competitive quotations in writing and approved by the Committee before entering a commitment.
(G) Other items involving considerable expense such as importing cameramen and/or equipment and film stock to be approved by the Committee before entering a commitment.” (emphasis supplied)
2. At a meeting of “the Executive Committee (Directors)” of OCOG on 31 August 1956 at which Peter Whitchurch was present, there was discussion of the arrangements for the filming of the Games. The minutes included the following:
“The Chairman advised that Mr Peter Whitchurch, ... was in attendance. The Committee accordingly asked Mr. Whitchurch in for discussion of filming arrangements.
The Chairman reported discussions with Mr Talbot in New York. From these, it appeared that sales of film would be effected to an extent that would more than cover costs. It was still not clear whether the newsreel pool would come into existence as a filming unit or whether the newsreel companies would prefer to purchase film from the Organising Committee. It does seem to be quite clear that the newsreel companies want film. On the expenses side, the arrangement is that production costs will be to the account of the Organising Committee, while all sales expenditure will be to the account of Fremantle Radio.
Mr Whitchurch spoke briefly on detail [sic] arrangements made to date and answered general questions from members. Mr Whitchurch said that he anticipated that manpower requirements for the international news service would be about 30 operators, at a cost of about £20,000.
Further action in relation to filming was left in the hands of the chairman and Filming Sub-Committee, with power to act.” (emphasis supplied)
3. A memorandum drafted by Peter Whitchurch on or about 5 October 1956 to be sent by OCOG to Australian television stations proposed that they have access to footage of the Games, that its use be the subject of individual negotiation with the Committee’s “film section”, and that the charge be “£20 per day plus physical cost of print, air freight, etc”.
4. A memorandum dated 23 October 1956 from Peter Whitchurch to the Chairman of OCOG relating to his (Peter Whitchurch’s) remuneration included the following:
“As I understand the situation Talbot’s percentage is based on the gross turnover. You probably appreciate that as his representative I have a financial arrangement with him.
Although I am still prepared to wait I would be grateful to have a clear understanding of my present situation. As I see it the Sales Organisation [apparently a reference to Talbot and his company, Fremantle] is in existence to sell what is provided by the Organising Committee. In other words I could effectively be his representative while somebody else was organised for film coverage. I advised against this and asked to be appointed in my present capacity. At the time I asked for a remuneration of £750 (£40 per week average) to act in this Managerial capacity. This was accepted.
I later gathered the impression that you were of a different opinion. I later forwarded a memo which endeavoured to set out the reasons for my own outlook.
Although several things could still go wrong I am now confident that your film coverage will be firstclass. However I would like to be assured of your agreement that the responsibility being carried is greater than would be the case if I were simply Talbot’s representative.
I am finding it impossible to employ suitable talent unless we pay at the rate of £3000 per year for a short term period.
May I arrange similar payment to myself terminating December 15th 1956.
There are two other points I would like to discuss with you for mental reassurance:-
(a) The Organising Committee has no objection to my having first refusal on the equipment we are purchasing. I have in mind a 10% rebate. I would like to ask for a few months to arrange definite settlement.
(b) In order to know my own future, when the Games are over, may I take it as definite that the Organising Committee will commission me to finish the record film either on the basis of a) continued salary or b) an approximate £5000 (not to exceed) to do a worthwhile job. This latter quotation would, of course, incorporate all attendant costs once the kodachrome negative was in my hands. As I expect there will be more than 100,000 feet of 16 mm this will be a really big assignment. However, I look forward to it and, at this stage, only desire your ratification of the commission.” (emphasis supplied)
5. The evidence of Basil Catterns, the Administrative Officer of the Official Film Unit, was that Dennis Hill, who was employed by OCOG as the Unit’s director of photography, was involved in choosing the “film and equipment” to be used by the Unit and in interviewing the cameramen to be employed in it.
6. The evidence of Mr Catterns was also that he (in effect, OCOG) was responsible for ensuring that cameramen had film stock for their cameras during the Games.
7. A memorandum dated 16 December 1956 (eight days after the end of the Games) from Peter Whitchurch to the Chairman of OCOG reported on, inter alia, the “cost of operation – not including equipment”. I accept that the reference is to the cost of the operation of OCOG’s Official Film Unit. The figure mentioned is £33,500 which is described as including “an estimate of depreciation on equipment but not its capital cost”. Although the memorandum does not give particulars of the equipment, surely it was referring to depreciation on OCOG’s equipment. The memorandum also stated:
“You will recall my letter of October 23rd [see 4 above] and subsequent discussions on the matter of equipment and residual unexposed film. I am forming a Company for Film production to service Television. [PWP was incorporated on 6 September 1957 under the name “Peewhit Pty Limited”] We will need equipment identical with that purchased for the Organising Committee’s Filming.
Much of this equipment was purchased at favourable discount prices as the result of sub Agencies I procured while overseas in 1955. This discount was passed straight on to the Organising Committee in anticipation of my being able to purchase later and thus obtain my Agency benefits.
Although most of the gear has only been used for about a month, the type of use and the variety of cameramen using it has caused a depreciation equal to a normal six months wear and tear. I suggest a 10% discount as being reasonable.
The figure involved is nearly £20,000 and I would appreciate being given until the end of March to settle the total account. I would be prepared to deposit £4,000 immediately, if required, as an earnest of good faith.
....
If permission is given for the purchase of all this gear may I assume control of it as soon as possible.” (emphasis supplied)
8. The Official Report of OCOG published in 1958 dealt with “Film and Television” at pp 156-160. It stated that in July 1956, frustrated in dealing with competing (and conflicting) “news gatherers” and “entertainment providers”, OCOG decided to cover the filming of the Games in its own way. The Report referred to the “large-scale organization of facilities, film and cameramen” that this change of policy involved; to the purchase by OCOG of “all essential equipment”; to the fact that “film issue” and other activities all took place from the one administration room; to the nightly despatch of 16mm and 35mm gauge film material; and to the production by a small team after the Games of “a one-hour colour documentary” and “record films of the various sports”. The Report recorded an “estimated expenditure” on “Filming” of £50,000.
9. The evidence of Robert McAuley, an employee of the Official Film Unit, was that “[i]mmediately the Games were over OCOG was left with a great amount of developed film and camera, sound, processing and film editing equipment” (emphasis supplied).
10. As will be seen, in November 1960 Peter Whitchurch bought from OCOG for £85 “unused US film”. This was apparently film which was exposed during the Games for the purpose of making films for the “US Army Unit”. It was considered that this film was “obsolete”, having only “minor value as ‘leader’ for joining to other used film”.
The AOC also submits that “the assumption underlying many references to sales of film organised by [Fremantle] is that the film was owned by OCOG”. Reference may also be made to the invitation for tenders published by OCOG in the Sydney Morning Herald and The Age newspapers on 28 March 1956 set out earlier, which noted that “[t]he negative and all rights in all footage shot will be the property of” OCOG.
48 Although some of the evidence referred to above is of limited assistance, taken as a whole it establishes that the unexposed film used to make the Unedited Films, and therefore the Edited Films, was purchased and owned by OCOG and, through its Official Film Unit, issued to its cameramen for use in the filming of the Games.
49 The matters referred to in (1) and (2) above point to an arrangement according to which all the expenses of the Official Film Unit were to be borne by OCOG. There is no reason why OCOG’s approval would be required for the purchase and importing of film stock if OCOG was not to bear its cost. Then there is Peter Whitchurch’s proposal in (7) above. The first paragraph shows that Peter Whitchurch, who, as Director of the Official Film Unit, should have understood what the true position was, regarded OCOG as the owner of the remaining unexposed film. There is every reason to believe that he regarded OCOG also as the owner of the film that was exposed to produce the Unedited Films and that it was the owner of it in fact. This conclusion is supported by the matter referred to in (10) above.
50 Another matter which emerges from Peter Whitchurch’s memorandum to OCOG of 16 December 1956 is that he had originally asked to be paid £750 which he described in the letter as £40 per week as his “remuneration for undertaking the Managership of the Film Unit”. His letter spoke of other staff being paid between £50 and £55 per week. In the letter he requested that his own remuneration be increased from £750 to £1,100, which, he said, would represent £60 per week. On 10 January 1957, the Film Sub-Committee of OCOG’s Finance and General Purposes Committee agreed to his request. Since Peter Whitchurch and his subordinate staff at the Official Film Unit were being paid in this way, with no suggestion that their remuneration was to include the cost of the film stock they were to use, it is very unlikely that they were buying it. As noted in (6) above, the cameramen were provided with film stock by Basil Catterns, who was the administrative officer of OCOG’s Official Film Unit. Again, the strong inference is that OCOG itself paid for the film stock.
51 I find that OCOG purchased and owned the film stock, the exposure of which created the photographs constituting the Unedited Films and, therefore, the Edited Films, with the consequence that it was the author of them: s 208 of the Act. Section 35(2) of the Act therefore produces the result that subject to s 213(5) and (6), OCOG was the owner of the copyright in those photographs.
52 Is subss (5) or (6) of s 213 inconsistent with this conclusion? Not at all. Those provisions (set out earlier) are directed primarily to situations in which, relevantly, the owner of the unexposed film took the photographs pursuant to a contract with another person or as an employee of another person. OCOG did not do that.
53 Even if the cameramen had provided their own film stock and had therefore been the authors of the photographs, they took the photographs either pursuant to agreements with OCOG, for valuable consideration (payment to them by OCOG), to film the Games (cf s 213(5) of the Act), or pursuant to the terms of their employment by OCOG under contracts of service (cf s 213(6) of the Act). On either basis, OCOG would again have been the owner of the copyright subsisting in the artistic works constituted by the photographs comprised in the Films.
54 Since the Edited Films were produced by the cutting and splicing of the original Unedited Films, or, alternatively, by the copying of parts of them, with or without cutting and splicing, OCOG also owned the copyright in the photographs constituting the Edited Films.
55 It also follows that OCOG also had the immediate right to possession of the original physical Unedited Films and Edited Films. It has not been in issue that those are the films now held by Filmworld.
56 These conclusions are, of course, subject to any rights that OCOG may have granted to others and other matters to be considered later. But first, it is necessary to refer to the position of the Newsreels and the Sports TV Films.
Who owned the copyright in the photographs comprised in the Newsreels and the Sports TV Films?
57 The Newsreels were made by a New Zealand company, Pacific Film Productions Ltd (“Pacific Films”). There is in evidence an unsigned copy of a letter from OCOG to Pacific Films dated 24 November 1956. It contains some underlining marked by asterisks. These direct attention to a footnote which states:
“NOTE .... All parts underlined in the above represent additions or alterations to the form originally submitted, all such having been initialled by R. Mirams and P. Talbot.”
Under the words “Yours faithfully” appears:
“(Signed) Paul Talbot
Film and TV Sales Agent”
To the left of this appears the following:
“ACCEPTED –
(Signed) R. Mirams
Pacific Film Productions Ltd.”
I infer that the document contains the terms of an agreement made between OCOG through its Film and TV Sales Agent, Paul Talbot (no doubt representing Fremantle), and Pacific Films through Mr Mirams.
58 According to the letter, OCOG agreed to provide Pacific Films with appropriate stands and services to enable it to produce news films of the Games. Each film was to be of no more than 3 minutes’ duration. Pacific Films was to be responsible for all costs including “raw stock”. However, the film was to be developed under OCOG’s control and the negatives were to “remain the property of [OCOG]”. The negatives were also to remain in the possession of OCOG, subject to a right in Pacific Films to issue once every four days a “news type Olympic round up” for distribution to motion picture theatres in Australia and New Zealand. The Newsreels were not to be released after 15 December 1956 (seven days after the end of the Games) and all released prints were to be returned to OCOG or destroyed by 31 March 1957. For the right to release the three minute “news type” Olympic films in Australia and New Zealand, no payment was to be made by Pacific Films to OCOG. But further releases required the approval of OCOG which was to receive 50 per cent of the income derived from them.
59 The AOC submits that by agreeing that the negatives remained the property of OCOG, Pacific Films was agreeing that OCOG was to own the copyright in the photographs constituting the Newsreels, as distinct from merely being entitled to possession of the physical Film. TBF does not appear to dispute this. It does seem that on a fair reading of the letter, OCOG was to own the copyright as well as the general property in the physical Newsreels. It is not in dispute that OCOG was entitled to stipulate the terms on which filming of the Games might take place. The agreement gave Pacific Films very limited rights, but for no payment on its part. The rights were to make three minute newsreels and to distribute them only to cinemas in Australia and New Zealand and only until 15 December 1956. It would, moreover, be inconsistent with the provision for return or destruction of all released prints, that Pacific Films should have the copyright in the Newsreels.
60 In a manner not revealed by direct evidence, the physical Newsreels ended up in the custody of Filmworld in company with the Unedited Films and the Edited Films. I infer that they were returned by Pacific Films and in one way or another came to be stored with the Unedited Films and the Edited Films.
61 I turn now to the Sports TV Films. These were produced by an American company called Sports TV Inc (“Sports TV”). There is in evidence an unsigned copy of an agreement between Fremantle “as sole and exclusive agents of” OCOG and Sports TV dated 22 October 1956 and an undated and unsigned amendment to that agreement. The former concludes:
“FREMANTLE OVERSEAS RADIO & TV INC.
Signed
Paul Talbot
President
SPORTS TV, INC
Signed
Charles S. Leeds
President”
I infer that the documents express the terms of an agreement that was entered into between Fremantle as agent for OCOG and Sports TV.
62 According to the agreement, Sports TV undertook, at its own cost and using its own cameramen, equipment and raw stock, to produce a minimum of six half hour films of the Games with sound narration for television (“the Olympic Shows”). Sports TV was granted the exclusive right to photograph and produce film of the Games “for distribution through the media of television in the United States, its possessions and Canada for a period of six months, following the last day of the Olympic Games”. Accordingly, although the Sports TV Films were to be longer (half an hour) than the Newsreels (three minutes) and were directed to television in North America rather than cinemas in Australia and New Zealand, both shared the feature that they represented a grant of rights limited by reference to a market closely associated in point of time with the Games.
63 The agreement provided for the sale and distribution of the Olympic shows and the apportionment of royalties between Fremantle and Sports TV. Importantly, clause 1 concluded:
“It is understood that the original negatives produced by Sports’ camera crews will be the property of the Organizing Committee to use at their discretion for any and all purposes and exploitation other than those reserved for Sports as provided herein.”
Clause 14 provided that “at the expiration of the rights granted” to Sports TV, Sports TV was to “turn over” to Fremantle “all negatives, duplicate negatives, fine grains and release prints in the possession or under the control of [Sports TV] without cost to Fremantle for such use or exploitation as Fremantle may wish to make thereof”.
64 It is important to recall that Fremantle entered into the agreement as sole and exclusive agent of OCOG. As in the case of the Newsreels, I think that the copyright in the Sports TV Films, as well as the general rights of ownership of the physical Sports TV Films, including the right to immediate possession of them six months after the end of the Games, was vested in OCOG pursuant to the agreement. Again, TBF does not appear to submit to the contrary.
65 I will, as in the case of the Newsreels, proceed on the assumption that the physical Sports TV Films were delivered up by Sports TV to OCOG or its agent in New York, Fremantle, pursuant to the contract, and came to be stored with the Unedited Films and the Edited Films.
THE AGREEMENT OF 23 NOVEMBER 1960
Events from the end of the Games on 8 December 1956 to the dealings between OCOG and Peter Whitchurch in 1960
66 After the Games, a question arose as to what was to be done with the Unedited Films. On 10 January 1957, OCOG
“decided that the film exposed at the Olympic Games should be used to make the following: -
(a) A Commercial documentary of about one hour in length.
(b) A Record film of approximately three hours duration.
(c) Such special shorts as might be specially ordered by Sports Federations or National Olympic Committees.
(d) A short film of 10/20 minutes.”
It will be seen that (a), (b) and (d) approximately correspond to my earlier description of the Edited Films, although the “Record film” proved to be much longer than the three hours contemplated by the OCOG decision.
67 OCOG decided to accept a quote of £8,500 from Peter Whitchurch to make the record film. It also accepted his suggestion that he make the one hour “commercial documentary” and the ten to twenty minute film, on the basis that the added production costs be “recouped in the sale price to the consumer, whilst ensuring a profit to the Committee”. Accordingly, Peter Whitchurch was to make for OCOG, out of its Unedited Films (or “negative (x)”), and for payment by OCOG, the three Edited Films.
68 At a meeting of the “Winding-Up Executive” of OCOG on 26 July 1957, Peter Whitchurch advised those present:
“that the Committee’s one hour colour film [(a) in OCOG’s decision of 10 January 1957] had been completed, that the first copy had that morning been delivered to Olympic Tyre and Rubber Co Ltd and that the first public showings would take place on Wednesday, 21st July [sic].”
He also said that he expected “the record film” [(b) in OCOG’s decision of 10 January 1957] to be finished before the end of 1957. Robert McAuley, who had worked for OCOG in the Official Film Unit, has testified that “the 30 individual sports films” (the record films) were indeed finished at about the end of 1957.
69 At a meeting of the Winding-Up Executive on 23 January 1958, Peter Whitchurch reported that he had completed:
“a 20 minute black and white 16 mm film (approximately 790 feet in length), of the highlights of the Ceremonies and finals, which the Committee had approved for production for sale on the local market.”
This film was apparently film (d) in OCOG’s decision of 10 January 1957.
70 In addition to OCOG’s contracts with Peter Whitchurch (for production of the Edited Films), Pacific Films and Sports TV, OCOG made other arrangements in respect of the filming of the Games and the right to exploit the resultant films. First, in around November 1956, OCOG entered into an agreement with a French Company called “Productions CSA”. The agreement itself is not in evidence but there are references to it in documents which are in evidence. According to a “list of contracts” prepared before the Games, CSA had the right to produce and exploit, at its cost, a full length film, apparently called “Rendezvous au Melbourne”. The summary said that OCOG’s agent “Fremantle [was] not to grant any rights to other parties which compete[d] with or derogate[d] from the rights granted [to] CSA”, but that those rights were only for the period of the Games and twelve months afterwards. Correspondence in evidence suggests that Mr P W Nette (“Nette”), the Administrative Director of OCOG, thought that as CSA was granted the right to broadcast its film on television, neither OCOG nor anyone else was at liberty to screen on television any of the films made by the Official Film Unit, including those that resulted from Peter Whitchurch’s editing. In a memorandum to Paul Talbot of 14 December 1957, Peter Whitchurch referred to the fact that he had been “telling Olympic Tyres [see below] that they could not use television because television belonged to the Frenchmen until, at least, 12 months after 8th December, 1956 [the closing day of the Games]”. The AOC submits that there was in fact no such time limit. This submission receives support from a letter from Nette to Peter Whitchurch of 19 December 1957 (just over twelve months after the Games) in which Nette stated that the contract gave CSA the right to exploit its film, including on television, for an “indefinite period”, and that OCOG had “agreed not to grant to any third party any rights which compete[d] with or derogate[d] from the rights granted to” CSA.
71 The second of these “other arrangements” made by OCOG occurred in early June of 1957, when OCOG apparently entered into an agreement with the Coca Cola Company. Again, no copy is available. According to the minutes of a meeting of the “Winding-Up Committee” of OCOG on 10 May 1957,
“Mr Whitchurch advised having received information from Fremantle Overseas Corporation (Mr Talbot) [OCOG’s agent in the United States] that the commercial world rights, not including Australia, for the one-hour film had been sold to Coca Cola for $26,000, say £11,500. The effect of this is that the Committee is now left with possible sales to National Olympic Committees in accordance with the Rules [IOC Rule 49 referred to earlier] and with possible sale of rights or of individual copies of the film in Australia.
….
The Executive … decided that the rights of the one-hour film be disposed of in Australia to one purchaser if a reasonable price could be received for it. As an alternative it will be necessary to sell individual copies, sales tax to be allowed for.” (emphasis supplied)
72 A letter from The Olympic Tyre & Rubber Co Pty Ltd (“Olympic Tyre & Rubber”) to Peter Whitchurch dated 4 June 1957 referred to the rights granted to Coca Cola as being “for non-commercial exhibition of the [one hour colour film] under the auspices of Coca-Cola” (emphasis added). There is also a letter from Paul Talbot to CSA dated 2 April 1958 which enclosed a copy of clause 8 (c) of the agreement between OCOG and Coca Cola which was as follows:
“The Committee [OCOG] grants to the Producer [apparently Coca Cola] the right to exploit his films in all gauges for non-commercial and educational use, except for the making of sponsored and industrial films, which however the Producer may make with the written permission of the Committee. The Committee reserved to itself the right to grant licenses for the use of film material other than that of the Producer on the Olympic Games in industrial and other films which are purely educational in character and which may not be shown in commercial cinemas.” (emphasis supplied)
73 The third of the other arrangements relates to Olympic Tyre & Rubber. I referred above to the information given by Peter Whitchurch to the Winding-Up Executive of OCOG at its meeting on 26 July 1957. On 23 August 1957, OCOG entered into an agreement with Fremantle and Olympic Tyre & Rubber by which OCOG sold to Olympic Tyre & Rubber the “exclusive non-commercial Australian rights” in respect of “a colour 16 mm motion picture film running approximately one hour in length, covering the major events of the 1956 Olympic Games”. The agreement purported to relate only to “screening rights” and provided that “[t]he master film and the sound track will remain the property of [OCOG]”. The agreement provided that Olympic Tyre & Rubber might:
“non-commercially exploit exclusively [the] one-hour film in Australia to non-paying audiences but not including television.”
The agreement continued:
“Before authorising the televising of this one-hour film in Australia, should that become a possibility, [Olympic Tyre & Rubber] will be consulted and will be given an option to purchase the rights to arrange for television of the film in Australia.”
The first copy of the film was included in the purchase price of £5,000 payable by Olympic Tyre & Rubber. Further copies were to be paid for by Olympic Tyre & Rubber and obtained through the representative in Australia of Fremantle, that is, through Peter Whitchurch. While the films to be produced were only for screening to non-paying audiences and for the purpose only of promoting sport, Olympic Tyre & Rubber was authorised to insert advertisements into the film “within the limits of good taste”, subject to the prior approval of Fremantle on behalf of OCOG.
74 OCOG agreed not to extend the right to exploit the one hour film in Australia to any commercial organisation other than Olympic Tyre & Rubber. However, it reserved a right for the AOF to screen the one hour film “to non-paying audiences for the promotion of amateur sport”. The agreement also provided that nothing in it would “infringe” or “interfere with” OCOG’s obligation under IOC Rule 49a copy of which was annexed to the agreement, to supply the films described in that Rule to the IOC and to National Olympic Committees.
75 Fourth, it appears that in early 1959 there was a dealing between OCOG and William Cayton (“Cayton”) who was the President and “owner” of Radio & Television Packages [sometimes “Packagers”] Inc. Cayton is now the President and “owner” of TBF. In early 1959 Cayton apparently paid a licence fee for the purchase of film to be used in the production of “Olympic Committee spots”, the nature of which is not disclosed by the correspondence in evidence. In a letter dated 19 February 1959 to Paul Talbot of Fremantle, Cayton complained about a problem he had experienced with “the delivery ... of reverse printed negatives from Australia”. Cayton suggested that the licence fee payable by his company be reduced on this account from $2,000 to $1,500. His letter concluded:
“I trust you will agree that this suggestion is entirely proper and entirely fair to your principal and yourself.”
The reference to “your principal” was probably a reference to OCOG because, as noted earlier, Fremantle was OCOG’s agent in the United states. The letter, and in particular its reference to payment of licence fees to Fremantle’s principal, suggests that Cayton understood at that stage that Fremantle’s principal was the copyright owner.
76 Both of the agreements which purported to grant rights in the one hour film, those with Coca Cola and Olympic Tyre & Rubber, apparently dealt only with rights of “non-commercial” exploitation. This restriction appears to stem from IOC Rule 49, the relevant part of which it is appropriate to set out again:
“The Organizing Committee must make the necessary arrangements for the production of a complete moving picture of the Games including shots of at least the final of each sport without interfering with the conduct of the events. It [OCOG] shall have the exclusive commercial rights to this film until one year after the close of the Games.”
It appears that OCOG took this to mean that after the one year period of its own “exclusive commercial rights” (which expired on 8 December 1957), it would have only “non-commercial” rights. Although IOC Rule 49 could not, of its own force, limit the rights of OCOG as copyright owner vis-à-vis the rest of the world, understandably OCOG took the Rule seriously. It will be recalled that it referred to IOC Rule 49 in its agreement with Olympic Tyre & Rubber. It had also issued a news release, apparently before the Games, relating to an issue as to whether there should be a grant of “free access” for filming. The news release asserted that OCOG had never banned “newsreels going into the Games” but distinguished between genuine “newsclips” and “entertainment films”, and quoted IOC Rule 49, underlining the sentence referring to “exclusive commercial rights”.
77 As to what was to happen to the Films after OCOG was wound-up, the minutes of a meeting of the Winding-Up Committee of OCOG held on 25 October 1957 record the following:
“Mr Tanner [the then Secretary-Treasurer of the AOF] made the request to the Committee that the balance of exposed film, after the Committee’s film had been produced, be given to the AOF for its own use. After discussion, the Executive agreed that all leftover film, remaining after Mr Whitchurch, the production director, had made the record film, be vested in the Australian Olympic Federation for use in such way as the AOF sees fit to use it, subject to the proviso that if and when the AOF decides that it no longer requires any or the whole of the film so vested in it, such film is to be given to the Commonwealth National Library at Canberra for the film archives.”
The Winding-Up Committee was agreeing then, that subject to OCOG’s production through Peter Whitchurch of the Edited Films, the remainder of the Unedited Films were to be given to the AOF subject to a “gift over” to the Commonwealth National Library which would take effect only if and when the AOF decided that it no longer “required” the Unedited Films.
78 The arrangement that the Unedited Films be eventually given to the National Library was generally in line with the position as previously recorded in paragraph (c) of a letter from Nette to an Assistant Secretary to the Department of the Treasury dated 31 May 1957. In that letter, Nette referred to “the decision of the Winding Up Executive” as having been:
“(a) that one copy of the one-hour Olympic film be made available for the national film archives,
(b) that any additional copies of this film for non-commercial distribution through the National Library be dealt with in accordance with the arrangements for the sale of the film in Australia, and,
(c) that any exposed film, not used by the Committee for the purposes of preparing films for sale, be given eventually to the Commonwealth Film Library for its archives.”
OCOG’s transaction with Peter Whitchurch
79 I turn now to the important question of OCOG’s dealings with Peter Whitchurch.
80 On 6 September 1957 John Whitchurch and Elsie Whitchurch caused PWP to be incorporated under the Companies Act 1936 (NSW) under the name “Peewhit Pty Limited”. This was some nine months after the Games and some three months before expiry of the twelve month “exclusive commercial exploitation” period referred to in IOC Rule 49. The company’s memorandum and articles of association were, in accordance with a common practice of the day, expressed in very general terms which betrayed no indication whatever of the purpose of the company’s formation.
81 On 27 September 1957, Peter Whitchurch sent a five-page memorandum to OCOG in relation to the record film, to which he referred as both the “Long Film Version of Olympic Games” and “The Three Hour Film”. He suggested that the record film might, instead of being one very long film, comprise a number of concise films, one on each sport of about ten minutes in length. In support he pointed to the fact that most people were interested in only one or two sports and would not wish to sit through a three-hour film in order to watch only the footage of interest to them. He acknowledged that his suggestion would involve additional cost which he estimated at some £2,500. Then he went on to advise that he would be prepared to bear most of that cost if OCOG would give him certain rights. He stated:
“Vest in Peter Whitchurch the copyright or reproduction rights, to all remaining footage. There won’t be much, but I am constantly troubled by letter from varying places. Each letter requires work and I must recoup my costs from somewhere. As things stand at the moment I expect the Committee to repay these costs so far, when a final settlement is made with Mr Nette. After that settlement, there will still be troublesome work attached to minor requirements. If I may charge the client for these, without bothering the Organising Committee, I would be prepared to see the thing through to the death.” (emphasis supplied)
82 Peter Whitchurch’s memorandum also suggested that each ten-minute film be marketed at £26 each of which £11 would be for “print and reels”, £5 to Paul Talbot for sales commission, £5 to Peter Whitchurch for administration costs, and £5 to OCOG.
83 It seems clear that OCOG did not accept this offer. The minutes of a meeting of the Winding-Up Committee held on 25 October 1957 simply recorded as follows:
“Mr Nette reported that, following discussions with individual members of the Executive, he had advised the film producer, Mr P Whitchurch, that the Executive is not willing to provide any additional funds for the making of the record film and that this film should be restricted to the Finals of the various events making up the Games. Mr Whitchurch’s attention was drawn to the fact that the film was being made to meet the requirements of the International Olympic Committee and the various National Olympic Committees in accordance with the rules and, also, that this particular film is not intended as one particularly for individual sporting bodies or private persons who might desire sections only of the film. The Executive confirmed this view.”
84 On 15 April 1959, Nette wrote to Peter Whitchurch in relation to the record film. He expressed the hope that Peter Whitchurch had “completed [his] task of completing the whole film” and that copies had been sent to the IOC in Lausanne. Apparently Peter Whitchurch had raised a question “as to [the] price of prints to anyone wanting to buy”. Nette responded:
“I have discussed it with Mr Forristal [the Chairman of the Winding-Up Committee] and he has agreed that the sale price should give to [OCOG] the normal wholesale rate per 400 feet of black and white less the cost of the print from the laboratory.”
Nette’s letter sought Peter Whitchurch’s advice and comments on this proposal.
85 Peter Whitchurch replied on 20 April 1959. He observed that he had contracted to supply only one print and had used the least expensive technology for that purpose. Noting that Education Departments and persons overseas had now expressed interest in buying prints, he referred to an alternative technology as preferable because it was cheaper for the production of multiple prints. He stated:
“I firmly believe that if our one hour film had been cheaper we would have sold more. I similarly believe that if these films are cheap we will sell a lot.”
86 On 15 February 1960, OCOG wrote to Peter Whitchurch in the following terms:
“This confirms the verbal approval given to you from the Winding-up Committee to exploit the full set of the Organising Committee’s Record films [some nine hours of film] of the 1956 Olympic Games. This means that the sole sales rights for radio, television and any other sale possibilities are placed in your hands. It is of course understood that the royalty previously agreed upon is payable upon all footage sold.”
OCOG’s “royalty previously agreed upon” was apparently one penny per foot of film. This letter and the preceding correspondence referred to suggest that both OCOG and Peter Whitchurch were acting on the assumption that OCOG owned the copyright in the record film. Otherwise, why would Peter Whitchurch pay OCOG a royalty upon footage sold? The letter also provides some indication of what was meant by “sales rights”. It appears that OCOG and Peter Whitchurch were referring, not simply to selling prints to private individuals for their personal use, but also to selling for television broadcast. The reference to “sales rights for … television” does not make sense otherwise. It will also be noted that Peter Whitchurch was appointed as “sole” distributor of the record film.
87 Peter Whitchurch wrote to Nette of OCOG on 12 September 1960 setting out a proposal for dealing with the “residual rights” in the Films. The letter is not evidence. It has been lost. There is no issue as to whether the letter was written: the only issue is as to its content. There is in evidence an unsigned letter dated 17 June 1960 which appears to be a draft of the one sent in September. References in post-12 September correspondence to the letter of 12 September give rise to a strong inference that it was in the same terms as the earlier document of 17 June. I refer, in particular, to minutes of a meeting of the Winding Up Committee of OCOG held on 23 November 1960 and to a letter from OCOG of that date to Peter Whitchurch, both discussed below. The draft letter of 17 June 1960 was discovered by John Whitchurch from Peter Whitchurch’s files. If the letter of 12 September was substantially, or perhaps even slightly, different from the draft, Peter Whitchurch could be expected, particularly given the importance of the subject matter to him, to have taken care to keep the copy of it, whether or not he discarded the draft. I infer that the letter of 12 September 1960 was in substance identical with the draft of 17 June 1960 and I will in the future refer to Peter Whitchurch’s letter of 12 September 1960 without qualification.
88 Peter Whitchurch began his letter of 12 September 1960 by describing the films held by him. They were the Edited Films, that is, the one hour colour film, the twenty minute black and white “summary” film and the record film of approximately nine hours’ duration, and the Unedited Films. He split the Unedited Films into two categories: first, “all the offcuts of each sport,” that is, film exposed but not used; and second, “negative (x)” which he described as a copy of “all worthwhile footage on each sport”. He said that negative (x) was arranged by sport and was “the most comprehensive coverage [of the Games] now available”. He suggested that it be given to the “Film Librarian (Mr White) in Canberra” – presumably a reference to the Commonwealth National Library’s Film Division – so that it would have “a copy of all material shot – classified under its correct sport” (underlining in original). He said that his understanding was that the off-cuts belonged to the AOF and that he (Peter Whitchurch) was to discuss the question of their final disposal with Mr Tanner, the then Secretary-Treasurer of the AOF. It will be recalled that at the meeting of the Winding-Up Committee on 25 October 1957, it had been resolved that all “leftover” film after completion of the record film should be given to the AOF until the AOF should decide that it no longer required it, when it was to pass to the Commonwealth National Library.
89 Peter Whitchurch’s letter set out OCOG’s “financial interest in further prints from [the three edited] films, following established precedent and agreement” as follows:
“(a) Thecolour film. Either no profit at all or 50% of the excess charged to the customer over laboratory price. If you [OCOG] originate the order the whole excess over laboratory price less a fair charge for handling, the laboratory print, screening and despatch etc. Further prints in colour are most unlikely.
(b) The 20 Minute Film. This has been added to the series of Record Films and the Committee receives 1d. (One penny) per foot Royalty on each order. In other words (£3/5/8 per print).
(c) The Record Films. The same one penny per foot Royalty applies here as with the 20 Minute Film. The sum involved varies between 15/- for a print of Water Polo to £6/3/4 per print of Women’s Athletics.
Although desultory prints orders of (b) and (c) can be expected between now and the Rome Games you will agree that very few should be anticipated thereafter. On the other hand we should be in a position to render the necessary service, should anyone require a print in the years to come.”
(The words indicated by bold typeface are in one, but not another, version of the draft letter, while the word “should” is underlined in both.)
90 Peter Whitchurch asked that the “residual rights” in these films be assigned to him free of charge in recognition of his work on the Edited Films. He stated:
“Now that the song and dance is over and commercial possibilities virtually nil, I would like to offer to take over residual rights in order to be in a position to deal with whatever crops up.
It is impossible to assess their value so I suggest the Winding-Up Committee give thought to passing over the residual rights to myself, without financial consideration, to help offset the many duties I have had to perform gratis. Alternatively, if this is out of the question, then a token, arbitrary figure be [sic] agreed upon as a residual rights sale price.
If the assessment of value was based on a penny per foot Royalty, multiplied by the footage likely to be sold, then £100 would be a lot of money. Too much when you consider the work each (or any) … enquiry will involve.
Nevertheless I offer £100 as an arbitrary figure to purchase residual reprint and sales rights in all edited films of the 1956 Olympic Games in Melbourne.
If this figure is acceptable I would point out that you would always have a representative who knows exactly what happened, what is available, current laboratory prices, censorship regulations etc.
Surely a logical conclusion to all film activity.”(emphasis supplied)
The letter concluded with the following “summary”.
“Posterity would then have access to everything shot by:
(a) Ordering a sound copy of the One Hour Film, the 20 Minute Film or any one of the 25 Record Films – from Peter Whitchurch or his estate.
(b) Individual scene or total sport coverage from the more comprehensive storage in Canberra.
Disposal of all this footage is now an acute problem. I have provided safe storage for four years and am willing to take over storage of all finished films as outlined.
However I must now get rid of all surplus film by one means or another. Otherwise storage fees should, fairly, be paid.
I contend that no-one can better deal with future enquiries or requirements than myself, but if the above suggestion is not approved then I would be most anxious to get rid of everything.
Would you study the above carefully and give me your instructions.”
91 Peter Whitchurch’s letter of 12 September was considered by the Winding-Up Committee of OCOG at its meeting on 23 November 1960. The minutes of that meeting record that OCOG agreed that negative (x) should be given to the Film Librarian at the Commonwealth National Library in Canberra as archival material. The minutes summarise Peter Whitchurch’s offer in substantially the words set out above. This strongly suggests that his letter of 12 September 1960 was the same as, or very similar to, his draft of 17 June. The minutes record that
“[a]s the Committee wished to finalise its transactions in connection with these films, it approved acceptance of the £100 offered”.
92 OCOG wrote its letter of acceptance to Peter Whitchurch on 23 November 1960. The letter was signed by Nette for the Winding-Up Committee. Omitting formal parts, the letter was as follows:
“I enclose the Committee’s cheque for £2,783.6.1. in full and final settlement of the account between you and the Organising Committee.
The Winding-up Committee approves the transfer of the film as suggested in your letter of 12th September 1960 to the Commonwealth Film Librarian in Canberra.
The Committee also accepts your offer of 12th September last of £100. for the residual rights of reprint and sale in all the edited films of the 1956 Olympic Games in Melbourne but naturally this is subject to the right of the Organising Committee and the Australian Olympic Committee to obtain a copy of any of those films for their own purposes at laboratory cost plus cans and reasonable handling charges.
The Committee also accepts your offer of 21st June 1960 of £85. for the unused US film. [The letter dated 21 June 1960 from Peter Whitchurch to OCOG is not in evidence.]
As regards the remnants of film, you must get in touch with Mr Tanner (AOF) re action.
The balance due to you of £2783.6.1. is made up as follows :-
1. Amount owing to P Whitchurch – Olympic Salary as
approved 1100.0.?
2. Sundry travelling allowances 122.14.?
3. Record Film Contract – Committee Minute 10.1.1957 8500.0.?
4. Record Film additional cost of film for IOC 350.0.?
5. Out of pocket expenditure by PW on production costs
of the 20 minute, 1 hour and miscellaneous short
films for sundry buyers, including cost of prints,
these being cost plus items 8826.16.?
-------------- 18899.10.6.
6. Charges for hire of equipment and rooms, and work
by P Whitchurch in producing the above in 5 3446.11.5.
22346.1.11.
less sundry moneys received by P Whitchurch
personally on sale of films, for which he is
accountable to the Committee as agreed 3047.18.5.
19298.3.6.
less balance of moneys due in respect of film
equipment sold to him by the Committee under
Committee Minute of 17th December 1956 16329.17.5.
2968.6.1.
less further credits arising from sales
(a) of residual rights to future exploitation
of film £100
(b) of old out-of-date unused film £85 185.0.0.
£2783.6.1.
The above as far as I know finalises all outstanding matters.”
93 The two letters provide for: a gift of Unedited Film negative (x) to the Commonwealth National Library from which “individual scene or total sport coverage” could be purchased; a gift of Unedited Film offcuts to the AOF; and a grant to Peter Whitchurch of “residual rights of reprint and sale” in respect of the three Edited Films. Although there is an issue as to the meaning of the expression “the residual rights of reprint and sale in all the edited films”, it is clear from the close correspondence of the language in the two letters that OCOG intended the expression to take up Peter Whitchurch’s words to describe the rights granted.
94 There is in evidence an internal form of “Requisition for Supplies” of the Film Division of the Commonwealth National Library dated 28 February 1961. It reads, relevantly, as follows:
|
“ARTICLE |
Amount. |
|
Copies of 1956 Olympic Games Films as follows:-
1 print each of 26 record films for historical collection 1 do lending collection |
1000 - - |
|
1 print each of the 60 minute colour film for historical collection 1 do for lending collection |
130 130 |
|
To be purchased from: Peter Whitchurch, 59 Bundarra Road, Bellevue Hill. NSW |
_________ £1260 - - ” _________ |
Handwritten annotations suggest that the films described were received on 26 April 1961 (the annotations refer to them as being twenty two films for the historical collection and twenty two films for the lending collection). By a subsequent requisition form dated 29 May 1961 the sum of £260 for the two prints of the one hour colour film was varied to £385.18.8, making a further amount of £125.18.8 payable. A handwritten annotation on that form suggests that this further amount was paid on 8 June 1961.
95 It appears that Peter Whitchurch did not deliver negative (x) to the National Library or the “offcuts” to the AOF. This explains why they were later to be dealt with by his children and became stored at Filmworld by the time of the commencement of these proceedings.
96 The AOC submits that the agreement arising from Peter Whitchurch’s offer in his letter dated 12 September 1960 and OCOG’s acceptance dated 23 November 1960 did not effect an assignment of copyright in the Edited Films and conferred only “rights of reprint and sale”. TBF, on the other hand, submits that although the words “assignment” and “copyright” were not used, the agreement did effect an assignment of copyright.
97 OCOG’s copyright could be assigned to Peter Whitchurch only in writing signed on behalf of OCOG: see s 5(2) of the 1911 UK Act and ss 196(3), 207 and 239 of the Act. The only writing on which TBF relies is OCOG’s letter of 23 November 1960 to Peter Whitchurch.
98 As noted earlier, the photographs constituting the Films were and are artistic works: see the definition of “artistic work” in s 35(1) of the 1911 UK Act and s 10 of the Act. Copyright was defined in s 1(2) of the 1911 UK Act to mean
“the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever, to perform, or in the case of a lecture to deliver, the work or any substantial part thereof in public; if the work is unpublished, to publish the work or any substantial part thereof; and shall include the sole right, –
(a) …;
(b) …;
(c) …;
(d) …,
and to authorize any such acts as aforesaid.”
99 “Publication” was defined in s 1(3) of the 1911 UK Act to mean “the issue of copies of the work to the public” but not to include “the exhibition in public of an artistic work”. “Performance” was defined in s 35(1) of that Act to mean “any visual representation of any dramatic action in a work”.
100 From the commencement of the Act on 1 May 1969, copyright subsisted in the photographs by the operation of the Act: see s 207, but cf s 210(1). As from that commencement, the copyright in the artistic works being the photographs constituting the Films became:
“the exclusive right:
(a) …
(b) … to do all or any of the following acts:
(i) to reproduce the work in a material form;
(ii) to publish the work;
(iii) to include the work in a television broadcast;
(iv) to cause a television programme that includes the work to be
transmitted to subscribers to a diffusion service”
(s 31(1)(b) of the Act).
101 Was OCOG’s letter of 23 November 1960 effective to assign to Peter Whitchurch the sole right to do the things mentioned in s 1(2) of the 1911 UK Act set out above? By that letter, OCOG granted to Peter Whitchurch the right to “reprint” (in the terms of s 1 (2) of the Act to “reproduce”) the photographs of which the Edited Films consisted and to sell them. The AOC notes that Peter Whitchurch did not seek and was not granted a right of public performance of the Edited Films and submits that this tells against an assignment of copyright. However, this submission overlooks the fact that the copyright subsisted, not in the Edited Films but in the photographs of which they consisted, and a photograph cannot be “performed” in public as it contains no “dramatic action”. A photograph can be “exhibited” in public, but publication was, as noted above, defined not to include the exhibition in public of an artistic work. There was also no prohibition in the 1911 UK Act on artistic works (such as photographs) being broadcast. It was only in the Act that copyright in an artistic work was defined to include the sole right to “include the work in a television broadcast”: s 31 (b) (iii).
102 The position prior to the Act was described in the seventh edition of Copinger on the Law of Copyright, published in 1936, as follows:
“Subject to section 2, sub-section 2 of the [1911 UK] Act, [which deals with, inter alia, exhibition of works known to infringe copyright] there must have been some multiplication of the copies of the artistic work in order to make an infringement of copyright. The fact that copies lawfully produced are used for purposes other than those permitted by the proprietor of the copyright, does not constitute an infringement of copyright, though it may be a breach of contract.”
Subject to one qualification, therefore, Peter Whitchurch was in fact given all the rights comprised in the copyright in the photographs constituting the Edited Films.
103 That qualification is that he was not assigned the “sole right” to “reproduce” the photographs comprised in the Edited Films.
104 The AOC submits that the following is the better view of the agreement concluded on 23 November 1960. By 1960, Peter Whitchurch was fulfilling the role previously played by Fremantle, that is, that of OCOG’s agent for the purpose of dealing with potential buyers. That this was so is supported by OCOG’s letter of 15 February 1960 confirming its approval of his right to “exploit” “the Organising Committee’s Record films”. However, Peter Whitchurch noted in his letter to OCOG of 12 September 1960, that the prospects for further sales appeared to be slim. OCOG was also seeking to “finalise its transactions in connection with [the] films”. It therefore made sense that, rather than continuing indefinitely to receive small royalties whenever Peter Whitchurch made sales, OCOG was to receive a once only payment for the grant to him of the right to reprint and sell the Edited Films on the basis that he would retain the full proceeds of all future sales. According to AOC’s submission, the arrangement was one of convenience and practicality and was not intended to involve, and did not involve, an assignment of copyright.
105 The AOC draws attention to the fact that OCOG had not acceded to Peter Whitchurch’s request in his memorandum of 27 September 1957 referred to earlier that OCOG “[v]est in [him] the copyright or re-production rights, to all remaining footage”. The AOC submits that this shows that OCOG and Peter Whitchurch were alive to the difference between copyright and non-exclusive rights of reproduction, and suggests that they would have provided for an assignment of copyright expressly three years later if this is what they had intended to achieve. Of course, as noted above, there was a difference between copyright and a right of reproduction only if the right of reproduction was non-exclusive or limited as to time.
106 TBF contends that the word “residual” in the expression “residual rights of reprint and sale” signifies that OCOG was granting to Peter Whitchurch all its remaining rights in the Edited Films after the Rules and Regulations of the IOC and the agreements referred to earlier were taken into account.
107 The word “residual” is equivocal. It could mean, as TBF submits, that Peter Whitchurch was to have all the “residue” of OCOG’s own right of reprint and sale, that is, the right of reprint and sale to the exclusion of all others, including OCOG itself, but subject to OCOG’s existing agreements with CSA, Coca Cola and Olympic Tyre & Rubber. On the other hand, it could mean that the right of reprint and sale being granted to Peter Whitchurch was the non-exclusive right for the future of reprint and sale, but subject to those other agreements. While I do not accept the AOC’s submission that the fact that OCOG had already granted rights in respect of the Edited Films to others necessarily points against an intention to assign the copyright to Peter Whitchurch, I think the context supports the latter construction nonetheless. Peter Whitchurch had told OCOG that he was receiving requests for film from prospective buyers and simply wanted to be able to satisfy requests in the future without having to deal with OCOG every time. The agreement authorised him to do so. However, it was not necessary in order that this limited objective be achieved that he have the right to do so to the exclusion of all others, including OCOG itself. The grant was of a right of the same kind that Peter Whitchurch had been exercising in the past, that is, non-exclusive, and was “residual” in the sense that it covered the future.
108 There are three particular matters which, to my mind, tell against a construction according to which Peter Whitchurch was given the “sole” right of reprint and sale. The first is the absence of words of divesting, such as “assign”, “transfer”, “exclusive” or “sole” or, of course, “copyright” itself. The parties do not appear to have intended to produce the result that would have been indicated by the use of such terms. Of course, an assignment of OCOG’s copyright could have been effected without the use of any particular words. But it should not be readily concluded that copyright was assigned when the parties did not use any of the terms that one might reasonably expect to find associated with such an assignment as distinct from a grant of (non-exclusive) rights.
109 The second matter is that OCOG expressly “reserved” for itself and for “the Australian Olympic Committee” (at that stage the AOF) the right to obtain a copy of any of the Edited Films “for their own purposes” “at laboratory costs plus cans and reasonable handling charges”. This reservation shows that OCOG was not, as TBF submits, prepared to divest itself of all rights in, and concerns with, the Edited Films. The expression “for their own purposes” is, in my view, sufficiently broad to encompass a right to reprint and sell any of the Edited Films, that is, to do the very thing OCOG was authorising Peter Whitchurch himself to do. It would be artificial to read down the reservation so that it, for example, permitted OCOG and “the Australian Olympic Committee” to make copies of the film to be exhibited by them but did not permit them to sell or give the films to others.
110 The third particular matter which tells against an assignment of copyright arises from the provision for the passing of the Unedited Films to the Commonwealth National Library. Peter Whitchurch noted in his letter of offer that “[p]osterity would … have access to everything shot by … [i]ndividual scene or total sport coverage from the more comprehensive storage in Canberra”. This was a recognition that the photographs constituting the Unedited Films would be available to be bought or borrowed from, and to that end able to be reproduced by, the National Library. But if, as TBF contends, there was to be a sale to Peter Whitchurch of the copyright in (sole right of reproduction of) the photographs constituting the Edited Films, this recognition would be falsified to the extent that the photographs constituting the Edited Films were also found in the Unedited Films. We know from Peter Whitchurch that negative (x) was “the most comprehensive coverage” of the Games. The most interesting and valuable footage in the Unedited Films was no doubt selected for the Edited Films. I infer that all or most of the photographs constituting the Edited Films also remained part of the Unedited Films. (The fact that the National Library may have chosen not to reprint from the Unedited Films but rather to buy two copies of the one hour film and the record film from Peter Whitchurch in 1961 is beside the point: what matters for present purposes is its right of reproduction.)
111 In sum, it remained permissible for OCOG, the AOF and the National Library to reproduce the photographs which constituted the Edited Films: Peter Whitchurch was not given the sole right to do so.
112 It seems to me that on the proper construction of the contract between OCOG and Peter Whitchurch, OCOG granted to Peter Whitchurch, in consideration of a payment by him to OCOG of £100, a non-exclusive licence which is, for present purposes, adequately described in the parties’ own words set out earlier: to reprint and to sell the Edited Films. OCOG considered that rather than wait for royalties to come in sporadically as it had done previously, it would take the lump sum payment “up front” and allow Peter Whitchurch to keep the proceeds of his future sales. This was not a disposal of “the rights of the one-hour film” (see the minutes of the meeting of the Winding Up Committee of OCOG held on 10 May 1957 referred to earlier and again below). Rather, the arrangement seems to have been simply one of convenience.
113 I do not see the fact that Peter Whitchurch sold prints of the Edited Films to the Commonwealth National Library as being inconsistent with the construction described. It is readily understandable that the National Library might have preferred to have a copy of the Edited Films, themselves objects of historical interest, as against having only the same photographs in undifferentiated form in the Unedited Films.
114 TBF points out that when referring in his letter of 12 September 1960 to Leni Riefenstahl’s films of the 1936 Games, Peter Whitchurch said “[t]he copyright and sales exclusivity of prints are apparently, and I consider rightly, vested in her”. However, the rest of the letter does not necessarily indicate that he expected to be put in the position that he described in relation to Riefenstahl. Rather, his letter addressed only the making and selling of prints in response to orders and accepted that over the preceding four years “commercial possibilities” had become “virtually nil”. In any event, the critical issue before me is that of the proper construction of OCOG’s reply dated 23 November 1960 and although Peter Whitchurch’s initiating letter of 12 September 1960 may be relevant to that issue, it is far from decisive.
115 Four other matters should be mentioned.
116 First, OCOG’s “acceptance” of 23 November 1960 was strictly a counter-offer in that it incorporated the new term that OCOG and the AOF be entitled to obtain copies of the Edited Films for their own purposes at “laboratory cost plus cans and reasonable handling charges”. However, acceptance of this counter-offer can be inferred from Peter Whitchurch’s failure to object to the setting off by OCOG of the £100 against the sums it owed to Peter Whitchurch, and his proceeding to sell copies of the Edited Films (for example, to the Commonwealth National Library) as though a contract was on foot: see Empirnall Holdings Pty Ltd v Machon Paull Partners Pty Ltd (1988) 14 NSWLR 523 (CA) and cases there referred to.
117 Second, TBF submits that the right of “sale” given to Peter Whitchurch should be read as including a right to sell rights in the Edited Films. It points to the minutes of a meeting of the Winding-up Committee of OCOG on 10 May 1957 quoted from earlier, which, it says, supports this construction. For convenience, I repeat as follows the relevant passage from those minutes:
“The Executive also decided that the rights of the one-hour film be disposed of in Australia to one purchaser if a reasonable price could be received for it. As an alternative it will be necessary to sell individual copies, sales tax to be allowed for.”
TBF also points out that OCOG’s letter of 15 February 1960 set out earlier contemplated sales to radio and television stations. TBF submits that the term “sale” in the expression “rights of reprint and sale” should be understood as authorising Peter Whitchurch, not only to sell copies of the Edited Films, but also to license broadcasts of them. But purchasers of copies of the Edited Films did not need a “licence” in order to broadcast the photographs on television because, as noted earlier, the 1911 UK Act did not give the owner of the copyright in an original artistic work such as the photographs, the exclusive right to include the work in a television broadcast. That monopoly was not granted until 1 May 1969 when the Act came into force. Therefore, as at 23 November 1960, Peter Whitchurch did not need to be given authority to license broadcasts of the Edited Films. He did not need authority to license purchasers of the Edited Films to exhibit them in public, for reward or otherwise, because public exhibition of an artistic work, such as photographs, did not form part of the monopoly given to the owner of the copyright in such a work by the 1911 UK Act (nor does it form part of that monopoly under the Act: s 29(1)(a), (3)). There is nothing in the correspondence or the circumstances which would support an implied term that Peter Whitchurch was entitled to sell copies of the Edited Films only on condition that they not be broadcast by television or publicly exhibited, for reward or otherwise.
118 Third, there is a question whether OCOG assigned to Peter Whitchurch title to the property in the physical Edited Films. Neither Peter Whitchurch’s letter of 12 September 1960 nor OCOG’s reply of 23 November 1960 refers to Peter Whitchurch’s purchasing the physical Edited Films in addition to being granted a right of reprint and sale. As the concluding paragraphs of his letter show, Peter Whitchurch was offering to “take over storage of all finished films”. The “finished films” must mean the Edited Films, as Peter Whitchurch was proposing that the Unedited Films go to the AOF and the National Library. The word “storage” suggests that Peter Whitchurch was proposing that he have possession but not ownership. His subsequent reference to the charging of “storage fees” for the Unedited Films if he were to retain possession of them supports this view. He used the word “storage” to denote the keeping safe of someone else’s property: it would be nonsense for him to speak of charging for the storage of his own property. It made sense, of course, that he hold a copy of the Edited Films: possession of them would facilitate his “reprint and sale” activity. Were it not for this arrangement, it would have been necessary to imply a term into his contract with OCOG to the effect that he was to have such access to the Edited Films as he might reasonably require from time to time for that purpose.
119 Fourth, there is a question whether Peter Whitchurch was entitled to assign his contractual rights. Although contractual rights are normally capable of assignment (see, for example, Conveyancing Act 1912 (NSW) s 12), there is “no reason why the parties to an agreement may not contract to give its subject-matter the quality of unassignability” (Helstan Securities Ltd v Hertfordshire County Council [1978] 3 All ER 262 at 266). The AOC submits that it should be implied as a term of the agreement between OCOG and Peter Whitchurch that he would not assign the benefit of the contract, that is, the right of reprint and sale. In support, it submits that the personal connection of Peter Whitchurch as director of the Official Film Unit during the 1956 Games and his knowledge of the content of the various films were matters which he emphasised in his letter of 12 September 1960 and by which he sought to persuade OCOG to grant him the right of reprint and sale. For example, he stated:
“these films represent countless hours of toil and are part of me. Therefore I would like to stay associated with them.
…
I suggest the Winding-Up Committee give thought to passing over the residual rights to myself, without financial consideration, to help offset the many duties I have had to perform gratis.
…
If this figure [£100] is acceptable I would point out that you would always have a representative who knows exactly what happened, what is available, current laboratory prices, censorship regulations etc.” (emphasis supplied)
He also said that “posterity” would have access to all the films of the 1956 Games by, inter alia, ordering a copy of an Edited Film “from Peter Whitchurch or his estate”.
120 It is arguable that these references indicate that the licence was intended to be granted to Peter Whitchurch personally, or to him personally and after his death to his legal personal representatives. It is arguable that although the contract was in a sense fully executed on Peter Whitchurch’s side by payment of the whole consideration of £100, his offer was based upon the continuing association of himself or of his “estate” with the Films. If the agreement contained the term suggested by the AOC, any purported assignment by Peter Whitchurch or his legal personal representatives would be ineffective to vest the contractual rights in the assignee (see United Dominions Trust (Commercial) Ltd v Parkway Motors Ltd [1955] 1 WLR 719 at 724; Helstan Securities Ltd v Hertfordshire County Council, above; Linden Gardens Trust Ltd v Lenesta Sludge Disposals Ltd [1994] 1 AC 85 at 108; Re Turner Corp Ltd (in liq) (1995) 17 ACSR 761; Don King Productions Inc v Warren [1998] 2 All ER 608 at 632; Westgold Resources NL v St George Bank Ltd (1998) 29 ACSR 396 (WA/Anderson J) at 415-416), and would amount to a breach of contract, and, perhaps, a wrongful repudiation of contract. In the event, I do not need to decide the present issue and refrain from doing so.
121 To summarise, OCOG did not sell the copyright in the Edited Films to Peter Whitchurch. Rather, it granted him a non-exclusive right to reprint them and sell the copies, and this was not inconsistent with the agreements already entered into by OCOG with CSA, Coca Cola and Olympic Tyre & Rubber. Instead of a régime of periodic royalty payments to OCOG on the occasions of sales, for the once only payment of £100 that he made to OCOG, Peter Whitchurch was entitled to retain the proceeds of all his future sales. He was, however, obliged to provide a copy of the Edited Films to OCOG or the AOF if so requested, upon payment of only the cost of production and delivery. Title to the physical Edited Films also remained with OCOG, although it was a term of the contract that Peter Whitchurch should have possession of them for the purpose of exercising his contractual right to reprint and to sell. Peter Whitchurch had possession of the physical Edited Films (and, for that matter, of the other physical Films) as bailee.
THE PASSING OF COPYRIGHT FROM OCOG TO THE AOC
122 OCOG was deregistered on 30 April 1974 and so was “dissolved” on that date: Companies Act 1961 (Vic) s 308. The AOC submits that the copyright in the Films and the general property in the physical Films passed to it from OCOG in one of two ways: the first is that upon dissolution OCOG held its surplus assets on trust for the AOF, the predecessor of the AOC, by virtue of OCOG’s memorandum and articles of association; the second is that the surplus assets of OCOG vested in the Commissioner for Corporate Affairs, later in the National Companies and Securities Commission, and yet later in the ASC, which by deed dated 8 December 1997, as amended by deed dated 5 June 1998, assigned the copyright in the Films and the general property in the physical Films to the AOC.
OCOGÕAOFÕAOF IncÕAOC
123 Article 8 of the Olympic Charter in force in 1956 provided:
“8. All profits and funds derived from the holding of the Olympic Games (after payment of all proper expenses in connection with their organization and of any contribution to the funds of the International Olympic Committee) are paid to the National Olympic Committee of the country in which the Games are held and are necessarily applied to the promotion of the Olympic Movement or the development of amateur sport.”
124 That Charter recorded that the AOF was recognised as the National Olympic Committee for Australia. The constitution of the unincorporated body, the AOF, did not deal expressly with the holding of property and did not, for example, provide for the appointment of trustees. It did however, provide for an “Executive” which was to have power to exercise, between meetings of the AOF, the power, management and control vested in the AOF. The constitution provided for office bearers in the form of a President, Vice-President and Secretary-General. I presume that “the property of the AOF” was held in trust by the members of the Executive or other persons.
125 The minutes of the seventeenth meeting of the Winding-Up Executive of OCOG held on 25 October 1957 contain the following:
“Mr Tanner [Secretary-Treasurer of the AOF] made the request to the Committee that the balance of exposed film, after the Committee’s film had been produced, be given to the AOF for its own use. After discussion, the Executive agreed that all leftover film, remaining after Mr Whitchurch, the production director, had made the record film, be vested in the Australian Olympic Federation for use in such way as the AOF sees fit to use it, subject to the proviso that if and when the AOF decides that it no longer requires any or the whole of the film so vested in it, such film is to be given to the Commonwealth National Library at Canberra for the film archives.”
This decision of the Winding Up Executive of OCOG did not give rise to a trust.
126 Clause nine of Memorandum of Association of OCOG provided:
“If upon the winding up or dissolution of the Organising Committee there remains after satisfaction of all its debts or liabilities, any property whatsoever the same shall not be paid to or distributed among the members of the Organising Committee but shall be given or transferred to the Australian Olympic Federation to be applied wholly for the promotion of the Olympic movement or the development of amateur sport.”
127 The memorandum of association was dated 13 July 1951 and was subscribed by eleven individuals.
128 As noted earlier, on 24 April 1985 the AOF Inc replaced the AOF as the National Olympic Committee for Australia. By s 8(1) of the Associations Incorporation Act 1981 (Vic) under which the AOF Inc was incorporated, all assets that were held on trust for or on behalf of the AOF were vested in the AOF Inc upon its incorporation. Also as noted earlier, the AOF Inc subsequently, by special resolution passed on 25 June 1990 but not notified to and certified by the Registrar of Incorporated Associations until 17 February 1994, changed its name to that of the AOC.
129 Was the surplus property of OCOG including the copyright in the Films and the general property in the physical Films held on trust for or on behalf of the unincorporated body, the AOF, as at 24 April 1985? The answer depends in the first instance on whether they became the subject of a trust for the AOF “upon the winding up or dissolution” of OCOG.
130 The AOC submits that clause 9 created an express trust in favour of the AOF in respect of the property of OCOG remaining after satisfaction of all its debts and liabilities, or, alternatively, that it would have been unconscionable for OCOG to assert that it held that remaining property beneficially, and, accordingly, that it held it on a constructive trust for the AOF.
131 I do not need to reach a final view on the present question because, if there was no trust, nonetheless for reasons given later I decide that title has passed to the AOC by the alternative course relied on by it and discussed below. However, I make the following observations in relation to the first chain of title outlined above.
132 An historical company extract in evidence reveals that OCOG was “deregistered” on 30 April 1974. Deregistration (or “striking off” the register) was provided for at the time in s 308 of the Companies Act 1961 (Vic). The evidence does not reveal the ground on which the Victorian Commissioner for Corporate Affairs acted under that section. It may have been the “cessation of business” ground (s 308(1), (2)) or the winding-up ground (s 308(3), (4)). The evidence does not reveal whether OCOG was wound up voluntarily or under an order of the court, that is, the Supreme Court of Victoria, or even whether the many documentary references to the “Winding-Up Committee” of OCOG indicate that there was a formal winding up under the statute at all. One could confidently expect, if OCOG had been wound up by the court, to find references to the Supreme Court of Victoria in the documents in evidence. But in the case of a voluntary winding up too, a liquidator must be appointed, yet there is no reference to a liquidator in those documents either.
133 Section 264 of the Companies Act 1961 (Vic) provided as follows:
“264. Subject to the provisions of this Act as to preferential payments the property of a company shall, on its winding up, be applied in satisfaction of its liabilities equally, and subject to that application shall unless the articles otherwise provide be distributed among the members according to their rights and interests in the company.”
134 The relationship between the equivalent provision of the Companies Act 1948 (UK), namely s 302, and a provision of a memorandum of association having some similarity to clause 9 of OCOG’s, was considered in Liverpool and District Hospital for Diseases of the Heart v Attorney-General [1981] Ch 193 (the “Liverpool Hospital” case). There were also differences between that case and this. For example, in that case the memorandum of association provided for a transfer of surplus assets to an institution or institutions having similar objects to those of the company – providing, maintaining and managing a hospital for the treatment of heart diseases and the promotion of research into the causes and cure of such diseases. Again, the winding up was by the court and so s 265 of the Companies Act 1948 (UK) was applicable. That section provided:
“The court shall adjust the rights of the contributories among themselves and distribute any surplus among the persons entitled thereto.”
The identical s 247(2) of the Companies Act 1961 (Vic) almost certainly did not apply to the winding up of OCOG because the provision discussed applied only to a winding up by the court.
135 Notwithstanding the differences, the Liverpool Hospital case, if followed by me, is alone authority for the proposition that clause 9 of OCOG’s memorandum of association did not produce the result, contended for by the AOC, that its surplus assets were held on trust for the AOF. The AOC’s contention that there was a trust, whether express or constructive, was based only on clause 9.
136 Further difficult issues would have arisen if it had been necessary for me to deal fully with this part of the case. These include, but are not limited to the following: the effect of the AOF’s being unincorporated at the time; the enforceability of clause 9 on a basis other than that of trust, as recognised in the Liverpool Hospital case; whether the provision in clause 9 for a gift to the AOF “to be applied wholly for the promotion of the Olympic movement or the development of amateur sport” revealed a “charitable intent” (cf Bathurst City Council v PWC Properties Pty Ltd (1998) 157 ALR 414); whether a trust arose by reason of the conjunction with clause 9 of other circumstances (cf College of Law (Properties) Pty Ltd v Willoughby Municipal Council (1978) 38 LGRA 81; Aboriginal Hostels Ltd v Darwin City Council (1985) 33 NTR 1). Neither the Liverpool Hospital case nor these other matters were explored in submissions. If it had been necessary for me to resolve this part of the case, it would have been necessary for me to invite further submissions in relation to it.
OCOGÕASCÕAOC
137 In my view, OCOG’s copyright in the Films and its general property in the physical Films have become vested in the AOC in the second manner described. There is no evidence, other than that already referred to, that OCOG disposed of any of its rights in respect of the Films. Therefore, by the operation of s 310 of the Companies Act 1961 (Vic), upon dissolution its property rights vested in the Victorian Commissioner for Corporate Affairs. That property then passed to the National Companies and Securities Commission (see the Companies (Application of Laws) Act 1981 (Vic) s 23 and the Companies (Victoria) Code ss 460 – 464) and then, as from 31 July 1992 to the ASC (see the Australian Securities Commission Act 1989 ss 253 – 257 (inserted by s 23 of Act 110 of 1991), esp s 254).
138 The two deeds between the ASC and the AOC referred to earlier are in evidence. Clause 3 of the deed dated 8 December 1997 provided, inter alia, as follows:
“In consideration of the payment of $1.00 (receipt of which is acknowledged), the ASC hereby assigns and transfers and agrees to assign and transfer to the AOC all of its right title and interest in the copyright in Australia and throughout the world and all other rights of a like nature now subsisting or hereafter arising in and in respect of the Melbourne Olympic Films or any of them (‘Copyright’):
(a) pursuant to section 460 of the Code (if the Copyright was held on trust by OCOG); and
(b) pursuant to section 462 of the Code (if the Copyright was held by OCOG in its own right),
and the ASC agrees to do everything on its part reasonable and necessary (including the execution of documents) at the reasonable cost and expense of AOC to effect or confirm the assignment and agreement to assign contained in this clause.”
The “Melbourne Olympic Films” were defined by reference to a schedule which is similar to that annexed to the application and amended statement of claim. It is not in dispute that these are the Films.
139 Because I am not persuaded that by the operation of clause 9 of the memorandum alone OCOG held the copyright in the Films on trust, argument was not directed to any other basis on which it may have done so, and subclause 3(a) refers only to the holding of the Copyright on trust, that subclause has no scope for operation and I need not discuss s 460 of the Companies Code.
140 Subsection 462(1) of the Companies Code provided as follows:
“462 (1) Upon proof to the satisfaction of the Commission that there is vested in it by force of section 461 any estate or interest in property, whether solely or together with any other person, of a beneficial nature and not merely held in trust, the Commission may get in, sell or otherwise dispose of, or deal with, that estate or interest or any part of that estate or interest as it sees fit.”
141 It will be noted that the deed related only to copyright “and rights of a like nature” in the Films and not to ownership of the physical Films. Accordingly, the amending deed of 5 June 1998 was executed to insert immediately after the words “all of its right title and interest in the copyright in Australia and throughout the world” in clause 3 of the deed dated 8 December 1997, the words:
“and all right, title and interest in and to or in respect of any of the Melbourne Olympic Films themselves or any copies thereof presently held in the custody of Comcopy Pty Limited and all of its right, title and interest in and to any agreement or other rights arising as a result of any dealings between OCOG and Peter Whitchurch and his successors and assigns or persons claiming through him in respect of the Melbourne Olympic Films”
142 Importantly, and notwithstanding the use of the word “hereby” in clause 3 of the deed dated 8 December 1997, the assignment and transfer for which that clause provided has not yet been effected because, by clause 2 of the deed, the “assignment and agreement to assign” in clause 3 were expressed to be subject to a condition precedent. Clause 2 was as follows:
“The assignment and agreement to assign in clause 3 will not be of force and effect unless and until the first to occur of the following:
(a) the Court holds or finds in the Proceedings that copyright or any right title or interest in the copyright in the Melbourne Olympic Films or in any of them was vested in OCOG as at the date of its dissolution or makes a final order in the Proceedings [proceeding NG 49 of 1997] consistent with such a holding or finding; or
.............................................................................................................. ”
Because, as will appear later, I now so “hold” and “find”, the condition precedent will be satisfied upon publication of these Reasons with the result that the AOC’s chain of title becomes complete at that time.
143 The respondents have made no point of the fact that the assignment and agreement to assign from the ASC to the AOC were not effective prior to the commencement the proceedings. At one time they made a point that it was not until 5 June 1998, in the course of the hearing, that the deed dated 8 December 1997 between the ASC and the AOC was amended so as to provide for an assignment of all the ASC’s right title or interest in the physical Films. The respondents later abandoned this point, reserving their position as to costs. But, again, as in the case of the copyright in the Films, the respondents have made no point of the fact that the AOC had not taken title to the physical Films from the ASC prior to the commencement of the proceedings.
ESTOPPEL
Factual background
144 TBF submits that the AOC is estopped from denying Peter Whitchurch’s title to the copyright in the Films and to the physical Films. This submission makes it necessary for me to review in some detail the considerable body of evidence as to what happened in relation to the Films between the agreement between OCOG and Peter Whitchurch of 23 November 1960 and the purported sale by PWP to TBF in December 1995 – a period of thirty five years.
145 As noted earlier, in 1961 Peter Whitchurch sold two copies of the record film and two copies of the one hour film to the Commonwealth National Library’s Film Division. It will be recalled that he was required by the terms of his agreement with OCOG to provide the National Library with a copy of “negative (x)”. According to Benson, Peter Whitchurch attempted to give “negative (x)” to the “National Archives”. She said that in the early 1970s “a woman from the National Archives” came to inspect Peter Whitchurch’s “films of the 1956 Olympic Games” in the garage at his home and told him that “the Archives” would take them provided he first catalogued them. However, according to Benson, at the time Peter Whitchurch was in a wheelchair and was physically incapable of cataloguing the films and so nothing came of her offer.
146 The next dealing with the films of which there is any evidence before me was in 1975 – more than fourteen years after the agreement of 23 November 1960. On 21 April 1975, Peter Whitchurch entered into a written agreement with “Cappy Productions Inc/President Bud Greenspan” (“Cappy”) of New York to provide “one 16 mm ‘A’ Wind Color Negative of the library film material on the Melbourne Olympic Games”. The agreement authorised Cappy to use the material “for a television series about the Olympic Games called THE OLYMPIAD”. For this right, Cappy agreed to pay US$5,000 plus US$4.00 per foot of film in excess of 1,250 feet used in the television series. As well, Cappy undertook to pay the laboratory cost involved in the manufacturing of the prints and the cost of transportation and insurance. The agreement provided that Cappy was entitled to use the film only for the television series named, and was to have no right to use it or reprint it for any other purpose or to sell or give it to a third party.
147 On 17 October 1981, Peter Whitchurch died. He left a will dated 21 November 1979 and a codicil dated 16 January 1980 to that will. He left his estate to his wife Elsie Whitchurch and appointed, in the events that occurred, her and his son John Whitchurch as executors. Probate No 936269 of the will and codicil were granted to them on 11 May 1982.
148 So far as the evidence reveals, it was not until 1983, nearly twenty three years after the OCOG-Peter Whitchurch agreement, that any substantial interest came to be shown in the Films. And that interest was shown by TBF.
149 According to John Whitchurch, in approximately August 1983 he received a telephone call from a person who said:
“My name is Jim Jacobs. I am from a company called Big Fights Inc. I have spent considerable time with the people at television stations and the National Library sourcing the copyright owner for the official films of the 1956 Olympic Games. They told me that their records referred to the owner as Peter Whitchurch.” (emphasis supplied)
150 John Whitchurch claims that he told the caller (“Jacobs”) that Peter Whitchurch was deceased and that he and his mother were the executors of his will. Jacobs arranged to meet John Whitchurch later the same day. According to John Whitchurch, about two hours later, Jacobs arrived in a black chauffeur driven limousine, the two men went through Peter Whitchurch’s files relating to the Films, and John Whitchurch gave Jacobs a copy of the letter of 23 November 1960 from OCOG to Peter Whitchurch. (A letter from John Whitchurch to Jacobs dated 23 February 1984 discussed below refers to their having met on 23 June 1983. Accordingly, it may be that the telephone conversation and meeting took place on that date rather than in August 1993.)
151 It is noteworthy that through Jacobs (a) TBF contacted John Whitchurch as a result of Jacobs’ researches in the United States, and (b) John Whitchurch gave TBF a copy of Peter Whitchurch’s “document of title” from the outset. While it is not impossible that there was a further document by which Peter Whitchurch derived title from OCOG, apparently it was not to be found among his papers in 1983. I put the possibility to one side and think it highly probable that his only document of title was OCOG’s letter to him dated 23 November 1960.
152 As a result of the discussions between John Whitchurch and Jacobs, a written agreement was entered into between PWP and TBF in September 1983. The agreement was signed by John Whitchurch on behalf of PWP on 20 September 1983 and by Jacobs on behalf of TBF on 28 September 1983. As noted earlier, PWP had been incorporated under the Companies Act 1936 (NSW) on 6 September 1957 under the name “Peewhit Pty Ltd”. The subscribers to its memorandum and articles of association had been Peter Whitchurch and his wife, Elsie Whitchurch. The company had changed its name to its present name on 1 March 1963. But this is the first occasion of which there is evidence before me of PWP’s purporting to deal with any of the Films. The evidence of John Whitchurch is that, so far as he is aware, there was never a written assignment of copyright between his father and PWP.
153 This first agreement between PWP and TBF was for the supply by PWP to TBF of 16 mm film “wherever possible ... to be colour composite” as follows: “The 1-hour ‘Official’ film”; “All events of Men’s Athletics” (screening time said to be 2.93 hours or two hours and fifty six minutes); “Any footage available on Rafer Johnson or the Decathlon which is unedited” (screening time at least thirty minutes); and “The Boxing film” (screening time said to be seventeen minutes). (The interest in Rafer Johnson is perhaps explained by the fact that he was to light the “Olympic Flame” at the 1984 Games to be held in Los Angeles.) PWP agreed to provide TBF with copies of these films at TBF’s expense. The agreement stated:
“The Rights granted by [PWP] to [TBF] are non-exclusive rights for Television and Cable Television showings only in the United States of America, its Territories and possessions and Puerto Rico. All other rights (including theatrical or cinema rights) are expressly excluded from this agreement.”
TBF was also granted the right to “assign or sub-license” its rights under the agreement to “a Television Network or Networks and/or Cable Television”, within the area described.
154 The licence fee, which was payable by TBF in full immediately, was $16,000. TBF was also to pay all processing costs agreed at US$0.50 per foot and any additional costs for spools, cans, air freight and insurance. The licence was for four years from the date on which PWP dispatched all the films. PWP granted TBF an option to renew the licence for a further period of four years by notice given within the thirty days prior to the expiration of the initial licence, accompanied by payment of a licence renewal fee of US$16,000. PWP also granted TBF the right to acquire additional footage of the 1956 Olympic Games without any additional licence fee but upon payment of US$1 per foot for processing and handling.
155 The agreement also contained the following clause:
“Whitchurch [the agreement’s mode of reference to PWP] represents and warrants that it has the Right to grant the Rights granted herein and such grant of rights in no way infringes upon any rights of any third party.”
156 Some five months later, on 23 February 1984, John Whitchurch wrote at length to Jacobs. The letter was on the letterhead of PWP and John Whitchurch signed it as a “Director” of PWP. He said first that he assumed that TBF had received all the films to which their agreement of September 1983 related. The letter discussed various other matters, then stated:
“I have advised our solicitor that at this stage I am not prepared to complete any contracts with Cappy Productions and am seeking further information as to what can be done at this end. Quite simply, there is a definite feeling of mistrust from this end.”
It appears that this “mistrust” stemmed from the fact that John Whitchurch believed that Cappy, in breach of its agreement with his late father dated 21 April 1975, had used the footage supplied to it by him otherwise than in making “THE OLYMPIAD” television series.
157 In his letter to Jacobs, John Whitchurch went on to discuss the cost that PWP had incurred in providing TBF with the film and invoiced TBF for US$2,793.17. He also referred to various other costs incurred in restoring the master films and asked for a contribution of around $2,000 (the currency is not identified) from TBF. The evidence does not reveal whether either amount was ever paid.
158 On 13 June 1984, John Whitchurch, again as a director of PWP, wrote to Jacobs. He referred to a telephone conversation on the evening of the previous Friday, 8 June, during which Jacobs had referred to a claim made by a Mr Lee Cog [apparently Lecoq – see below], from France, that he owned the rights to the “official” film of the 1956 Games and that that official film was called “Rendezvous au Melbourne”. John Whitchurch stated that “Rendezvous au Melbourne” was not the official film of the Games at all; that while the French film unit which had produced “Rendezvous au Melbourne” (“Productions CSA”) had been permitted by OCOG to make that film, according to his understanding it had been granted the right to exploit the film for a period of two years only; and, finally, that even if “Mr Cog” owned the physical Films he would not be able to establish that he owned “the ‘image’ embodied within the celluloid” because the French film unit had been required to pay for the right to film the Games but had never done so and had in fact “[gone] broke”. It is not clear what the source of John Whitchurch’s understanding was. In oral evidence, he said that he recalled reading of the two year limit in some papers in the bottom drawer of his father’s filing cabinet. There was later correspondence about the allegations made by Mr Lecoq to which it is not necessary to refer.
159 On 25 June 1984, John Whitchurch, again as director of PWP, wrote to “Hilliard David & Associates, Advertising Agent”, offering footage of the Games for that company’s video library to be displayed only to staff or potential customers. The letter was as follows:
“This company [PWP] owns the copyright in the official film of the 1956 Melbourne XVIth Olympiad.
We have in the past, experienced problems trying to meet advertisement deadlines, like many other people, and since the 1956 Olympic Games footage has been so popular over the years for advertisement purposes we have decided to put the One hour ‘Official’ film on ½ inch VHS tape and propose supply complete with the shot list or the master footage, for display to prospective users as it is the most popular of the 52 separate films involved.
We hold in excess of 250,000 feet of material pertaining to the Melbourne Olympiad of which this film is only a small part as well as many other subjects that are also useable (eg: Redex Trials currently included in the ANZ Bank’s ‘Winner’ Commercials.) and in due course we hope to follow this matter up with you in order to establish an advertising materials commercial video library.
A number of television series and commercials already have included footage from this library over the years which you have probably seen. These range from ‘Gillette Great Moments of Sport’ to the evening news and Current affairs programmes such as ‘Road to LA’.
Should you have need of such stock ‘Image’ for your library we ask you to complete the attached order form and return it to us.” (emphasis supplied)
The form of order attached to the letter was as follows:
“PLEASE SUPPLY ......... Video Tape/s (1/2 inch VHS) of the Official Colour Film of the XVIth Olympiad 1956 held at Melbourne, Australia.
We advise that your copyright will remain intact and we will not use any tape or tapes supplied for copying whether in full or in part without prior consultation with yourselves.
The tape/s supplied will only be used for DISPLAY TO PROSPECTIVE CUSTOMERS AND OR OUR OWN INTERNAL COMPANY USE WITHIN AUSTRALIA.
The rights do not extend to the resale by ourselves of this tape to any other Commercial body of any sort. We understand that your day to day business involves the sale of parts of this Image to commercial parties and we further understand that heavy penalties are applicable to any breach of copyright.
Enclosed is our cheque No ............ dated ............. being for each copy you are to supply at the price of $39.95 per copy plus postage at $ 2.50 per copy.”
The evidence does not reveal whether Hilliard David & Associates replied.
160 John Whitchurch gave evidence that at around June 1984 he sent similar letters, “at least fifty, ... probably more”, to organisations which he thought might be interested in the films. In cross-examination he said that notwithstanding the terms of the letter, he did not at the time believe that PWP owned the copyright in the Films and that it was his understanding at the time that PWP was acting as agent for his father’s estate and that the estate owned the copyright. He explained that he expressed the letter in terms of PWP’s owning the copyright because he “had seen it before … because agents represent themselves as the owners”.
161 Some four months later, on 23 October 1984, PWP entered into a lengthy deed with Cappy. It is not necessary to give a detailed account of its terms. What is of present interest is the confusion as to who, as between PWP and the estate of Peter Whitchurch, was said to own the copyright in the Films. The agreement was expressed to be between PWP (referred to in the deed as “Whitchurch”) and Cappy. Recital A referred to the agreement of 21 April 1975 “made between PeterWhitchurch and Cappy” but went on to say that “Whitchurch” (meaning, according to the deed’s definition, PWP as distinct from Peter Whitchurch) granted Cappy the licence and received the payment for it. There are references throughout the deed to “Whitchurch’s [that is, PWP’s] copyright”. Clause 11 of the deed was as follows:
“To the best of Whitchurch’s [PWP’s] knowledge there are no other persons or corporations with the possible exception of the International Olympic Committee who have any rights to the final footage and/or who could lawfully require Cappy to pay any consideration for the utilization or exploitation of the rights granted by this agreement. Whitchurch [PWP] shall not be held liable or responsible to Cappy in the event that Cappy shall incur costs, expenses or fees to any other person or corporation before being able to utilize or exploit the rights conferred by this agreement.” (emphasis supplied)
162 Clause 13 provided:
“Cappy hereby acknowledges that Whitchurch [PWP] is the copyright owner of all film rights in the official film of the 1956 Melbourne Olympic Games”. (emphasis supplied)
On the other hand, clause 19 provided:
“Whitchurch [PWP] declares that it has the sole right to enter into and perform its obligations under this agreement, that it is empowered to represent the executors, beneficiaries and heirs of the estate of the late Reginald Peter Whitchurch, and that this agreement shall be binding on Whitchurch [PWP], the executors, beneficiaries and heirs of the late Reginald Peter Whitchurch, and the successors in title of any of the aforenamed parties, provided always that clause 11 shall prevail over this clause 19 in the event of any inconsistency between these two clauses.” (emphasis supplied)
163 The proviso to the “warranty of title” contained in clause 19 was clearly intended to preserve the protection given by clause 11 to PWP in respect of rights of the IOC and any right of “any other person or corporation” to be paid money, as a condition of Cappy’s becoming entitled to exercise the rights granted to it. But as between PWP and Cappy, clause 13 secured for the benefit of PWP an acknowledgment by Cappy that PWP was the copyright owner.
164 Elsie Mavis Whitchurch countersigned and attested the sealing by PWP as a director and the secretary of that company and also signed independently in her capacity “as executrix and sole heir and beneficiary of the estate of the late Reginald Peter Whitchurch by way of confirmation”. John Whitchurch countersigned the sealing by PWP as a director of that company and signed independently “as executor of the estate of the late Reginald Peter Whitchurch by way of confirmation”. The form of execution of the deed suggests uncertainty in John and Elsie Whitchurch’s understanding as to whether PWP or the estate of the late Peter Whitchurch owned, or should be put forward as the owner of, the copyright in the Films.
165 On 11 December 1984, Mrs Monique Berlioux, a director of the IOC, wrote on IOC letterhead to Mr Julius Patching (“Patching”), the Secretary-General of the AOF, as follows:
“As we are proceeding to the completion of our file on olympic films, I should be very grateful if you could provide me with relevant information or documents related to the films made on the occasion of the Games of the XVIth Olympiad in Melbourne in 1956 and for which the then organising committee had granted its authorisation.
In this respect, a copy of the contract set up at that time with the Peter Whitchurch Productions would be of assistance.
Also, I would be interested in obtaining details concerning a film made by a French film company which is referred to in the official report of these Games.” (emphasis supplied)
Patching replied on 8 January 1985 as follows:
“Thank you for your letter of 11th December, 1984 and I wish to advise as follows:-
1. There are no internal records in this Office relating to the contractual arrangements or agreement concerning the official Film of the 1956 Olympic Games.
2. The AOF, unfortunately, is required to revert to the information provided on pages 156 to 160 of the XVIth Olympiad (Melbourne) Official Report.
3. All the rights for the Film are held by Peter Whitchurch Productions…. As a guide, attached is a copy of a letter sent to an enquirer in June 1984.
It is unfortunate that no other records are available, but I hope the information supplied will be of some assistance.” (emphasis supplied)
Pages 156-160 of the XVIth Olympiad (Melbourne) Official Report headed “Film and Television” were referred to earlier. Unfortunately, no copy of the “letter sent to an enquirer in June 1984” is in evidence.
166 The inquiry by the IOC was a routine administrative one. The AOF’s response shows that at least so far as its records went, it had no knowledge of what the terms of the OCOG/Peter Whitchurch contract were but understood that PWP, apparently through John Whitchurch, was in a position to deal adequately with any inquiry. In so far as John Whitchurch possessed a copy of OCOG’s letter to his father dated 23 November 1960, this was so.
167 Apparently, Mrs Berlioux sent a telex to the president of the AOF to which Patching was asked to reply. He sent a telex to her on 25 January 1985 in which he said:
“The writer and producer of the 1956 Olympic Games Film was Mr Peter Whitchurch. The title was “Olympic Games 1956”. [Indecipherable – perhaps “Authority.”] Peter Whitchurch Independent Film Consultants, 100 Windang Road, Primbee, 2504 Australia”
168 It seems that in giving the title “Olympic Games 1956” Patching was referring to the one hour colour film. The address 100 Windang Road, Primbee was the residential address of Elsie Whitchurch, and, prior to his death on 17 October 1981, of her husband Peter Whitchurch.
169 On 27 June 1985, Phillip Coles (“Coles”), the Secretary-General of the AOF Inc (as noted earlier, the AOF had become incorporated as the AOF Inc on 24 April 1985), wrote on the AOF Inc’s letterhead to John Whitchurch as “Director, Peter Whitchurch” enclosing a copy of a letter which the AOF Inc had received from a Mr Jean Lecoq of Paris about the film “Rendezvous au Melbourne”. As noted earlier, it seems likely that this is the “Mr Lee Cog” to whom John Whitchurch had referred in his letter of 13 June 1984 (the name had been given to John Whitchurch over the telephone by Jacobs, no doubt with an American accent). Omitting formal parts, Mr Lecoq’s letter stated:
“As successful tenderers in the bankruptcy of the CINE-SELECTION-ATLAS (CSA) Company, we are writing to you in order to bring our records of the above-mentioned film that was produced by this Company up to date.
The FREEMANTLE INTERNATIONAL INC of NEW YORK, who, at the time, were the holders of the exclusive world production and trading rights of the official film of the Olympic Games, have, with the agreement of the Australian Olympic Committee, coded back their rights to the Production Company CINE-SELECTION-ATLAS (CSA) - 5 bis, rue Nobel – Paris XVIIIe.
We require for our records the photocopy of the contract that was drawn up in 1956 between the FREEMANTLE INTERNATIONAL INC and the Production Company CINE-SELECTION-ATLAS (CSA), this contract having received the approval of the AUSTRALIAN OLYMPIC COMMITTEE.
We would be especially grateful if you could send us this document, or if you are unable to do so, would you be kind enough to indicate to us how we could obtain it?”
170 Coles’ covering letter to John Whitchurch was as follows:
“The attached copy letter may be of interest to you, and it is the intention of this office not to reply until we hear from you on the matter.
You may wish to reply directly to this French organization yourself, and in doing so provide us with a copy of your letter, from which in turn, we can act accordingly, as there appears to be some conflict with what has been sent to us by Mr Jean Lecoq.” (emphasis supplied)
171 Coles’ letter demonstrates the total dependence of the AOF Inc on PWP in dealing with any inquiry in relation to films of the Games.
172 In June 1985, Mr Lecoq sent a copy of his letter to the IOC noting that he had not up to that time had a reply from the AOF Inc.
173 On 4 November 1985, Howard M Stupp (“Stupp”), the IOC’s Director of Legal Affairs, sent a telex to Coles referring to a claim by Mr Lecoq that he had twice unsuccessfully tried to get information from the AOF Inc “concerning the movie ‘Rendezvous in Melbourne’”. Stupp requested Coles to reply to Mr Lecoq’s letter, noting that Patching had dealt with the same subject in a letter of 8 January 1985 to Mrs Berlioux of the IOC. On 8 November, Coles replied, not to Mr Lecoq, but to Stupp himself. The reply included the following:
“Re:- Melbourne Olympic Film
With reference to portion of your telex of the 4th November, I have searched the files, and I can inform you of the following:-
1. You are correct, Mr Julius Patching in his capacity as secretary-general replied to Madame Berlioux on the 8th January, 1985 and again by a further telex on the 25th January, 1985 advising that the producer of the 1956 Olympic Games film was Mr Peter Whitchurch who owns the copyright of such film.
2. Mr Jean Lecoq’s letter of 30th January, 1985 was referred to Mr John Whitchurch, director of the Film Company, Independent Film Consultants…
3. I would, therefore, suggest that as the NOC [National Olympic Committee] of Australia has no control in this matter that Mr Lecoq communicate direct with that company.
Incidently [sic], I wrote to Mr Whitchurch on the 27th June requesting assistance for Mr Lecoq and apparently there has been no contact.” (emphasis supplied)
Three observations may be made about this letter. First, it is not clear whether Coles is purporting to attribute the statement about copyright to Patching or whether he (Coles) is intending to make an independent statement to Stupp in that respect. Patching had not referred in terms to “copyright” in his correspondence with Mrs Berlioux, although he had advised her on 8 January 1985 that “[a]ll the rights for the film” were held by PWP. But the question is not important, because by this letter if not before, the AOF Inc was representing to the IOC that Peter Whitchurch had owned the copyright in “the 1956 Olympic Games film”. This statement made in 1985 is, of course, inconsistent with the position now taken by the AOC. Second, there is no evidence that the telex was shown to John Whitchurch or to any of the respondents. Third the AOC submits that like Patching’s letter of 8 January 1985 and Mr Lecoq’s letter, the telex related only to the one hour colour “official” film.
174 On 19 November 1985, Coles sent a telex to Juan A. Samaranch (“Samaranch”), the President of the IOC, headed “Reference: Official Film of the 1956 Melbourne Olympic Games”. The telex was apparently sent in response to a letter from Samaranch to Mr Kevan Gosper of the AOF Inc. Coles referred to Stupp’s telex of 4 November and to his own telex in reply of 8 November, then continued:
“You will see from my telex that we (the AOF) do not have control over this matter as I understand Mr Whitchurch and his company own the copyright to this film. Mr Whitchurch has been informed of the correspondence from Mr Lecoq, and I have taken the trouble to telephone him today and request he contact Mr Lecoq direct. Apparently Mr Lecoq and Mr Whitchurch have had many exchanges of correspondence and it seems that the two parties concerned must resolve the matter.” (emphasis supplied)
Again, there is no evidence that this telex was shown to John Whitchurch or to any of the respondents. Nor is there evidence as to what Coles said to John Whitchurch in the telephone conversation to which Coles’ telex refers. Coles did not give evidence and John Whitchurch’s evidence does not touch on the matter.
175 Elsie Whitchurch died on 11 September 1986, leaving a will dated 3 November 1983 of which she appointed John Whitchurch and Benson executors and by which she left the whole of her estate to John Whitchurch, Benson and Talbot (then Diane Swan) in equal shares. Probate No 8701060 of the will was granted to John Whitchurch and Benson on 21 January, 1987.
176 The death of his mother left John Whitchurch as the only director of PWP. On 7 October 1986, Benson was appointed as a director, and seventeen days later, on 24 October, Talbot was also appointed as a director. There was to be ongoing disputation between John Whitchurch of the one part and Benson and Talbot of the other as to what should be done with the film rights that had been owned by their father, Peter Whitchurch. On the hearing, Benson and Talbot, supporting TBF, take the position that PWP had become the owner of those rights and that they, as the majority directors, were, in effect, entitled to determine what should be done with them. John Whitchurch, on the other hand, supporting the AOC, takes the position that the rights remained part of the estate of Peter Whitchurch of whose will he is the sole surviving executor, or, in the alternative, of the estate of Elsie Whitchurch, of whose will he and Benson are the executors. Some of the evidence of what John Whitchurch, Benson and Talbot said and did over the years does not sit easily with the positions that they now support.
177 On 20 November 1986, Glen O’Sheades (“O’Sheades”), an associate in the firm of solicitors, Wood, Roberts & Rayfield of Newcastle, sent a letter (incorrectly dated 20 October) to the Manager of “20th Century Television” purporting to enclose “a résumé of the film held in the Whitchurch Estate”. The letter stated:
“We confirm that we are instructed by the Executrix of the Estate of the late Wife of Peter Whitchurch to negotiate the sale of the film. It is the desire of the Estate to sell the film in toto.
We understand that Mr Broom [of 20th Century Television] was a friend of the late Peter Whitchurch and if he is not interested in purchasing the film himself, he may be able to assist us in finding a purchaser.”
The reference to the “Executrix” must have been a reference to Benson, although she denied seeing the letter before it was sent and did not think she saw it after it was sent. She specifically denied knowing that such a letter was going to refer to the films as being owned by “the Whitchurch Estate”.
178 A copy of the letter apparently came to the attention of Benson’s co-executor, John Whitchurch. He wrote to O’Sheades on 25 November 1986 advising: that the executors of Elsie Whitchurch’s will had already appointed Berney & Lander of Lindfield as agents for the sale of film held by the estate and that they had already advertised in The Sydney Morning Herald and The Illawarra Mercury; that he (O’Sheades) had not received instructions or authorisation from both executors to write the letter to 20th Century Television, which had been advised of that fact; and that it was:
“ ... not yet clear whether title to all of the film/s (and whether they are all listed) has been established to be within the estate of the late EM Whitchurch and whether films held elsewhere (eg: The Cinesound Movietone Library) are to be treated as property within this estate and or vice versa.”
179 On or about 19 December 1986, John Whitchurch and Benson applied for a grant of probate of the last will of Elsie Whitchurch. The inventory of property forming part of their affidavit of assets and liabilities included “Cinematography films” with an estimated value of $500,000. As noted earlier, Probate was granted on 21 January 1987. John Whitchurch later prepared a document headed “ESTATE RECEIPTS & DISTRIBUTION – Proposed for EM Whitchurch Estate” which was signed by Benson on 9 April 1987. That document included as an asset in the estate of Elsie Whitchurch a “Cinematogrphic [sic] Film Collection”.
180 Three days later, on 24 January 1987, John Whitchurch and Benson as executors of the will of Elsie Whitchurch, and John Whitchurch, Benson and Talbot as beneficiaries under that will, signed an instruction to PWP to
“commence sale negotiations for all possible cinematographic film together with any associated right/s therein now held and/or exploited under implied and/or approved terms of contract which have existed over a number of years between”
PWP, Peter Whitchurch, Elsie Whitchurch, or the executors of and beneficiaries under Elsie Whitchurch’s will. The document was headed “Estate of the late E M Whitchurch” and was addressed “[t]o whom it may concern”. It referred to the fact that the application for probate of Elsie Whitchurch’s will (a copy of which it referred to as being attached) was pending and contained a statement that to the best of the knowledge of the three signatories, that will had been correctly signed and witnessed. The document strongly suggests that the three children of Elsie Whitchurch accepted at that time that any film or film rights formed part of Elsie Whitchurch’s estate (and, it follows, had previously formed part of Peter Whitchurch’s estate). Plainly, it was thought expedient, pending a grant of probate, that all persons named as executors and beneficiaries in the will sign the document in order to provide to third parties clear evidence of PWP’s authority to represent “the estate” in dealing with the Films.
181 Consistently with that authority, in March of 1987, John Whitchurch sent out “invitations to treat” on behalf of PWP to numerous organisations around the world including TBF, the AOF Inc and the IOC. They read as follows:
“Olympic Games Film/s 1956
Melbourne - Australia
We are instructed to contact you regarding the sale/s of the above collection in full and or part/s.
Authorisation has been given by the Executors and beneficiaries named in the will (Dated 3/11/83 – Probate No 8701060 – Jan 21st 1987 Documentation awaited.) of the Late EM Whitchurch (former wife and sole beneficiary in the estate of the late RP Whitchurch ‘known as’ Peter Whitchurch – Probate No 936269 11/5/82.).
The late Mr Peter Whitchurch ceased new film making in 1977 due to health problems, his films are still used today. At the time of his death, he had been the only known ‘Independent’ film producer gainfully employed continuously since the end of World War II.”
This letter invites you as a prospective purchaser to advise us of ‘purchase interest’ within the subject cinematographic film collection consisting of around about 1,500,000 16mm ft of historic material.
Inclusion/s for the Melbourne Olympics are various right/s, Licences as well as catalogued films and footages being Original, Duplicate, positive, negative, Internegative, optical, composite, silent and video tape/s etc forming a total 16mm footage that should comfortably exceed 280,000ft (about 115 hours screening time).
Because of the complexities and size of this collection it is expected that some negotiation/s may take time.
To express ‘Purchaser’s Interest’ you should initially advise us ‘in writing’ of your interest together with any advice of requirements, if any, no later than four (4) weeks from the [date of the letter] (5pm).
Yours faithfully
J Whitchurch [sgd]
Director”
Clearly, what was in contemplation was a sale, not just of the Edited Films, but of all the Films. This went beyond the rights granted to Peter Whitchurch by OCOG’s letter dated 23 November 1960. Accordingly, if it had been sufficiently interested and alert, the AOF Inc might, in or about March 1987, have sought an assignment of OCOG’s copyright and general rights of property from the National Companies and Securities Commission and have challenged the proposed sale.
182 John Whitchurch gave evidence that only a few responses were received and that none were pursued “as no-one offered any money for the films”.
183 On 12 March 1987, Coles sent a letter in the following terms to Stupp, as “Legal Attaché” for the IOC enclosing a copy of the “invitation to treat” which the AOF Inc had received from John Whitchurch:
“Re: 1956 Olympic Games Film
We have received the attached letter regarding the sale of the above by the estate of the late wife of Peter Whitchurch.
I have made contact by telephone and advised that the communication was being passed on to the IOC. Would you please keep me informed re any further communications or negotiations in this regard.”
So far as the evidence reveals, nothing came of this and neither the IOC nor the AOF Inc responded to the invitation to treat. That is, they did not express interest in buying but did not object to PWP’s attempting to sell the Films.
184 On 16 March 1987, Benson and Talbot as two of the three directors of PWP wrote a letter on PWP’s letterhead to John Whitchurch as a director of Hynant Pty Ltd, advising that the services of that company were no longer required by PWP for the provision of “labour and expertise, management and clerical”. This appears to have marked the beginning of the acrimonious relationship between John Whitchurch and his sisters. The letter advised that in the light of the death of Elsie Whitchurch, the current directors of PWP did not wish to continue PWP’s business (Benson and Talbot were, in fact, only a majority of the directors) and that now that probate had been granted, “the executors” would wind up the deceased’s “affairs” (as Benson and Talbot knew, the executors were John Whitchurch and Benson). The letter asserted that those “affairs include[d] the company of PWP”. John Whitchurch testified that from the time of receipt of that letter, his family company Hynant Pty Ltd ceased doing work for PWP. The evidence does not reveal precisely what that work had been, or what, if any, arrangement had been in place for the remuneration of Hynant Pty Ltd. I presume that whatever services John Whitchurch provided to PWP, he provided on account of Hynant Pty Ltd, but nothing turns on this.
185 According to John Whitchurch, on 15 June 1987 Benson asked him to help organise the licensing of the films and he agreed provided (a) he was not interrupted, and (b) if he was making money through the licensing after a period of twelve months, he could continue to carry on the business. In any event, on that day Benson wrote a note by which she “authorise[d] Hynant P/L to be reinstated”, presumably to the position it had occupied before 16 March 1987. In late November or early December 1987, however, Benson and her son Jeff came to the “shop” at Oak Flats where the film collection was stored and changed the locks. The result was that John Whitchurch no longer had access to the films.
186 On 21 December 1987, a company called GT Consultants Sdn Bhd of Kuala Lumpur wrote to Coles at the AOF Inc advising that it had been commissioned by Radio Television Malaysia (“RTM”) to produce programmes about the Olympic Games. It said that it was seeking to establish who owned the copyright in the films of the 1956 Games and that RTM was willing to “negotiate directly with any party re casting of copyrights clearance”. Coles’ reply is referred to below.
187 Apparently on 23 December 1987 TBF renewed the term of the original licence agreement with PWP of September 1983. I say “apparently” because the document by which the renewal was effected is not in evidence. There are, however, later recognitions of the renewal. For example, by a letter from Cayton to John Whitchurch dated 28 February 1991, after advising that Jacobs had died nearly two year earlier, Cayton said that he was “writing now to confirm our renewing, and hopefully extending, the licence agreement between us dated 12/23/87”. Moreover, in cross-examination, John Whitchurch agreed that a further four year arrangement was entered into with TBF in 1987. I assume that the renewal of 23 December 1987, like the original licence agreement concluded on 28 September 1983, was effected as between PWP and TBF.
188 Towards the end of January 1988, Benson telephoned John Whitchurch and told him that she had moved the film collection from the “shop” rented by PWP at Oak Flats. Whitchurch then drove to the shop and, by looking through a window, could see that the collection had indeed been removed.
189 On 3 February 1988, Coles received a telex from a company called Hahn Won International which read as follows:
“Han Won Int’l wants to buy South Korean TV-rights of Melbourne (1956) Olympic Official Films for one year in South Korea territory only. Could you advise me the price including U-Matic tape costs fee by NTSC System?”
This inquiry may have been prompted by the fact that the Olympic Games were to be held in Seoul later in 1988.
190 On 6 February 1988, a Mary-Ann Lupa of Chicago wrote to the “Australian Olympic Committee” seeking archival footage of any event or competition in the Games in which a female American athlete called “Willye White” participated, for a documentary she was making in connection with a “thesis project” at Columbia College Chicago.
191 On 11 February 1988, Coles replied to Hahn Won International as follows:
“Further to your telex received February 3, 1988 requesting TV rights for Melbourne (1956) film, these are held by:-
Peter Whitchurch Productions Proprietary Limited
Independent Film Consultants
PO Box …
Phone: …
In order to save time, we have forwarded your request direct to Peter Whitchurch Productions.”
192 On the same day, Coles sent a letter in almost identical terms to GT Consultants Sdn Bhd in reply to its letter of 21 December 1987, although in that letter PWP was described as “the Copyright owners of 1956 Olympic Games Film” rather than as the holder of “TV rights for Melbourne (1956) film”.
193 Coles sent a letter in almost identical terms, referring to PWP as “the copyright owners”, to Mary-Ann Lupa on 15 March 1988.
194 A copy of each of Coles’ three letters just mentioned was apparently sent to PWP. Accordingly, the AOF Inc, through its Secretary-General, Coles, was representing to PWP, as well as to inquirers, as at February, or March 1988, that the AOF Inc understood PWP to be the owner of the copyright in the Films.
195 There is no evidence that Hahn Won International, Mary-Ann Lupa or GT Consultants Sdn Bhd acted in reliance on the assumption that PWP was the owner of the copyright.
196 On 2 June 1988, however, John Whitchurch wrote to Hahn Won International advising that he was unable to “work further on this project” and that “[f]urther communications for completion should be directed to” Benson and Talbot whose addresses he supplied. Copies of this letter were sent to Benson and Talbot.
197 On Monday 6 June 1988, a meeting of directors of PWP was held at the office of William Edward Andrew (“Andrew”), chartered accountant, in Clarence Street Sydney. John Whitchurch, Benson and Talbot attended. Andrew was present also. It was resolved that on 31 July 1988 a meeting of the members of PWP be held at Andrew’s office at which a special resolution would be proposed for the voluntary winding up of PWP and that Andrew be “approached to accept nomination as liquidator”. John Whitchurch said that he did not want PWP to be wound up at that time, although he did sign the minute containing the resolution that the meeting of members be held to consider the resolution. The terms of the proposed special resolution as recorded in the minutes of the proceedings of the directors’ meeting were: “That as the Company has ceased to carry on business the Company be wound up voluntarily.” There is no record of any meeting of members of PWP being held on 31 July 1988 or any such special resolution being passed.
198 On 14 June 1988, a Mr Tony Mucklow of “Phil Pilley Productions”, an English firm, wrote to the “Australian Olympic Committee” seeking information about certain footage from the Games relating to the athletic career of Kevan Gosper. Mr Mucklow advised that he had been informed by Stupp of the IOC that “Peter Whitchurch of Independent Film Consultants” might be a source of relevant film, but that he had been unable to find a means of communicating with Peter Whitchurch. Interestingly, he also said “we have been cleared to use any footage which is copyright of the IOC”. Coles replied on 15 June 1988 providing Mr Mucklow with an address for PWP, which was care of John Whitchurch at the latter’s residential address at Albion Park, New South Wales.
199 On 13 July 1988, John Whitchurch again wrote to Hahn Won International advising that he no longer had “executive control” of PWP and that Hahn Won should deal with Benson and Talbot because “[t]hey now control this company”. Hahn Won International replied to John Whitchurch on 18 July stating “extremely disappointed at your manner”, refusing to contact Benson or Talbot, and demanding repayment of “USD 7,000 out of 12,000.” There is no other evidence before me relating to this alleged payment, its purpose, or John Whitchurch’s response, if any, to the demand for repayment.
200 On 20 July 1988, “Second Line Search” of New York wrote to Coles seeking information as to whether an “official film” of the Games had been “sponsored” by the AOF. A Mr Alan Grover, Commercial Manager of the AOF Inc, replied on 15 August 1988 stating that “[c]opyright and ownership of all film footage is held by Peter Whitchurch Promotions [sic] C/- J Whitchurch [whose address at Albion Park was given]”, and advising Second Line Search to contact PWP “for permission to use any footage of those Games”. This was a further representation by the AOC that PWP owned the copyright in the Films but there is no evidence before me that Second Line Search acted on it or that a copy of the letter was sent to PWP.
201 In about September 1988, Benson and Talbot met with O’Sheades and told him that they wished to “finalise” their mother’s estate and that to do so they needed to “sell the Olympic Films”. They therefore requested O’Sheades to “seek expressions of interest from people who might be interested in buying the films”. O’Sheades sent letters to people who, he thought, might be interested. For example, on 6 September 1988, he sent a letter to 20th Century Fox Television which was as follows:
“RE: Peter Whitchurch Film Collection
We are instructed to contact you regarding the sale of the above collection either in full or in part.
Authorisation has been given by the executrix of the Estate of the late EM Whitchurch who was the former wife and sole beneficiary of the Estate of the late RP Whitchurch known as Peter Whitchurch.
We enclose for yourassistance summary of the film available for sale divided into the following four categories:
(a) Olympic games 1956
(b) General Film Section
(c) Papua New Guinea Film
(d) Tennis Film
Our client estate [sic] holds the exclusive rights to the Olympic Film ….
If your organisation has any interest in purchasing the film referred to above, could you please contact us at your earliest convenience.” (emphasis supplied)
202 On 3 November 1988, John Whitchurch as a director of and shareholder in PWP sent a letter by certified mail to “The Secretary” of PWP at “Post Office Box 85, OAK FLATS, NSW, 2529”, requesting the convening of annual general meetings of the company for 1987 and 1988, that is, for the two preceding financial years. On 4 November 1988, as “Director and Company Secretary”, Benson replied, informing her brother as follows:
“due to circumstances beyond our control the figures for the above year [sic – years] were not available to us on our acquisition of executive control of this company.
Please be assured immediately they are ready we will be holding a meeting seeking the approval of the Directors of Peter Whitchurch Productions. Your interest at this stage is appreciated.”
John Whitchurch replied to his sister at length on 7 November 1988, commencing, “Dear Secretary”, complaining about the failure to hold the meetings, and noting, “[i]n point of fact you acquired Executive control in late 1986”. This was apparently a reference to the fact that Benson and Talbot had been appointed directors then, and had, acting together, the capacity to control PWP from that time.
203 In 1988 or 1989, Benson sent numerous letters addressed ‘TO WHOM IT MAY CONCERN” to persons she thought might be interested in purchasing the Films. She wrote that the collection included the physical Films as well as “the sole sales rights for radio, television and any other sale possibilities”, and that the films were for sale “so that the company [PWP] can be wound up and the estate [apparently Elsie Whitchurch’s] can be finalised”. The persons to whom the letter was sent included both the AOF Inc and TBF.
204 On 8 March 1989, Benson sent a separate letter to Coles which read as follows (including misspellings and other solecisms):
“I would like to introduce myself, my name is Lyn Benson, I am the oldest daughter of the late Peter Whitchurch.
As you are proberlyaware Peter Whitchurch Productions holds the film copyright to 1956 Olympic Games that were held in Melbourne. …
The reason that I am writing to you instead of John Whitchurch (my brother) is because the company has now got three directors (John Whitchurch, Diane Swan [Talbot] and myself). This situation has arisen since the death of my mother on 11th September 1986. Since this time there has been a lot of conflict with my brother on what should be done with the Olympic Games film. My sister and I (who hold the majority of votes) feel that maybe the films and the remaining copyright should be sold, so as the full use of these films can be relized.
Everytime the Olympic Games come around, you hear how our competitors need to raise money to represent their country. Surely if these films were broughtfrom us, the money that could be made from any sales thereafter could help our Olympiciansin some way, especially if Australia held another Olympics in the next 16 years. To give you an example, the last sale I made was to a firm in London and our price for rights only was $2,000 per minute, which was $500 lower than our normal charge. On top of all this I am one of the execatorsof my motherswill and untillsomething definateis done with these films, my mothersestate cannot be finalised.
If you could help me in anyway I would appreciate it very much.”
205 On 23 March 1989, Mr Wilf Barker of Sports Marketing & Management Pty Ltd, an Australian company of which Coates was a director, wrote to Benson as follows:
“Philip Coles of the AOF has passed on your letter of March 8 regarding rights etc, in connection with the 1956 Melbourne Olympic Games. We are the marketing agents and consultants for the AOF and thus they have asked us to take the matter further with you.
When I first quickly read your letter I was under the impression that you were kindly looking for some means of donating use of the material to the AOF in the interests of supporting Olympic athlete endeavour. Since you have, very properly, enjoyed income from this material for what would seem to be over 30 years, then this would be a marvellous gesture if you felt so inclined.
On the other hand, perhaps you were hoping that the AOF would themselves purchase any remaining rights in the material and thus directly deal with the opportunities for hiring out commercial use. Neither we nor the AOF have any real appreciation of the revenues that might eventuate and the charge you would wish to make in passing over the rights. Certainly, as each Olympics goes past we are well aware that the commercial demand for older material is much less.
We do thank you for writing on this matter and we would look forward to your very early reply as to some specific proposal which can be considered.
At the same time, we remind you that the AOF is essentially a non-profit organisation depending upon paid and private support to find the funding necessary to prepare and field our Australian athletes in international Olympic competition.”
Mr Barker sent a copy of this letter to Coles. It is not clear whether Benson ever replied. In any event, no agreement was reached between her or PWP and the AOF Inc or its “marketing agents and consultants”, Sports Marketing & Management Pty Ltd.
206 On 21 June 1989, Ann Coyle of the Melbourne Olympic Committee (Melbourne was a candidate city for the hosting of the 1996 Olympic Games) wrote to Benson requesting “prices on” the “1 hour colour summary (which includes Ron Delaney’s win)” and the “11 min 1500 m film (includes 5 min of final event).” Benson replied on the letterhead of PWP on 22 June 1989 giving prices. In the letter she stated, “the copyright still remains with us until the whole collection of films is sold.” The evidence does not reveal whether a sale to the Melbourne Olympic Committee resulted.
207 On 30 January 1990, Coles wrote to “Trans World International”, apparently in response to a facsimile from that company dated 25 January “requesting information regarding copyright owners of the 1956 Olympic Games films”. As with the other requests referred to earlier, Coles directed Trans World International to PWP, but this time at Benson’s address rather than at John Whitchurch’s. This is further evidence of the understanding of the AOF Inc that PWP held the copyright in the films. The evidence before me does not reveal whether any transaction resulted between PWP and Trans World International.
208 On 14 March 1990, TBF (Cayton) wrote to one Jeff Patterson (“Patterson”) of Darling Point confirming him as its “exclusive, authorised representative [in Australia and New Zealand] ... concerning the protection of the rights and copyrights in and to [its] boxing features and subjects”. The letter authorised and required Patterson to institute legal action to enforce TBF’s rights. Although the letter was written to Patterson apparently at his residential address, he was in fact the managing director of UP Video Sports Pty Ltd (“UP Video”). It is convenient to note here that the following year, on 11 December 1991, TBF wrote to Patterson at UP Video’s business address appointing UP Video as TBF’s exclusive representative until 1 March 1995 for the licensing of films from TBF’s “Olympics Library”, on the basis that the gross income was to be divided equally between TBF and UP Video. As consideration, UP Video agreed to produce at its expense ten or more video cassette programmes tentatively entitled “The Golden Years of Olympics”, all rights (including the copyright) in which were to be the property of TBF.
209 On 4 May 1990, Michael Payne (“Payne”), the Marketing Director of the IOC, wrote to “Doug Donoghue, Director, European Liaison Melbourne Olympic Candidature 1996” at the Australian Embassy in Paris seeking his assistance in acquiring all rights to the “Official Film” of the 1956 Games. He asserted that the rights to official Olympic films nowadays belonged to the IOC automatically pursuant to agreements between the IOC and the host city, but that unfortunately this had not been the case in 1956. According to the letter, the IOC was “anxious to acquire back rights for some of the earlier films”. Payne apparently attached correspondence with John Whitchurch (the attachments are not in evidence) and stated:
“To the best of my knowledge there was no further contact on this subject. I would be very interested to learn if anybody in the Bid Committee has contacts with this organization that would facilitate restoring of negotiations.
It may well be that in the interim the Whitchurch family has sold the rights to some other 3rd party. Any help or leads that you can provide would be very much appreciated.”
There is no evidence before me of any reply to this letter.
210 Benson’s attempts to find a purchaser for the films were unsuccessful. On 12 June 1990, PWP entered into a written agreement with Filmworld. The agreement does not expressly refer to the Films but apparently the physical Films were delivered to Filmworld pursuant to it. PWP and Filmworld agreed that: PWP would deliver “film material ” to Filmworld; Filmworld would use its best efforts to promote the licensing of the film material; and Filmworld would pay PWP forty per cent of all royalties received. The contract was for five years, that is, until 12 June 1995, and was to be extended automatically for one additional year unless written notice of termination was given by either party at least three months prior to the expiration of the initial term. PWP “acknowledged” that it had “the absolute and unencumbered right and title to license the film material”. It also agreed to indemnify Filmworld in respect of any liability for infringement of copyright arising from Filmworld’s use of the material.
211 On 28 February 1991, Cayton wrote to John Whitchurch advising of TBF’s intention to renew the licence agreement between PWP and TBF. (Interestingly, he referred to a “Licence Renewal Fee of $6,000, whereas in fact the licence renewal fee in the contract of September 1983 had been $16,000.) Cayton advised that TBF would give timely notice of exercise of the option of renewal. Cayton also said that TBF was interested in entering into a longer and wider licence agreement. He asked John Whitchurch to call him to discuss this matter. It is not clear whether John Whitchurch received the letter. However, Cayton agreed that John Whitchurch did not call him.
212 On 20 May 1991, Cayton wrote to Patterson and informed him that he had experienced difficulty in contacting John Whitchurch. Cayton stated that he wanted to discuss with John Whitchurch some changes to the licensing agreement between TBF and PWP, but that if he could not contact John Whitchurch he would simply renew the existing agreement by sending the required sum for the further four year term. He added that he had spoken to an agent of John Whitchurch’s in the United States, Dan Rose of Montrose Communications, who had told him
“about a severe disagreement between John Whitchurch and his sisters, who inherited the company from Peter Whitchurch, their father who built the company, and produced the Olympic films [TBF] had licensed”.
Cayton’s letter to Patterson concluded:
“If you are able to contact John Whitchurch, or people who know people that know Whitchurch, to bring us up to date on precisely what has happened to this company and these people, and how I may contact them, I will be very grateful.”
213 Cayton also gave Patterson the successive contact details, including telephone numbers, that he held for John Whitchurch. John Whitchurch acknowledged that the address (Albion Park) and telephone numbers shown in Cayton’s letter for 1991 were correct.
214 According to Patterson, following receipt of Cayton’s letter he attempted to contact John Whitchurch by telephone several times by dialling the number in the letter but was unsuccessful. In cross-examination, Patterson was firm in his evidence that he had never spoken to John Whitchurch. He said that within a few weeks of receiving Cayton’s letter he contacted one James Murray (“Murray”) who had had dealings with PWP, and that Murray gave him Benson’s telephone number. Paterson said that he then called Benson and that they had a conversation to the following effect:
Paterson: “I am phoning on behalf of The Big Fights Inc. Big Fights has been trying to contact Peter Whitchurch Productions Pty Limited to renew its agreement.”
Benson: “There has been a disagreement between my brother John and myself and my sister Diane. John now has nothing to do with Peter Whitchurch Productions Pty Limited. Diane and I are the controlling directors of the company.”
Patterson said that he then telephoned Cayton and passed this information on to him.
215 Despite these events, in November 1991 TBF engaged a firm of solicitors, Bicknell & Monteith, to “find out the present whereabouts of Peter Whitchurch Productions Pty Limited”. According to a memo of fees of Bicknell & Monteith dated 19 December 1991 to Patterson’s company, Bicknell & Monteith had by that date had “telephone conversations with Mrs Whitchurch and subsequently with her husband”.
216 According to John Whitchurch, he had a telephone conversation in late 1991 with a person who identified himself as William Cayton of TBF, to the following effect:
Cayton: “I am ringing to tell you that Jim Jacobs has died and that Big Fights wishes to extend our agreement to cover video rights.”
Whitchurch: “My two sisters and I have had a falling-out and therefore I am unable to enter into any new agreement involving my mother’s estate or Peter Whitchurch Productions Pty Limited until the situation has been resolved.”
217 John Whitchurch’s wife, Carol Whitchurch, also gave evidence that late in 1991 “during the hours of approximately midnight and 1.00 am”, she answered her home telephone and an operator said to her:
“I have an international call from a Mr William Cayton to a Mr John Whitchurch if he is available on this number.”
She said she then handed the telephone handpiece to her husband and heard him say:
“My mother has died. Since 1988 there has been a falling out between me and my sisters who are each beneficiaries of our mother’s estate. The films are owned by the estate. My sister, Lynette, and I are the executors and she cannot move without me.”
After the conversation her husband told her that the caller had said that Jim Jacobs had died.
218 John Whitchurch gave evidence of a further telephone conversation he had with Cayton. In his affidavit he placed this conversation in mid to late 1992 but in the witness box he said that it must have happened prior to TBF’s exercise of the option to renew in November 1991. He said that the conversation was to the following effect:
Cayton: “What can we do to fix the situation because Big Fights wants video rights in the films.”
Whitchurch: “The situation with my sisters is even worse these days. All I can suggest is that you exercise your option but that’s the best I can say at the moment.”
219 According to John Whitchurch, a day or so after this conversation Patterson contacted him and asked whether he had been able to “fix things up” with his sisters. He said that a short time later Patterson telephoned him again and asked whether there was “anything we [presumably TBF] could do to assist [him, John Whitchurch] in fixing the situation with [his] sisters”. John Whitchurch says that he proceeded to explain to Patterson the nature of the dispute and “the position with [his] mother’s will”. According to John Whitchurch, at the end of the conversation Patterson asked for Benson’s address and telephone number and John Whitchurch said he would provide this information only if Patterson agreed to “come back to [him] and let [him] know the situation” and not to “try to reach any agreement” with Benson. Patterson accepted these conditions and John Whitchurch provided Benson’s contact details. John Whitchurch states that after this conversation, apart from the letter referred to below, he did not hear from any representative of TBF again until 1996 when it commenced the proceeding against Filmworld.
220 It will be recalled that Patterson denied ever having spoken to John Whitchurch. John Whitchurch annexed to his affidavit a copy of a page from his personal telephone directory which contained Patterson’s telephone number. He claimed that he wrote the number in the directory immediately after Patterson called him.
221 In his affidavit, Cayton denied that he had any conversation with John Whitchurch in late 1991. He claimed that the first conversation he had with him was early in 1992. He said that he did not have a conversation with John Whitchurch to the effect of the two conversations late in 1991 referred to above of which John and Mrs Whitchurch gave evidence. In cross-examination, Cayton at one stage agreed that he had spoken to John Whitchurch before sending the renewal letter of 22 November 1991 to which I refer in the next paragraph, as well as in March 1992. However, he later said that he was not sure that he had in fact spoken to John Whitchurch prior to March 1992.
222 On 22 November 1991, Cayton sent a letter to John Whitchurch of PWP care of Bicknell & Monteith. He set out what purported to be the “renewal option” contained in “the current License Agreement” between TBF and PWP. This mirrored the clause in the original agreement of September 1983, save that the clause as set out by Cayton referred to a licence renewal fee of only US$6,000 whereas the 1983 agreement (and, I presume but do not know, the 1987 agreement also) had referred to a licence renewal fee of US$16,000 (it will be recalled that US$16,000 was also the amount of the fee for the original four year term itself – I presume but do not know that it was also the fee paid for the 1987-1991 term). The letter purported to give “formal notice” of TBF’s exercise of the option and enclosed a TBF cheque for US$6,000 in favour of PWP. Cayton concluded by stating that the licence agreement was “formally extended to 12/22/95”. On 3 January 1992, John Whitchurch banked the cheque in PWP’s account at the ANZ Bank.
223 On 23 January 1992, Payne, who, it will be recalled, was the IOC’s Marketing Director, wrote to Cayton as follows:
“I understand that your company currently holds a substantial amount of Olympic footage. The IOC is currently trying to pull together a detailed archive of all the Olympic footage around the world and I would be most grateful if you could advise of details of the footage you hold and the copyright contained therein.”
Coates, who had been the President of the AOC since 16 November 1990 (it will be recalled that the AOF Inc had changed its name to its current name by resolution dated 25 June 1990), states that he was not aware at the time that this letter had been sent by the IOC or that TBF claimed an interest in the Films.
224 According to Cayton, after receiving Payne’s letter he had “a number of telephone conversations and meetings with Payne to discuss terms on which the IOC might acquire Big Fights’ Olympic collection”. Some time later, apparently in late 1995, Payne referred Cayton to Stewart Binns (“Binns”) of Trans World International of London, who, he said, was to conduct negotiations on behalf of the IOC. Binns wrote to Cayton on 15 December 1995 indicating that Payne “would love to get into a discussion with [Cayton] about the IOC acquiring [TBF’s] Olympic archive”. At one stage (by letter dated 19 April 1996), Cayton offered to sell TBF’s entire Olympic Library (1896-1972) to the IOC for US$4,000,000 plus a US$1,000,000 credit against which TBF might order Olympic film in order that it might satisfy the requirements of its customers, particularly NBC. But Cayton withdrew this offer on 12 August 1996 when the negotiations came to an end. The main stumbling block to an agreement being reached between the IOC and TBF appears from the correspondence in evidence to have been this: the IOC, while recognising that “many American and international broadcasters had used [TBF] as a resource and that [TBF’s] reputation in the business is considerable”, wanted to see all of the documentation supporting TBF’s claim to ownership of copyright in the films to be sold before coming to an agreement, whereas TBF was not prepared to show its documentation to the IOC until the parties “came to an agreement” which, Cayton acknowledged, would be subject to the IOC’s acceptance of TBF’s supporting documentation. Again, Coates said that he was not aware of these negotiations. Whether before or after the reaching of agreement, apparently TBF would have had to produce the letter dated 23 November 1960 from OCOG to Peter Whitchurch of which, it will be recalled, John Whitchurch said he handed a copy to Jim Jacobs at their first meeting in 1983, but of which the AOC and its predecessors did not have a copy.
225 On 25 February 1992, TBF granted exclusive television rights in respect of “BIG FIGHTS OLYMPIC LIBRARY” to a French company, “Canal+”, until the end of the 1996 Olympic Games in Atlanta, Georgia. It will be noted that this period went beyond the current four-year licence held by TBF which was due to expire on 22 December 1995. Perhaps TBF was relying on its option to renew the licence for a further four-year term.
226 On 27 February 1992, PWP was deregistered for failure to lodge annual returns.
227 On 9 March 1992, Cayton wrote to John Whitchurch a letter which commenced as follows:
“Our telephone conversation Friday [6 March] was most informative, and I appreciate you patience in explaining your legal situation.
As discussed, I’m writing to confirm our special proposal…”
The “special proposal” was that TBF pay PWP US$10,000, that PWP extend the term of TBF’s existing licence agreement from four years to perpetuity, and that the scope of the rights previously granted be extended to encompass the non-exclusive right to broadcast the Films on all media worldwide. The letter required acceptance by 15 April 1992. The offer was not accepted.
228 As noted earlier, Cayton’s evidence was, apparently, that his first conversation with John Whitchurch was that of the preceding Friday 6 March 1992 referred to in this letter. He denied that John Whitchurch told him in that conversation that he (John Whitchurch) was unable to enter into any agreement involving PWP or his mother’s estate because of the disagreement with his sisters. According to Cayton, he would not have sent the letter of 9 March 1992 if he had understood that to be the case.
229 Murray claims that in 1992 he was engaged in the production of a set of videos entitled “Olympic Glory: The Golden Years” which was to include film from the 1956 Games. In mid-1992, he received a call from Benson and they discussed his entitlement to use “the Melbourne colour film”. Murray says that he gave Benson Patterson’s phone number and that he (Murray) telephoned Patterson and gave him Benson’s phone number. It will be recalled that Patterson’s evidence was that he (Patterson) called Murray to obtain Benson’s phone number, whereas John Whitchurch says that he gave Benson’s phone number to Patterson after telling him that he was still in dispute with his sisters.
230 Be all this as it may, there seems to be no dispute that Patterson did telephone Benson who told him that she and Talbot were in control of PWP and that Patterson passed this information on to Cayton. It is unclear on the evidence, however, when these conversations took place.
231 On Friday 10 September 1993, Benson apparently telephoned Cayton. She then sent him a letter by facsimile the following Thursday 16 September as follows:
“My name is Lyn Benson and as you proberly [sic] remember, I spoke to you last Friday in reference to the 1956 Olympic Games.
From this conversation I became aware that you did not realize that there are 3 directors of PWP, they are my brother John, me and our sister Diane [Talbot].
To confirm this situation, I am sending you copies of 2 forms – the first, dated 7th October 1986 has John’s signature on it – the second, dated 24th October 1986 has my sister’s signature on it.
There has [sic] been a lot of problems between the three of us since then, so Diane and I decided to take over so that we knew what was going on, hence the name of the bank account is –
Peter Whitchurch Productions Pty Ltd
c/o LJ Benson and DY Swan
The bank is St George Bank Limited
4-16 Montgomery Street
Kogarah – NSW - 2217
The account number you asked for is: - …
I hope this gives you all the information that you wanted to know, also on my sister’s and my behalf I would like to apologise for any inconvenience that my brother may have caused you or your Australian agent Jeff Patterson.
If you happen to need any other footage of the 1956 Olympics which is not in the one hour film, please don’t hesitate to fax me at … and I will gladly help you in any way I can.”
232 The two forms accompanying the letter showed that Benson and Talbot were directors of PWP.
233 Cayton replied the next day, 17 September, by a letter which began:
“Your telephone call and your September 16, 1993 follow-up letter were welcomed.
As discussed, this will confirm our special proposal, as follows: ... ”
Cayton went on to set out the “special proposal” he had previously made to John Whitchurch in his letter dated 9 March 1992, that is, that in return for a payment by TBF of US$10,000, PWP extend the term of the licence agreement from four years (due to expire on 22 December 1995) to perpetuity and that the rights granted to TBF be extended to encompass non-exclusive rights in respect of all media worldwide. The only difference was that Cayton now proposed that whereas elsewhere in the world the rights granted to TBF were to continue to be non-exclusive, in the United States of America they were to be exclusive to TBF. The letter provided for acceptance by Benson’s signature on behalf of PWP at the foot of the letter but it did not specify a date by which acceptance was to occur.
234 At around this time (September 1993) there were also conversations between Benson and John Whitchurch in relation to a series of videos that had appeared called “Olympic Glory: The Golden Years”. One of these videos related specifically to “The Melbourne Games” and contained footage shot by Peter Whitchurch. These were apparently the videos which Patterson had agreed to produce for TBF and on which Murray had worked. The following words appeared on the back of the video covers:
“LICENSED IN AUSTRALIA AND NEW ZEALAND BY UP VIDEO SPORTS
Production based on Big Fights Olympic Library
BIG FIGHTS OLYMPIC LIBRARY
© 1983 The Big Fights, Inc. All rights reserved World Wide”.
235 Benson and John Whitchurch seem to have been in agreement that the videos infringed the copyright in the Films. They were in disagreement, however, over who owned the copyright and who had authority to deal with the Films. Benson asserted that PWP owned the Films and that she and Talbot could deal with them through their control of PWP. John Whitchurch, on the other hand, said that they were part of the estate of their mother, Elsie Whitchurch, and that PWP had merely acted as agent for the estate. Benson told John Whitchurch that she had received an offer from TBF. John Whitchurch maintained that she could not agree to sell the Films as a director of PWP because PWP did not own them. He contended that nothing could be done with the Films until he and she, as executors of their mother’s will, were in agreement.
236 On 21 September 1993, Benson wrote on the letterhead of PWP to Cayton advising that before signing a contract like the one he had sent her on 17 September, she wanted to know how it was that UP Video had brought out a set of videos containing film of the 1956 Games called “The Olympic Glory Golden Years” and had claimed that they, particularly one video called “The Melbourne Games”, were based on the “Big Fights Olympic Library”. She pointed out that all that TBF had been granted at that stage was the “non-exclusive right for Television and Cable Television showings only in the United States of America, its Territories and possessions and Puerto Rico”. Benson also referred to other terms of TBF’s agreement.
237 Cayton replied the next day, 22 September, to the effect that shortly after Jim Jacobs had concluded the contract with Peter Whitchurch for the grant to TBF of non-exclusive United States television and cable television rights in respect of Peter Whitchurch’s coverage of the 1956 Games, TBF had acquired the “exclusive world-wide rights, including copyrights,” to all the original film footage of the 1956 Games photographed by “Hazel and Lee Hansen, the famous Olympics Cinematographers” and “additional color and black and white coverage of the 1956 Olympic Games from a group of French Cinematographers who claimed they also had the rights to photograph the Melbourne Olympic Games”. Cayton’s letter claimed that TBF had supplied only films of these two classes to Patterson and that if the videos in the UP Video series contained other footage, it must have been “acquired by Jeff Patterson’s Producers in Australia”. Cayton suggested that after Patterson had confirmed this to be the case, Benson should execute the “Licence Agreement” which he had sent to her on 17 September. Cayton sent a copy of his letter to Patterson.
238 On 23 September 1993, Sydney was awarded the right to host the Olympic Games in the year 2000.
239 On 14 October 1993, Bud Greenspan of Cappy wrote to Benson, purportedly confirming an offer of $20,000 for the “world wide rights to use the entire collection of film footage of the Whitchurch Library of the 1956 Melbourne Olympic Games”. This offer was not accepted.
240 On 3 February 1994, Benson signed the “acceptance” at the foot of Cayton’s letter of offer dated 17 September 1993. It said
“ACCEPTED AND AGREED:
PETER WHITCHURCH PRODUCTIONS PTY LTD
By L Benson [sgd] 3-2-94 [also in handwriting]
Lyn Benson, Director”
241 Benson subsequently signed in right of PWP and as a director of it a more elaborate document dated 28 February 1994 called “1956 Olympic Films Agreement” which reflected the agreement as set out in Cayton’s letter. She faxed this document to Cayton on 3 March 1994. TBF relies on this document and a further one discussed below to establish its title and to resist the AOC’s claim in these proceedings.
242 The agreement dated 28 February 1994 recited the licence agreement between the parties “dated September 20/September 28, 1983”. By clause 1, PWP purported to convey, assign and license irrevocably to TBF in perpetuity certain rights to all of the films of the 1956 Games “previously delivered to [TBF].” The “certain rights” were described in clauses 2-6. They were, in short, the rights in perpetuity, exclusively within the United States, its territories and possessions and non-exclusively everywhere else in the world, of “use, broadcast, transmission, sale, display or otherwise”. By clause 7, PWP represented and warranted that it had full right, power and authority to grant the rights in question and that the grant did not infringe the rights of others. TBF undertook to pay PWP US$10,000 on receipt of a fully executed copy of the agreement from PWP. The agreement gave TBF the right “to file, register or apply for copyrights” with respect to the Olympic films in the name of TBF or its nominee.
243 I assume that TBF paid the price of US$10,000 to PWP care of Benson. The contrary has not been suggested.
244 On 27 July 1994, TBF applied to the United States Copyright Office for registration of its copyright in the “Big Fights Olympic Library” which included the Films.
245 On 10 March 1995, Benson faxed Filmworld stating that the directors of PWP had decided to terminate the contract with Filmworld of 12 June 1990 which was “due” on 12 June 1995. The fax advised that a letter confirming this decision would follow. It will be recalled that failing such notice, the contract was to be extended automatically for one year.
246 On 8 June 1995, Raymond Goldsmith of International Licensing and Marketing Ltd, wrote on behalf of the AOC and the IOC’s “exclusive Licensee – SEA Multimedia” to Filmworld seeking footage of the 1956 Games to be incorporated into a CD-ROM called “100 Year Olympic History” that SEA Multimedia was developing. Mr Goldsmith stated, inter alia, that “[t]he inclusion of footage under your [Filmworld’s] copyright [was] essential to ensure a meaningful presentation of this feature”. Mr Goldsmith sent copies of his letter to Alan Grover, Marketing Director of the AOC and Stupp of the IOC. There is no suggestion that either organisation protested. It is not obvious from the evidence before me what Mr Goldsmith had in mind when he referred to Filmworld’s “copyright” or what the AOC or the IOC would have understood by the reference.
247 It will be recalled that the original licence agreement between PWP and TBF of September 1983 related only to the one hour film, the record films of men’s athletics (running time 2 hours and 56 minutes), any unedited footage of Rafer Johnson or the Decathlon (at least 30 minutes) and the boxing film (running time 17 minutes). On 12 October 1995, Benson wrote to Cayton offering, for US$80,000, to “supply” him with “the complete collection of the 1956 Olympic films” as well as various films of Davis Cup Tennis. She annexed a schedule listing the 1956 Games films in question. The letter stated:
“As you are proberly [sic] well aware – over the last few years there has [sic] been many problems as to who owns what, well what I am proposing to you now, is by supplying you with the complete collection of the 1956 Olympic films – YOU will have all the films, which will mean that you will have no trouble controlling the lot, especially when the Olympic Games come to Australia in the year 2000.”
248 On 8 December 1995, Cayton made a counter-offer. He advised Benson that his film librarian had analysed the list of films provided by her and continued:
“Our event by event analysis confirmed the fact that Big Fights originally acquired the Official Films plus all the major Olympic events from Peter Whitchurch Productions Pty Ltd, as detailed in the 1983 Peter Whitchurch Licenses to Big Fights, Inc”
Then, by virtue of the Agreement between us dated 28th day of February 1994, Big Fights acquired the exclusive United States rights, and the non-exclusive worldwide rights, in all media in perpetuity, to the complete Whitchurch Olympics Library as originally acquired from Peter Whitchurch”. (emphasis supplied)
In other words, the agreement of 28 February 1994 had related only to those films that had been the subject of the September 1983 agreement. Cayton continued as follows:
“Accordingly, no Licenses can be granted by you on behalf of Peter Whitchurch Productions Pty Ltd to any of the 1956 Olympics events exclusively owned in the United States by Big Fights, Inc. Of course you do have the non-exclusive rights to license your Library to the rest of the world.
At this time, we are prepared to make you the following proposal:
1. Peter Whitchurch Productions Pty Ltd (Whitchurch) hereby reaffirms the ownership by Big Fights, Inc. of all rights to the Whitchurch Films and Tapes of the 1956 Olympics, subject only to the exclusive and non-exclusive rights previously granted Big Fights, Inc. including the right to copyright first publication in the United States of all Whitchurch films acquired by Big Fights, Inc.
2. Whitchurch represents and warrants it has not granted any outstanding licenses to the Peter Whitchurch Library, nor any part of it, as of this date.
3. Whitchurch represents and warrants that there are no obligations of Peter Whitchurch Productions Pty Ltd to any third parties concerning rights to the Peter Whitchurch 1956 Melbourne Olympics Library or any part of it.
4. Whitchurch represents and warrants that Big Fights owns the exclusive rights to the Peter Whitchurch 1956 Olympics Library for the United States, its territories and possessions in all media in perpetuity, and that Big Fights owns the non-exclusive rights to our Peter Whitchurch 1956 Olympics Library in all media worldwide in perpetuity.
5. Whitchurch represents and warrants that upon payment to Whitchurch of $15,000 US Dollars, Whitchurch extends Big Fights’ current non-exclusive world-wide rights to the sole and exclusive world-wide rights in all media in perpetuity.
6. Whitchurch represents and warrants that upon payment of $15,000 US Dollars, Big Fights will have acquired the sole and exclusive world-wide rights in all media in perpetuity to the complete Library of Peter Whitchurch Productions Pty Ltd Official Films of the 1956 Melbourne Olympics plus all the 1956 Olympics events previously acquired by Big Fights, Inc. from Whitchurch and copyrighted by Big Fights, Inc.
Your signature below will confirm your acceptance of this Agreement. Immediately upon our receipt of this fully executed Letter/Agreement, Big Fights will wire $15,000 US Dollars to your account in Australia.” (emphasis supplied)
249 Benson signed the letter and returned it to Cayton under cover of a letter dated 12 December 1995. I assume, but do not know, that TBF paid the further sum of US$15,000 to PWP care of Benson.
250 The purported effect of this second “enlargement” of TBF’s rights was to extend the subject matter to all the Films and to extend from non-exclusive to exclusive, the nature of the existing rights outside the United States, its territories and possessions.
251 In the meantime, on 30 October 1995, Gadens Ridgeway, the solicitors for Beck had sent letters to, inter alia, “Seven Network – Sydney” and “Television New Zealand Limited”, which commenced as follows:
“We act for Beck Holdings Pty Ltd, an Australian company, which owns copies of the 1956 Melbourne Olympic Games official record films.
The film library includes approximately 25 black and white films, including a 20-minute summary film. The films were professionally produced by the Olympic Games film unit and deal with each of the sports which were part of the Games. Total running time is about seven-and-a-half hours.”
The letter attached a list of twenty five films. They were the same films as those that Benson was offering to sell to TBF at about the same time (she had written to Cayton on 12 October 1995 about the twenty five films and she then, on behalf of PWP, entered into the contract with TBF in relation to the “Peter Whitchurch 1956 Melbourne Olympic Library”). The Gadens Ridgeway letter said that Beck wished to license “the exclusive Australian [New Zealand] free-to-air cable, pay-TV broadcast rights of a copy of the films” and invited an expression of interest within fourteen days.
252 At the same time, letters were also being sent in the United States of America by the firm of Smith, Gambrell & Russell of Atlanta, attorneys for Beck, with a view to the granting of rights by Beck in respect of the very same films. For example, they sent one such letter, dated 17 November 1995, to Scott Boggins of NBC Sports who passed it on to Cayton. The letter noted that Mr Boggins had said that he would be interested in receiving more information about the films “for possible use in connection with the 2002 [sic] Olympics in Sydney.” The letter stated as follows:
“Our client, Beck Holdings Pty Ltd, is the owner of these films by virtue of an agreement between Peter Whitchurch and our client’s predecessor. We have legal opinions from Australian counsel [which] confirm that there is no copyright in these films. Of course, we can discuss the details of ownership and copyright in more detail if NBC has an interest in any of these films.
As we discussed, portions of these films are the same footage being distributed through the Whitchurch library. It is our client’s understanding, however, that the Beck Holdings films are the only complete set of this series still in existence.”
An annexure to the letter stated:
“The 25 original films are complete. The total running time is approximately seven-and-a-half hours.
Beck Holdings understands that this is the only set of this series of these films still in existence.
Now Beck Holdings Pty Ltd wishes to lease North American rights to broadcast quality videotapes of these unique and historic films for use in the run-up to the Atlanta Olympics in 1996 and the 2000 Sydney Games.”
253 It seems clear that the twenty five films were those the subject of Gadens Ridgeway’s letter of 30 October 1995 to television networks in Australia and New Zealand mentioned above, and were, with the one-hour colour film, also the films the subject of Benson’s letter to Cayton dated 12 October 1995 also mentioned above.
254 On 30 November 1995 Cayton responded to Smith, Gambrell & Russell’s letter to NBC Sports on 30 November 1995, advising them that:
“Big Fights, Inc. entered into Agreements with Peter Whitchurch by which Big Fights was licensed and assigned, and now owns, all rights to the Official Films of the 1956 Olympics plus the films of all other major, and most of the minor, Olympic events of the 1956 Olympics as produced by Peter Whitchurch, all of which films have been registered for Copyright.
Big Fights now owns the exclusive United States rights to the entire Whitchurch Library of 1956 Olympics films, all in color, in perpetuity for all media.”
Cayton requested Beck to provide him with a copy of any agreement between Peter Whitchurch and Beck’s “predecessor” (apparently a reference to Ronald R Beck who had died) so that he (Cayton) might “evaluate the existence of such agreement, and its significance in view of Big Fights’ exclusive rights to the entire Whitchurch 1956 Olympics Library”.
255 On 5 December 1995, Smith, Gambrell & Russell replied to Cayton. They sought to draw a distinction between the “complete set of black and white Official Record Films of the 1956 Melbourne Olympic Games” in the possession of their client, which they asserted were “in the public domain”, and the colour films possessed by TBF to which Beck had “no reason to doubt” TBF had acquired “certain rights” from Peter Whitchurch. They asserted that Beck had acquired its films, “together with worldwide distribution rights”, in the late 1950’s pursuant to an agreement with Peter Whitchurch himself, and continued:
“Beck actively distributed the films in various parts of the world throughout the 60’s and intermittently since. Beck’s ownership and rights to these films were well known to Peter Whitchurch as well as to Mr John Whitchurch and his sisters, who so far as our client is aware succeeded to Peter Whitchurch’s interest in the Whitchurch library after Peter Whitchurch’s death”.
The attorneys’ letter continued as follows:
“To the extent your letter is intended to suggest that Big Fights somehow has rights in Beck’s films by virtue of its arrangement with Mr Whitchurch, then it is in error. Those rights were not Mr Whitchurch’s to convey and we seriously doubt he would have purported to convey such rights. If Mr Whitchurch did not disclose to you the fact that there were other films of the 1956 games in existence, or that other parties had rights to those films, that is an issue between Big Fights and the Whitchurches. Big Fights has no rights with respect to Beck’s films.”
256 On 8 December 1995, Cayton sent copies of this correspondence to Benson and asked her to comment on the claims made by Smith, Gambrell & Russell on behalf of Beck. She responded in her letter of 12 December 1995 which returned to Cayton the signed agreement mentioned earlier. In her letter, she advised Cayton that she had “never heard from” Beck. She added that her father, Peter Whitchurch, had had some dealings with a Mr Ron Beck who was appointed a sales representative “to try and [sic] sell the Olympic films to various TV stations here and overseas”. She said that she would look through her father’s files to find any relevant documents and pass them on to Cayton in the New Year. She also suggested that Cayton contact Paul Talbot, “the president of The Fremantle Corporation in New York”, with whom she said her father had worked closely during the 1956 Games, to see if he knew anything about Beck. Cayton apparently did so and was told by Paul Talbot that he did not believe that Beck had any rights in the films of the Games. Cayton subsequently wrote to Patterson on 19 December 1995 informing him that TBF had acquired from PWP “the exclusive rights to the 1956 Melbourne Olympics Films” and asking him to obtain any information he could about Beck.
257 On 18 December 1995, TBF’s attorneys, Parker Duryee Rosoff & Haft, wrote to Smith, Gambrell & Russell. They noted that both Benson and Paul Talbot had denied that Beck had any rights to the films of the 1956 Games and repeated Cayton’s request that Beck furnish documentary evidence to support its claim.
258 On 1 February 1996, Cayton wrote to Benson as a director of PWP asking her to arrange for the “packing and shipping [to TBF] of all the 1956 Melbourne Olympic Films” and the “paperwork, even including newspaper clippings, of the Peter Whitchurch coverage of the 1956 Melbourne Olympics”. The letter stated that TBF would pay all packing and shipping costs. Cayton suggested Benson contact his “Agent in Australia”, Patterson, who was “very expert in these [packing and shipping] matters”. He supplied her with Patterson’s telephone and fax numbers.
259 Also on 1 February 1996, Binns of Trans World International of London wrote to Cayton seeking to “do a deal” in relation to certain specific footage in TBF’s “catalogue” which Binns had inspected. The footage requested included items from films of three particular sports in the 1956 Games.
260 On 6 February 1996, Benson wrote on behalf of PWP to Filmworld advising that she had made arrangements for “all the 1956 Olympic Games films and the large record book belonging to PWP to be picked up [from Filmworld for dispatch to TBF] during [the current] week”. She also advised:
“Details of the arrangements that we have made with the films will be sent to you at a later date”
and in a postscript,
“The person picking up the films will have a letter from me giving him permission on my behalf to pick up the films.”
261 On 9 February 1996, Naomi Saville (“Saville”), “Head of Research” of Filmworld, wrote to “Sea Media”. No doubt the addressee was identical with the “SEA Multimedia” on whose behalf Mr Goldsmith had written to Filmworld on 8 June 1995 as noted above. The letter gave Filmworld’s “utmost guarantee” that Filmworld was the “official representative of the [1956 Games] film collection and that [its] contract with the owners [gave it] the rights to sell stock footage”. Saville asserted that TBF “in no way own[ed] any stock footage rights”. She said that Filmworld understood that TBF had been sold only certain footage for inclusion in a particular programme that it was producing and that it had no “stock footage rights”. She suggested that Sea Media forward a copy of her letter to TBF and said that she herself had sent a copy of Sea Media’s fax (that fax is not in evidence before me) to “members of the Whitchurch family who … [would] be most interested in this claim of ‘Big Fights’”.
262 On 14 February 1996, Cayton wrote to Benson enclosing a copy of Saville’s letter of 9 February. He stated:
“You know that Big Fights has acquired the exclusive world-wide rights in all media to the complete Whitchurch 1956 Olympics collection, with no other rights of any kind outstanding.
We will appreciate your immediate confirmation by Fax that Filmworld, nor any other company, has no stock footage or any other rights to the 1956 Peter Whitchurch Olympics Library, as all rights have been set over exclusively to Big Fights, Inc”. (emphasis supplied)
263 On 16 February 1996, Benson sent a letter to Patterson confirming that she was giving him permission on behalf of PWP to “pick up the complete collection of the 1956 Olympic Games and the large record book which also belongs to PWP”.
264 On the same day, 16 February, John Whitchurch apparently wrote to Filmworld asserting that the “film library of the 1956 Olympics together with reference book” belonged to the estate of the late Elsie Whitchurch, of whose will he was an executor. He apparently enclosed copies of letters from OCOG (I presume they included OCOG’S letter of 23 November 1960 to Peter Whitchurch). Three days later, on 19 February 1996, John Whitchurch’s solicitors, Russell McLelland & Brown, wrote to Filmworld on his behalf repeating the assertion made in his letter of 16 February that the Films belonged to the estate of Elsie Whitchurch. They added:
“Our client instructs us that at no subsequent time has the estate of the late Elsie Mavis Whitchurch disposed of its ownership in the film library copyright. Although the company Peter Whitchurch Productions Pty Limited has from time to time had a role in managing the marketing of the film copyright, ownership of same has at all times remained in the estate of the late Elsie Mavis Whitchurch.
We are therefore instructed to repeat our client’s notice to you that as an executor of the estate of the late Elsie Mavis Whitchurch he directs you not to deliver custody or control of the 1956 Olympic Games film library and reference book to any person or corporation whatsoever without his prior authority in writing.”
265 The competing claims to the Films now made by TBF, John Whitchurch (on behalf of the estate of Elsie Whitchurch) and Beck, to say nothing of those made by Saville on behalf of Filmworld itself, placed the custodian of the films, Filmworld, in an awkward situation. On 8 March 1996, its solicitors, Banki Palombi Haddock & Fiora, wrote to the solicitors for TBF (Dickson Fisher Macansh), John Whitchurch (Russell McLelland & Brown) and Beck (Gadens Ridgeway) noting that Filmworld had “custody” of the films of the 1956 Games. The letter stated that Filmworld had “managed the films” by agreement with PWP under an arrangement that had ended on 12 June 1995. The letter referred to the various assertions that had been made by or on behalf of Benson, TBF, John Whitchurch, the estate of the late Ron Beck and Beck, and continued:
“Accordingly, our client has retained possession of the films until such time as the competing interests have resolved their differences. If proceedings are instituted to resolve the matter, our client intends to submit to the orders of the court.”
Accompanying the letter were copies of various letters setting out the claims of the respective parties, including the letter from John Whitchurch’s solicitors, Russell McLelland & Brown, of 19 February 1996 referred to earlier.
266 On 27 March 1996, TBF commenced proceeding NG 3192/1996 in this Court under s 574(3) of the Corporations Law seeking reinstatement of PWP’s registration. The named respondents were PWP and the ASC. TBF alleged that it had entered into agreements with PWP (through Benson) after PWP’s registration had been cancelled on 27 February 1992; that a dispute had arisen between TBF and certain third parties as to the ownership of, and the right to possess, certain film stock which was, or had been, PWP’s property; that TBF claimed to be the owner of, or in the alternative to have the right to possess, that film stock pursuant to agreements with PWP; and that TBF sought to have the agreements ratified by PWP. Benson and Talbot (still Swan) wrote letters in support of TBF’s application. An order reinstating the registration of PWP was made on 14 June 1998, although it was conditional on the filing of outstanding annual returns by 12 July 1996.
267 On 26 April 1996, the AOC sent to all six State and the ACT Olympic Committees a memorandum headed “1956 OLYMPIC FOOTAGE” which read as follows:
“For your information please be advised that the copyright for the 1956 footage belongs to the Whitchurch family and is managed by Film World Pty Ltd. [Filmworld’s address, and telephone and facsimile numbers were given]” (emphasis supplied)
Of course, this advice, of relatively recent date but communicated only within the Olympic movement, stands in stark contrast to the primary case which the AOC now makes in this proceeding, that is, that the copyright did not pass to Peter Whitchurch. On 25 June 1996, Benson notified John Whitchurch of a meeting of the directors of PWP to be held on Saturday 6 July 1996 “by telephone conference”. According to the notice of meeting, the business to be discussed was to include the appointment of an accountant to assist PWP in lodging its annual returns and any other documents required by the ASC; ratification of four agreements between PWP and TBF, namely the original licence agreement dated 20/28 September 1983 (signed by John Whitchurch) and the three agreements dated 17 September 1993, 28 February 1994 and 8 December 1995 (all signed by Benson); “ratifying the sale to the Big Fights Inc of the complete collection of 1956 Olympic Films”; the passing of a resolution that PWP execute a deed with TBF having those effects; and the passing of a resolution directing Filmworld to release the films held by it to TBF.
268 On 2 July 1996, Dickson Fisher Macansh, TBF’s solicitors, wrote to BDO Nelson Parkhill, seeking their assistance for Benson in the conducting of the meeting of directors.
269 On 4 July 1996, John Whitchurch’s solicitors, Russell McLelland & Brown, wrote to Benson informing her that they had advised their client that the notice of the directors’ meeting to be held on 6 July was “void of effect” and that any business conducted at the meeting would also be “void of effect” for at least five stated reasons. The stated reasons included: the fact that no telephone number had been specified for the proposed telephone conference; the fact that John Whitchurch would not have all necessary documents to allow him to participate properly; and the fact that a previous resolution to wind up PWP had not been rescinded. (In fact, so far as the evidence reveals, no such resolution had ever been passed: rather, there had only been a resolution on Monday 6 June 1988 that a general meeting be held on or before 31 July 1988 for the purpose of the passing of a special resolution that PWP be wound voluntarily and an ordinary resolution that Andrew be appointed liquidator, but there is no evidence that the general meeting was in fact held.) The solicitors stated that they had advised John Whitchurch that the holding of the proposed meeting of directors would constitute “a dealing with the conduct of the affairs of the company in an oppressive or unjust manner” and would be “unfairly prejudicial to or unfairly discriminatory against [their] client and the interests of the members of the company as a whole”. They added that if the meeting was held and their client was “introduced to a telephone conference”, his participation would be “under protest and without prejudice to his rights to commence” proceedings seeking “orders regulating the conduct of the affairs of the company and restraining any person from engaging in the conduct that is proposed”.
270 Also on 4 July 1996, TBF’s solicitors, Dickson Fisher and Macansh, wrote to Benson giving her instructions (in effect providing a script) relating to the conduct of the proposed meeting of directors on 6 July.
271 The “meeting” of directors was held on 6 July 1996. John Whitchurch participated by telephone. At the beginning of the meeting he read out a statement to the effect that he did not consider the “meeting” to be a validly constituted meeting of directors of PWP for the reasons previously stated by his solicitors and that anything he might say was without prejudice to this view.
272 The first matter considered was the appointment of an accountant to prepare PWP’s annual returns. John Whitchurch suggested that the existing accountants be retained but Benson and Talbot voted to appoint Craig Douglas (“Douglas”) of BDO Nelson Parkhill. John Whitchurch dissented. (Douglas was “in attendance” with Benson.)
273 The meeting then turned to the agenda item of the ratification of the four agreements between PWP and TBF. It was noted that all four agreements, each signed by one director on behalf of PWP, were “tabled before the meeting”. It was also noted that PWP had been deregistered on 27 February 1992 and reinstated on 14 June 1996 (after the last agreement). John Whitchurch asked why ratification was necessary “when company members voted for wanting [PWP] wound-up”. According to the minutes, it was agreed that:
“in order to dispel any confusion, the directors would ratify, on behalf of the company, the signature by a single director of the company of the Agreements, so that the Agreements are confirmed as having been entered into by the company.”
274 A resolution ratifying and confirming all four agreements was passed, with Benson and Talbot voting for, and John Whitchurch voting against, the resolution.
275 A resolution was also passed on the votes of Benson and Talbot that PWP execute a deed with TBF confirming, inter alia, “that the company [PWP] sold to the Big Fights Inc the complete collection of 1956 Olympic Films”. Voting against the resolution, John Whitchurch asserted that the agreements would “break” the law as the rights in perpetuity [had] already been granted to Cappy Productions”. Nevertheless, a deed dated 12 July 1996 to the effect mentioned was entered into by PWP and TBF.
276 Finally, it was resolved that PWP should direct Filmworld to release the films held by it to TBF. John Whitchurch spoke and voted against the resolution, saying that the films were owned by Elsie Whitchurch’s estate, not by PWP.
277 On 11 July 1996, five days after the meeting, Russell McLelland & Brown wrote to Benson and Talbot requesting “unexpurgated copies” of certain documents signed by Benson on behalf of PWP. They also requested particulars of any monies received by Benson or Talbot from TBF from 1991 to the date of the letter and details of the manner in which those monies were being held.
278 On 30 August 1996, TBF commenced proceeding NG 715 of 1996 against Filmworld seeking delivery up of the physical Films. This prompted concern that if it succeeded, TBF might remove the physical Films from Australia. According to a Media Release from the then Commonwealth Minister for Sport, Territories and Local Government, on 31 October 1996 the Protection of Moveable Cultural Heritage Regulations were amended to extend the operation of those Regulations to the original film footage of the 1956 Melbourne Olympic Games so as to prevent the export of the physical Films without the permission of the Commonwealth Minister for Communications and the Arts.
279 I presume, but do not know, that the matter had come to the Minister’s attention as a result of the overtures of the AOC which had been contacted by John Whitchurch. Be this as it may, it was in the second half of 1996 that the AOC, after thirty six years of ignorance, passivity and referral of inquiries to the Whitchurches, became active with a view to claiming an interest in the Films.
280 On 11 December 1996, John Whitchurch assigned to the AOC “his right, title and interest in the entire copyright throughout the world and all other rights of a like nature subsisting now or conferred in respect of the Olympic Films”. The “Olympic Films” were defined as follows:
“All original and copy, edited and unedited, cinematograph films and footage taken by or on behalf of Peter Whitchurch of, or in relation to, the 1956 Olympic Games in Melbourne under the auspices of the Organising Committee for the XVIth Olympiad Melbourne, including without limitation the cinematograph films and footage set out in the Schedule to the Statement of Claim filed on 30 August 1996 in the Federal Court of Australia by The Big Fights Inc. in proceedings No NG715/96.”
As consideration for the assignment, the AOC agreed to pay John Whitchurch $10,000 on 11 December 1996 or as soon thereafter as practicable. I assume, but do not know, that this amount was paid. Subject to his “being able to prepare his own written historical work concerning the 1956 Melbourne Olympics”, John Whitchurch undertook to provide “research and programme consultancy services in connection with the Olympic Films for the purpose of assisting OTAB [the Olympic Television Archive Bureau] in the preparation of a new historical record of the 1956 Melbourne Olympic Games on behalf of IOC”. OTAB was an agent of the IOC. The AOC granted back to John Whitchurch a licence to use still frames from the Olympic Films “for the purpose of creating his own written historical work”.
281 On 21 January 1997, the AOC commenced the first of the present two proceedings, NG 49 of 1997, against TBF as first respondent, PWP as second respondent, Beck as third respondent, Filmworld as fourth respondent, Benson as fifth respondent and Talbot as sixth respondent. John Whitchurch was joined as second applicant on 20 October 1997. Later, the ASC, and much later, ESPN, were joined as seventh and eighth respondents respectively. As noted earlier, there was a discontinuance against Beck, Filmworld and the ASC. The parties have litigated the issues that divide them in this proceeding and proceeding NG 481 of 1998 between the same parties referred to above: the earlier proceeding NG 715 of 1996 between TBF and Filmworld raises no separate issue, except as to costs.
282 On 23 April 1997, the IOC and the AOC entered into an agreement with respect to the litigation. The IOC had proposed such an agreement on 18 December 1996 but Coates did not agree on behalf of the AOC until 23 April 1997, and he agreed then only after the proposal had been amended. The AOC undertook that it would assert its interest fully in the material under dispute, would:
“use its best efforts to ensure that the proceedings are carried out in an appropriate and efficient manner which does not bring the Olympic Movement into disrepute”,
and would keep the IOC fully informed of all developments. For its part the IOC undertook to bear all of the AOC’s direct legal costs associated with the proceedings up to a maximum sum of $250,000. The AOC also undertook, upon a satisfactory resolution of the proceedings, to assign its copyright in the material unencumbered and in full to the IOC at no additional cost.
283 On 20 October 1997, the AOC and John Whitchurch entered into a deed relating to rights said to have been granted to Peter Whitchurch by OCOG on or about 15 February 1960 and 23 November 1960 (referred to in the deed as “the Rights” – the reference is clearly to OCOG’s letters of those dates referred to earlier in these Reasons). According to the deed, John Whitchurch, as sole surviving executor of the will of Peter Whitchurch and as a co-executor of the will of Elsie Whitchurch, entered into the deed “for the benefit of those Estates and in performance of his duty as executor and his duty as co-executor”. As executor of the will of Peter Whitchurch and to the full extent he was able to do so, he assigned to the AOC “all right, title and interest in the Rights”. Further, as co-executor of the will of Elsie Whitchurch and to the full extent he was able to do so, he assigned to the AOC “all the right, title and interest in the Rights” and confirmed the assignment previously mentioned. In return, the AOC agreed to pay $35,000 to John Whitchurch “as executor of the estate of Elsie Whitchurch”. That sum was to be placed in an interest bearing account in the names of the AOC and John Whitchurch and was to be returned to the AOC in the event that (a) PWP or TBF should establish that either of them was entitled to the rights or any copyright in, or other right or title to or interest in, the Films; or (b) John Whitchurch should not obtain an order of the Supreme Court of New South Wales (i) compelling Benson, as co-executor of the will of Elsie Whitchurch, to “join in or confirm” the assignment and agreement to assign, or (ii) requiring her to renounce her executorship, or (iii) for “the general or special administration of the Estate to effect or confirm the assignment”. John Whitchurch undertook to approach that Court promptly to obtain such orders.
284 On 6 May 1998, ESPN completed a purchase of the entire film libraries of TBF including its footage of the 1956 Games.
285 On 21 May 1998 the AOC joined ESPN as eighth respondent to proceeding NG 49 of 1997. On 22 May 1998, the AOC and John Whitchurch commenced proceeding NG 481 of 1998 against the eight respondents to proceeding NG 49 of 1997.
The case of estoppel as pleaded
286 Each of TBF, Benson, Talbot and ESPN pleads four estoppel cases: the first in answer to the allegations made against it or her by both the AOC and John Whitchurch; the second in answer to the allegations made against it or her by the AOC alone; and the third and fourth in answer to the allegations made against it or her by John Whitchurch alone.
287 The first estoppel case is pleaded along the following lines. Peter Whitchurch took the letter of 23 November 1960 as entitling him to authorise PWP to exploit the Films and to grant, for a fee, licences to use them; Peter Whitchurch and PWP, from 1960, and particularly from 1975, dealt with the Films as though the copyright in them had been assigned by Peter Whitchurch to PWP and as if PWP owned that copyright or was entitled to grant licences of that copyright; from 1960, and particularly from 1975, PWP granted licences of the copyright as if it was the owner of the copyright or entitled to grant the licences; the IOC, OCOG (before its dissolution), the AOC (and its predecessor the AOF) and John Whitchurch, all regarded Peter Whitchurch and PWP as entitled to behave in that manner; they were also aware that Peter Whitchurch and PWP were in fact behaving in that manner, yet did not seek relief in respect of that conduct or complain about it or assert any claim inconsistent with it until immediately before the commencement of these proceedings; by reason of these matters, the AOC and John Whitchurch are estopped from denying that Peter Whitchurch and PWP were entitled to act as they did or that PWP was the assignee from Peter Whitchurch of, and owned, the copyright in the Films, or was entitled to grant licences in respect of the Films.
288 The second estoppel case is pleaded along the following lines. Since 1960 one or more of PWP, John Whitchurch, Benson, Talbot, Peter Whitchurch, Elsie Whitchurch and the respective estates of Peter Whitchurch and Elsie Whitchurch (the “Whitchurch interests”), have purported to act as owner of the copyright in the Films and of the physical Films; the AOC and the AOF have encouraged the Whitchurch interests to believe that they owned the copyright in the Films and the physical Films, and until immediately before the commencement of these proceedings, neither the AOC nor the AOF has claimed any right, title or interest in relation to them; by reason of that failure of the AOC and the AOF to make any such claim, the Whitchurch interests have lost the opportunity they would otherwise have had to remedy any deficiency in their titles; if the AOC succeeds in these proceedings, the reputations of the Whitchurch interests and of TBF will be severely damaged because their public claims to ownership of the copyright in the Films will be held to have been made without foundation; since 1960 relevant witnesses (Peter Whitchurch, Elsie Whitchurch and Jacobs) have died and relevant documents (such as the letter dated 12 September 1960 from Peter Whitchurch to OCOG) have been lost and the recollections of available witnesses have been impaired by the passage of time; for these reasons it is unconscionable for the AOC to make the claims which it now makes and it is estopped from making them.
289 I need not at this stage address the third and fourth estoppel cases pleaded against John Whitchurch alone.
The first pleaded estoppel case
290 Questions immediately arise with respect to the first estoppel claim: above all, no detrimental reliance is pleaded. It is alleged, relevantly, simply that the AOC and the AOF regarded Peter Whitchurch and PWP as entitled to exploit the Films, and, in particular, to grant the licences; were aware that they were doing those things; and did not challenge their right to do them until immediately before the commencement of these proceedings. It is noteworthy what is not pleaded. It is not pleaded that the AOC or the AOF caused or encouraged Peter Whitchurch or PWP to assume that the letter of 23 November 1960 entitled him or it to act as they did; that the AOC or the AOF knew or believed that Peter Whitchurch and PWP were not entitled so to act; that anyone would suffer detriment if either or both of the AOC and John Whitchurch were now permitted to enforce their legal rights; or that it would be unconscientious for either of them now to assert those rights.
291 In Waltons Stores (Interstate) Ltd v Maher (1988) 164 CLR 387 (“Waltons”), Mason CJ and Wilson J said (at 404):
“One may therefore discern in the cases a common thread which links them together, namely, the principle that equity will come to the relief of a plaintiff who has acted to his detriment on the basis of a basic assumption in relation to which the other party to the transaction has ‘played such a part in the adoption of the assumption that it would be unfair or unjust if he were left free to ignore it’: per Dixon J in Grundt [v Great Boulder Proprietary Gold Mines Ltd (1937) 59 CLR at 675]; see also Thompson [v Palmer (1933) 49 CLR at 547]. Equity comes to the relief of such a plaintiff on the footing that it would be unconscionable conduct on the part of the other party to ignore the assumption.” (emphasis supplied)
This passage refers to three elements that are not pleaded in the present case:
(1) responsibility for the assumption;
(2) the suffering of detriment; and
(3) “unfairness” or “unjustness” amounting to “unconscionability”.
292 Brennan J considered essential elements of an equitable estoppel to be that “the plaintiff acts or abstains from acting in reliance on the assumption or expectation; [that] the defendant knew or intended him to do so; [and that] the plaintiff’s action or inaction will occasion detriment if the assumption or expectation is not fulfilled” (at 429).
293 Similarly, in Commonwealth v Verwayen (1990) 170 CLR 394 (“Verwayen”), Deane J said (at 444):
“an estoppel will not arise unless the party claiming the benefit of it has adopted the assumption as the basis of action or inaction and thereby placed himself in a position of significant disadvantage if departure from the assumption be permitted”.
294 In my view, the pleading of the first estoppel case is defective because it omits essential elements of estoppel: conduct of the AOC and John Whitchurch which caused detrimental reliance by Peter Whitchurch or PWP or both.
295 In any event, the reasons which I give below for rejecting the second pleaded estoppel case are reasons for which I would reject the first pleaded estoppel case on the facts.
296 I will now turn to the second estoppel case outlined above, which does plead the elements mentioned.
The second pleaded estoppel case
297 The essential elements of the estoppel with which I am concerned are:
(1) that A must have made an assumption;
(2) that B’s conduct must have “encouraged”, “engendered” or “fostered” the making or maintenance of the assumption by A;
(3) (perhaps) that B must have known or intended that A would act or refrain from acting in reliance on the assumption;
(4) that A in fact acted or refrained from acting in reliance on the assumption;
(5) that as a result of acting or refraining from acting on the assumption, A would suffer material detriment if B were to depart from the assumption; and
(6) that in all the circumstances it would be unconscientious for B to depart from the assumption:
see Thompson v Palmer (1933) 49 CLR 507 at 547 (Dixon J); Grundt v Great Boulder Proprietary Gold Mines Ltd (1937) 59 CLR 641 at 674-676 (Dixon J); Waltons (1988) 164 CLR at 404 (Mason CJ and Wilson J – quoted above), 413 (Brennan J), 443 (Deane J); Verwayen (1990) 170 CLR at 413 (Mason CJ), 444-445 (Deane J).
298 The AOC makes a threshold submission that since the respondents do not claim that any of the Whitchurch interests has a continuing interest in the Films, the present estoppel case cannot succeed for its failure to take as its starting point the making or maintenance of an assumption by TBF or ESPN. I do not agree.
299 In Verwayen, Deane J said (at 444):
“While the ordinary operation of estoppel by conduct is between parties to litigation, it is a doctrine of substantive law the factual ingredients of which fall to be pleaded and resolved like other factual issues in a case. The persons who may be bound by or who may take the benefit of … an estoppel extend beyond the immediate parties to it, to their privies, whether by blood, by estate or by contract. That being so, an estoppel by conduct can be the origin of primary rights of property and of contract.” (emphasis supplied)
300 For example, in Hamilton v Geraghty (1901) 1 SR (NSW) (Eq) 81, one, Connor, built a house on land which he believed was his own. In truth it belonged to the defendant Geraghty. Geraghty knew that the land was hers and that Connor was mistaken, yet she allowed him to continue to build without disabusing him or his builders. Connor did not pay the builders. The administrator of one of them, the plaintiff Hamilton, recovered judgment against Connor. In seeking to enforce the judgment, Hamilton discovered that Connor did not own the land. By two deeds, the Deputy Registrar of the Court and Connor respectively purported to assign all Connor’s right, title and interest in the land to Hamilton, that is, at a time when Hamilton knew the truth. Hamilton then sought against Geraghty a declaration “that the land was chargeable with payment to the plaintiff of the amount of the moneys expended on and in connection with the said building”. Geraghty demurred.
301 At first instance, the Chief Judge in Equity allowed the demurrer. However, on appeal it was held, applying Ramsden v Dyson (1866) LR 1 HL 129, that Geraghty was estopped from denying that Connor had an interest in the land, at least to the extent of the monies expended in improving it, and that this “interest by estoppel” could be assigned by Connor. It was not thought to be a bar that the assignee, Hamilton, knew, when taking the assignment, that Connor did not own the land.
302 Assume (as I have found) that Peter Whitchurch did not acquire the copyright in the Films or the general property in the physical Films and therefore had no relevant property of value to sell. What would the position of Peter Whitchurch or PWP be after in fact selling in good faith? They would incur a liability in general damages to the hypothetical buyer for breach of the implied condition as to title. It would only be if knowledge of the true position as to title on the part of the hypothetical buyer and other circumstances had the effect of excluding the implied condition, that, perhaps, no detriment would have been suffered. But in the present case PWP gave TBF express warranties of title in the various agreements between those parties and it would seem that the only way of removing the hypothesised detriment would be to recognise title in full: cf Verwayen at 410-413 per Mason CJ, 445-446 per Deane J, 487 per Gaudron J.
303 If the AOC’s submission were to be accepted, the result would be that the hypothesised detriment could not be overcome. The Court could not adequately compensate the Whitchurch interests by making it a condition of the AOC’s being at liberty to enforce its legal rights that it pay them money, when the extent of the liability in damages to TBF was unknown. The only way to overcome the detriment would be to accord to the estoppel the operation of an independent doctrine of substantive law capable of giving rise to rights in rem. On the other hand, there might be a case where a buyer agreed to hand back property purchased for a return of the purchase price with or without an additional payment of compensation in a specified sum. In such a case, in the absence of any other detriment suffered by the seller, it may not be necessary to recognise an estoppel giving rise to rights in rem, on the basis that a monetary adjustment would suffice to remove the detriment; cf Verwayen, above.
304 The decisive question is that posed by TBF, that is, whether the AOC is estopped, as against the Whitchurch interests, from denying the assumption they made and, if so, what relief should be granted to overcome the detriment that would otherwise be suffered by them.
1. Did the Whitchurch interests make or maintain the assumption in question?
305 The respondents submit that “[s]ince November 1960, the Whitchurch interests have purported to act as owners of all rights in connection with the Melbourne Olympic Films including all copyright and all film materials associated therewith in the undoubted belief of their entitlement to do so”. This “belief of their entitlement” is the relevant assumption.
306 In my view it is clear that the Whitchurch interests assumed that initially Peter Whitchurch, and in course of time the estate of Peter Whitchurch, the estate of Elsie Whitchurch, or PWP, owned, or in the case of PWP was entitled to dispose of, the copyright in the Films and the physical Films, and that the AOC or its predecessor had no rights in relation to them. The existence of this belief is shown by the following:
· Benson gave the following affidavit evidence:
“At all times between 1960 and my father’s death, my father maintained that he had acquired in 1960 the Olympic Films and the copyright in those films. I recall on numerous occasions my father saying to me words to the effect:
Peter Whitchurch: ‘One day the Olympics will come back to Australia. When it does the films will become very valuable to us.’
Peter Whitchurch: ‘All television in Australia will one day be colour. When it does the copyright of the colour film from the Olympics will be very valuable to us.’
Peter Whitchurch: ‘They cannot use the Olympic film without licensing it from me.’”
This evidence is important both for showing that Peter Whitchurch made the relevant assumption and for strongly suggesting that he made it because of his own understanding of the effect of his 1960 agreement with OCOG, not because of any conduct on the part of OCOG, the AOF or the AOC subsequently (see below).
· A person not identified, but clearly an estate planning adviser to Peter and Elsie Whitchurch, wrote them a letter dated 23 August 1979 which referred to a recent meeting at their home and listed the assets of Peter Whitchurch as including:
“copyrights in various films including the Official Film of the 1956 Melbourne Olympics.”
I infer that Peter and Elsie Whitchurch informed the adviser that Peter Whitchurch owned the copyright.
· On 25 June 1984 John Whitchurch sent a letter on the letterhead of PWP to Hilliard David & Associates, advertising agents of Melbourne, which stated that PWP owned “the copyright in the official film” of the Games (while John Whitchurch gave evidence that he believed PWP was at the time acting only as agent for the estate of his late father, he did not dispute, and in view of the terms of the letter could hardly have disputed, that his understanding was at least that the “Whitchurch interests” owned the copyright).
· The dispute with Cappy was resolved in October 1984 by a deed by which Cappy “acknowledge[d]” that PWP was “the copyright owner of all film rights in the official film of the 1956 Melbourne Olympic Games”.
· On 20 November 1986 Wood, Roberts & Rayfield, solicitors, under instructions from Benson as a co-executor of the estate of Elsie Whitchurch, wrote to “20th Century Television” asserting that it was “the desire of the Estate to sell the film [including the Films] in toto”.
· John Whitchurch and Benson disclosed “Cinematography films”, presumably including the Films, as an asset in the estate of Elsie Whitchurch in their affidavit of assets and liabilities in that estate sworn 19 December 1986.
· On 24 January 1987 John Whitchurch, Benson and Talbot gave their written instruction to PWP, to “commence sale negotiations for all possible cinematographic film together with any associated right/s therein”.
· In March 1987 John Whitchurch on behalf of PWP sent out letters calling for expressions of interest in buying the Films.
· A “Cinematogrphic [sic] Film Collection” appeared as an asset in the statement of “ESTATE RECEIPTS & DISTRIBUTION” prepared by John Whitchurch in relation to the estate of Elsie Whitchurch which was signed by Benson on 9 April 1987.
· In or about September 1993 John Whitchurch and Benson had their conversations in relation to the “Olympic Glory” videos which they considered infringed the Whitchurch interests’ copyright in the Films.
· On 28 February 1994 and 12 December 1995 the agreements between PWP (signed by Benson) and TBF were entered into.
· On 11 December 1996 John Whitchurch assigned to the AOC all his right, title and interest in the copyright in the Films.
307 Two further agreements earlier than any of those mentioned above should also be noted. First, there is the agreement between Peter Whitchurch himself and Cappy dated 21 April 1975. Although that agreement did not refer to “copyright”, nonetheless by it Peter Whitchurch granted to Cappy rights of reproduction. Second, there is the original grant of licence from PWP (signed by John Whitchurch) to TBF of 28 September 1983 (and the renewals in 1987 and 1991). A similar observation can be made about this agreement. Taken in conjunction with the evidence of the later matters to which I have referred, these agreements also suggest that Peter Whitchurch and John Whitchurch respectively believed that the Whitchurch interests owned the copyright as early as the dates of those agreements.
308 While John Whitchurch and his sisters may have asserted contradictory positions as to whether title resided in PWP or their mother’s estate, I think there is no doubt they assumed that “the Whitchurch interests” owned the copyright and that PWP was authorised to make arrangements to dispose of it.
309 There is dispute as to whether TBF believed that the Whitchurch interests owned the copyright in the Films. However, the pleading that the AOC is estopped refers only to the assumption made by the Whitchurch interests and the conduct of the AOC in encouraging that assumption. I have already accepted TBF’s submission that TBF may entitled as a privy to take advantage of a conclusion that the AOC is estopped from denying the title of the Whitchurch interests. Therefore, whether TBF assumed that the Whitchurch interests owned the copyright in the Films is irrelevant to any issue that I have to decide.
2. The AOC’s role in relation to the making or maintenance of the relevant assumption by the Whitchurch interests
310 John Whitchurch, Benson and Talbot were not alone in thinking that PWP or one or other of the two estates owned the copyright in the Films. I have referred above to the occasions on which the AOC or the AOF represented to the IOC and to persons interested in obtaining footage of the Games that one or other of the Whitchurch interests owned the copyright in the Films.
311 I have also referred to the occasions on which they made such representations to the Whitchurch interests themselves. For example, the AOF Inc Sydney (Coles) sent to PWP (as well as to the AOF Inc Melbourne) a copy of its letter of 11 February 1988 to GT Consultants in Kuala Lumpur, advising that PWP was the “Copyright [owner] of 1956 Olympic Games Film”, giving PWP’s address, and advising that to save time the AOF had sent their expression of interest in negotiating for copyright “clearance” to PWP. At about the same time (February or March 1988), it sent to PWP copies of its replies in similar terms to inquiries made by Hahn Won International and Mary-Ann Lupa. There were also the two occasions on which letters were sent by PWP (in one case signed by John Whitchurch and in the other by Benson) to persons including the AOC seeking expressions of interest in purchasing the Films. On neither occasion did the AOC protest that it already owned them.
312 The AOC submits that it relied on the Whitchurch interests themselves for information about ownership rights in respect of the Films. Coates said in evidence:
“ ... please remember in those days the AOC AOF was very much a kitchen table organisation and it was very unresourced and our primary purpose then and now is still sending our teams to Olympic Games and properly preparing them. The commercial, particularly in those days, the commercial aspects were very much secondary.”
313 The AOC’s records in relation to the 1956 Games, in particular in relation to the filming of them, were indeed poor. It will be recalled that on 8 January 1985 Patching wrote to Mrs Berlioux of the IOC advising that:
(1) there were “no internal records” in the AOF’s office “relating to the contractual arrangements or agreement concerning the official Film of the 1956 Olympic Games”;
(2) the AOF found it necessary “to revert to the information provided on pages 156 to 160 of the XVIth Olympiad (Melbourne) Official Report”; and
(3) “[a]ll the rights for the Film are held by Peter Whitchurch Productions ...”
314 Coates, who joined the board of the AOF in 1982, said that his understanding up until 1996 when the AOC began looking into the matter was simply that “the approval of others was required” to use the films made of the 1956 Games and that “the film rights were owned by someone associated with the name ‘Whitchurch’”.
315 The AOC seeks to contrast its ignorance with the knowledge of the Whitchurch interests who at least had a copy of the letter of 23 November 1960 from OCOG to Peter Whitchurch. Benson testified that she used an edited version of the letter “as evidence of PWP’s right to license the Olympic Films”. John Whitchurch used it for the same purpose. He testified that he gave a copy of it to Jacobs at their meeting at his mother’s house in August 1983, that is, at the beginning of their negotiation of the original licence agreement between PWP and TBF.
316 The AOC submits that on the evidence, its conduct did not cause the Whitchurch interests to make or maintain the relevant assumption or to act on it to their detriment. There can be no doubt that such a causal link is essential if TBF is to make out its case that the AOC was estopped in favour of the Whitchurch interests: if the AOC’s conduct was causally irrelevant to the making or the maintenance of the assumption by the Whitchurch interests, the AOC is not estopped from acting inconsistently with that assumption.
317 The Whitchurch interests were dealing with the films before the AOF Inc first referred an inquirer to PWP. So far as the evidence reveals, the first communication in relation to any of the Films between the AOC and the Whitchurch interests after the letter of 23 November 1960 is Coles’ letter to John Whitchurch of 27 June 1985, that is, some twenty five years later, which enclosed a copy of the letter from Mr Lecoq and asked for John Whitchurch’s response. This letter conveyed to John Whitchurch no more than that the AOF Inc did not know what rights were held by whom in relation to the Films. It did not convey to John Whitchurch that the AOF Inc considered that PWP owned all rights in respect of them, and, in particular, the copyright in them.
318 It is true that the AOF and the AOF Inc did in fact understand that the Whitchurch interests owned the copyright and so informed the IOC several times beginning on 8 January 1985. However, there is no evidence that any of that correspondence in 1985 was shown to the Whitchurch interests. It is not until the letter of 11 February 1988 from Coles to GT Consultants Sdn Bhd (discussed above), a copy of which was apparently sent to PWP, that there is any suggestion in the evidence of the making of anything that was arguably a positive representation to the Whitchurch interests. It is true that PWP, through John Whitchurch, had, on or about 11 March 1987, sent a copy of PWP’s first “invitation to treat” to the AOF Inc and the IOC but this did not give rise to a positive representation by the AOF Inc in response. Rather, there was no response. It is also true that the yet earlier letter from Patching to Mrs Berlioux of 8 January 1985 had referred to a “letter sent to an enquirer in June 1984”. However, this letter is not in evidence: it may or may not have referred to PWP’s owning the copyright. Moreover, having been written by Patching, it may not have been in the same terms as the letters that Coles sent to enquirers in 1988. In any event, there is no evidence that a copy of the June 1984 letter was sent to the Whitchurch interests. Evidence was not led from John Whitchurch that he received a copy of the letter.
319 There is ample evidence that the Whitchurch interests assumed that they owned the copyright in the Films long before receipt by PWP of the copy of the letter of 11 February 1988 from Coles to G T Consultants Sdn Bhd and long before John Whitchurch sent the first “invitation to treat” to the AOF Inc in March 1987. That evidence is found in the evidence of events and matters that preceded those dates which are described in para 306 above.
320 That evidence makes clear that the Whitchurch interests’ assumption as to their title was not prompted by anything said or done by the AOC. This is not to say that the Whitchurch interests were themselves without doubt that they owned the copyright. For example, John Whitchurch in his letter of 25 November 1986 to Wood, Roberts & Rayfield said that it was “not yet clear whether title to all of the film/s … has been established”. There was also the following qualification in the deed with Cappy executed on 23 October 1984:
“To the best of Whitchurch’s [PWP’s] knowledge there are no other persons or corporations with the possible exception of the International Olympic Committee who have any rights to the final footage and/or who could lawfully require Cappy to pay any consideration for the utilization or exploitation of the rights granted by this agreement.”
321 However, the Whitchurch interests did not approach the AOF or the AOC with a view to resolving doubts. Rather, they were content simply to assert and act on the understanding that they owned the copyright. As noted earlier, according to Benson her father had expressed that understanding of his rights from 1960 down to his death in late 1981. Moreover, the same view of matters had been communicated by Peter Whitchurch to his estate planning advisers by, and probably shortly before, 23 August 1979. We do not know what caused Peter Whitchurch to make that assumption but there is no evidence before me that it was anything done or said or omitted to be done or said by the AOF. And it must be remembered that Peter Whitchurch had, but apparently the AOF and the AOF Inc did not have, possession of the contractual correspondence between himself and OCOG of 1960. Perhaps he understood that contractual arrangement as having assigned the copyright to him. Perhaps he decided to “chance his arm” by dealing as if it had done so. But there is no reason to think that the AOF’s conduct caused him to assume that he had title.
322 It may be suggested that the doubt on the part of the Whitchurch interests was dispelled once Coles began referring requests for footage to PWP in 1988 and describing PWP as the copyright owner. In fact Coles’ reference seems to have been no more than a reflection of an understanding derived by him from the conduct of the Whitchurch interests, including PWP’s distribution of the “invitation to treat” in March 1987. In any event, none of John Whitchurch, Benson or Talbot testified that anything the AOC did or said or omitted to say or do induced or encouraged him or her to believe that the Whitchurch interests owned the copyright in the Films, and Benson’s affidavit evidence is otherwise. She attributed her assumption as to the Whitchurch interests’ title to her father. I have noted earlier what she states her father told her. In addition her testimony includes the following:
“I believed, on the basis of:
(a) my knowledge that my father had during his life licensed the Melbourne 1956 Olympic films through PWP;
(b) my brother John had after my father’s death licensed the use of the films through PWP;
that PWP owned the copyright in the Melbourne Olympic films, and owned the films themselves, and was entitled to sell, license, and otherwise deal with them commercially.” (emphasis supplied)
323 This evidence was led partly to support TBF’s contention that the Whitchurch interests’ rights in respect of the Films were held by PWP rather than by the estate of Peter or Elsie Whitchurch. Nevertheless, it remains significant that Benson did not attribute her understanding that PWP owned the copyright to any representation or silence on the part of the AOF or the AOF Inc.
324 It is interesting to consider what would have happened if the AOC had challenged the Whitchurch interests’ title earlier than it did. Would they have immediately recognised the falsity of their assumption? It is far from obvious that they would have done so any more readily than TBF has done so in these proceedings. They would probably have argued, as TBF has done, that upon the proper construction of OCOG’s letter of 23 November 1960, the copyright was assigned to Peter Whitchurch. The reason is that they were not, and never had been, dependent on the AOF or the AOF Inc for their understanding of their rights. Rather, Peter Whitchurch had taken a stance in relation to the scope of his rights and the other Whitchurch interests had “inherited” that understanding.
325 If the AOF Inc had not made the representations or had asserted its copyright after receiving the first “invitations to treat” in Marach 1987, the Whitchurch interests would still have continued to make and maintain the assumption as to their title. In my view, because the Whitchurch interests already believed that they owned the copyright, the AOF Inc’s statements made to third parties and communicated by the AOF Inc to PWP to the effect that PWP owned the copyright in the Films did not play “such a part in the adoption of, or persistence in, the assumption that [it] would be guilty of unjust and oppressive conduct if [it] were now to depart from it”: cf Verwayen at 444 (Deane J).
3. Did the AOC know that the Whitchurch interests would act or refrain from acting in reliance on the assumption or intend them to do so?
326 The AOC submits that it did not know or intend, and ought not to have known, that its conduct would encourage the Whitchurch interests to make the relevant assumption or know or intend them to act on that assumption: cf Waltons at 413 (Brennan J). In Waltons, Brennan J went on to say (at 423):
“It is essential to the existence of an equity created by estoppel that the party who induces the adoption of the assumption or expectation knows or intends that the party who adopts it will act or abstain from acting in reliance on the assumption or expectation: see per Lord Denning MR in Crabb v Arun District Council[[1976] Ch at 188]. When the adoption of an assumption or expectation is induced by the making of a promise, the knowledge or intention that the assumption or expectation will be acted upon may be easily inferred. But if a party encourages another to adhere to an assumption or expectation already formed or acquiesces in the making of an assumption or the entertainment of an expectation when he ought to object to the assumption or expectation — steps which are tantamount to inducing the other to adopt the assumption or expectation — the inference of knowledge or intention that the assumption or expectation will be acted on may be more difficult to draw.” (emphasis supplied)
327 I do not understand his Honour to be saying in this passage that subjective knowledge or intention is necessary. If it were necessary, cases based on proprietary estoppel could yield different results where the only difference between them was that the intelligence and mental acuity of one owner differed from that of the other. Rather, I think the requirement is as set out in Parkinson (ed), The Principles of Equity (1996) at [748]:
“responsibility only attaches to those statements which a reasonable person would consider were meant to be relied upon, on the basis of the language in which and the conduct by which, they were conveyed, and in all the circumstances of the relationship of the parties.
…
This focus on the reasonableness of the belief of the person relying on the assumption may appear to contradict the requirement, which is sometimes stated, that in order for an estoppel to arise, the representor must intend the statement to be acted upon. [see, for example, the passage quoted above from the judgment of Brennan J in Waltons at 423] The contradiction is only apparent however. Whether or not there is found to be an intention that the representation be acted upon is a matter to be determined by examining the language and conduct of the party to be estopped. The issue is therefore not what the party subjectively intended, but what a reasonable person in the position of the representee would have understood the person to intend. If the statement is not of such a nature that one could reasonably expect it to be acted upon, then no intention that it should be acted upon will be attributed to its maker.” (citations omitted)
328 This passage is consistent with the following passage in the judgment of Deane J in Verwayen at 445:
“the allegedly estopped party ... must have played such a part in the adoption of, or persistence in, the assumption that he would be guilty of unjust and oppressive conduct if he were now to depart from it. The cases indicate four main, but not exhaustive, categories in which an affirmative answer to that question may be justified, namely, where that party: (a) has induced the assumption by express or implied representation; (b) has entered into contractual or other material relations with the other party on the conventional basis of the assumption; (c) has exercised against the other party rights which would exist only if the assumption were correct; (d) knew that the other party laboured under the assumption and refrained from correcting him when it was his duty in conscience to do so. Ultimately, however, the question whether departure from the assumption would be unconscionable must be resolved not by reference to some preconceived formula framed to serve as a universal yardstick but by reference to all the circumstances of the case, including the reasonableness of the conduct of the other party in acting upon the assumption and the nature and extent of the detriment which he would sustain by acting upon the assumption if departure from the assumed state of affairs were permitted. In cases falling within category (a), a critical consideration will commonly be that the allegedly estopped party knew or intended or clearly ought to have known that the other party would be induced by his conduct to adopt, and act on the basis of, the assumption. Particularly in cases falling within category (b), actual belief in the correctness of the fact or state of affairs assumed may not be necessary. Obviously, the facts of a particular case may be such that it falls within more than one of the above categories.” (emphasis supplied)
329 In the present case, the alleged representations were not promissory: the AOC did not promise the Whitchurch interests that it would assign to them the copyright in the Films or that it would not contest any claim by them to be the owner of that copyright. The statements as to copyright ownership were all expressions of the statement maker’s understanding of the existing position. The AOF Inc’s silence in the face of the “invitations to treat” sent by John Whitchurch and Benson respectively was a manifestation of that understanding. The statements and the silence fall within category (a) or (d) described in the passage set out above from Deane J’s judgment in Verwayen.
330 The question therefore arises whether the AOF Inc “knew or intended or clearly ought to have known” that the Whitchurch interests would rely on those statements. I do not think that it did so or ought to have done so. It must be recalled that apart from the purchase made by the Commonwealth National Library Film Division from Peter Whitchurch in 1961, there is a gap in the evidence from the concluding of the agreement between OCOG and Peter Whitchurch on 23 November 1960 and Peter Whitchurch’s dealing with Cappy in 1975 – a period of some fifteen years. OCOG was deregistered and, consequently, dissolved on 30 April 1974. There is no evidence before me of any communications between it and the AOF between 23 November 1960 and that date. There is no suggestion that OCOG sent a copy of its 1960 correspondence to the AOF.
331 It is true that Tanner was Secretary-Treasurer of the AOF from 1947 to 1973 and President of that body from 1973 until 1977. Tanner was also a member of the Provisional Organising Committee of the Games and then of OCOG as from its incorporation on 17 September 1951. He was a subscriber to OCOG’s memorandum and articles of association. It seems clear that he was a member of the Provisional Organising Committee by reason of his position as Secretary-Treasurer of the AOF and that he was a subscriber of OCOG’s memorandum and articles of association and therefore a member of OCOG by reason of his membership of the Provisional Committee. Tanner was, moreover, a member of the Winding Up Committee of OCOG and was present at the meeting of that Committee on 23 November 1960 which resolved to accept Peter Whitchurch’s offer.
332 I do not accept, however, that Tanner had a duty to report the making of the agreement between OCOG and Peter Whitchurch to the AOF. On general principle, a director of a company does not owe a duty to disclose all information which comes to him or her in that capacity to an entity that appointed him or her to that office, and the director’s knowledge of that information is not imputed to the appointor; cf Harkness v Commonwealth Bank of Australia Ltd (1993) 32 NSWLR 543. Cases such as Re Rossfield Group Operations Ltd [1981] Qd R 372 and TNT Australia Pty Ltd v Normandy Resources NL (1989) 53 SASR 156 are distinguishable: OCOG was not controlled by the AOF; both the Provisional Organising Committee and OCOG itself included as members persons who had no connection whatever with the AOF; and under the articles of association of OCOG, all members, not only those who were delegates to the AOF, were eligible to be appointed members of its Executive Committee by resolution of a general meeting. Nor do I think it can be said that the general position is altered by what the respondents describe in their submissions as the “non-commercial” and “relatively transparent” nature of OCOG’s business. I do not exclude the possibility that Tanner may have had a duty to inform the AOF of particular pieces of information: it is not shown, however, that he had a duty to report to the AOF the making of the OCOG – Peter Whitchurch contract.
333 But I will now assume that Tanner in fact reported the terms of the contractual arrangement concluded between OCOG and Peter Whitchurch to the AOF and also that his knowledge of that arrangement was that of the AOF. The fact remains that so far as the evidence reveals, throughout the period from 1960 until 1973 when Tanner ceased to be Secretary-Treasurer of the AOF; from then until the dissolution of OCOG on 30 April 1974 when, for the first time, the AOF might have called for an assignment of the copyright (pursuant to clause 9 of OCOG’s memorandum of association); from then until 1977 when Tanner ceased to be President of the AOF; and from then until the incorporation of, and vesting of the AOF’s assets in, the AOF Inc on 24 April 1985, the AOF was not aware of any dealing by Peter Whitchurch with the Films inconsistent with the rights that had been granted to him. It was not until 1987 that the AOF Inc became aware of a threat of such dealings. I do not impute to the AOF Inc in 1987 knowledge which Tanner, an officer of a different unincorporated body, albeit its predecessor, had acquired in 1960 and, I am prepared to assume, reported orally to that unincorporated body at about that time.
334 There is no evidence that the AOF was aware of the making of the agreement of 21 April 1975 between Peter Whitchurch and Cappy. Of course, there is no suggestion either that the AOF knew that in 1979 Peter Whitchurch was informing his estate planning adviser that he owned the copyright in the Films. It is, of course, always possible that the AOF said or did something all those years ago that encouraged Peter Whitchurch to have that understanding. But more probably it had no contact with Peter Whitchurch and no knowledge of, or interest in, what he was doing. On 8 January 1985 the AOF advised the IOC that it had “no internal records ... relating to the contractual arrangements or agreement concerning the official Film of the 1956 Olympic Games”. In the meanwhile, Peter Whitchurch had died and John Whitchurch, on behalf of PWP, had, without the AOF’s knowledge, both granted the first four-year licence to TBF and advised Hilliard David & Associates that PWP owned the copyright in the official film of the Games. On 19 November 1985 the AOF Inc advised the IOC that it did not have “control” over the issue raised by Mr Lecoq because it understood that “Mr Whitchurch and his company” owned the copyright in the official film of the Games.
335 The AOF and the AOF Inc on the one hand and the Whitchurch interests both had understandings that the latter owned the copyright. But the Whitchurch interests’ understanding was independent of that of the AOF and the AOF Inc, and, so far as the evidence reveals, preceded in time the existence of that understanding of the AOF or the AOF Inc.
336 From its incorporation on 24 April 1985, the AOF Inc “took over” the AOF’s lack of “internal records” referred to above. The AOF Inc understood that the Whitchurch interests knew the true position and looked to them for information, rather than vice versa. For example, when, on 27 June 1985, Coles passed on Mr Lecoq’s request to John Whitchurch, he advised John Whitchurch that it was the intention of the AOF Inc not to reply until it heard from John Whitchurch on the matter, and continued:
“You may wish to reply directly to this French organization yourself, and in doing so provide us with a copy of your letter, from which in turn, we can act accordingly, as there appears to be some conflict with what has been sent to us by Mr Jean Lecoq.” (emphasis supplied)
337 The AOF Inc’s subsequent correspondence with the IOC about the letter from Mr Lecoq was consistent with this letter to John Whitchurch: the AOF Inc had no record or knowledge of the contractual arrangements concerning the films of the Games and the Whitchurch interests were the people who knew all about those matters. The situation seems to have been that the AOF Inc had no independent information whatever as to the true position and it simply referred all inquiries to the Whitchurch interests who, it understood, possessed all relevant films and who, it assumed, had at ample rights to enable it to meet all requests.
338 It should also be noted that none of the representations in question by the AOF Inc were in their terms addressed to the Whitchurch interests. Rather, they were directed to third parties who wished to obtain footage of the Games and copies were forwarded to the Whitchurch interests to be dealt with. I do not consider that reasonable persons in the position of the Whitchurch interests would, in all the circumstances, have taken this conduct of the AOF Inc to give rise to representations to them for the correctness of which the AOC was accepting responsibility as between it and the Whitchurch interests. In my view, reasonable persons in the position of the Whitchurch interests would have understood, not that the AOF Inc was, from a position of superior knowledge, informing them of the position, but that it was, from a position of ignorance, informing third parties of its understanding of the position and referring those third parties to a superior source of knowledge. This view of matters tends to confirm my view arrived at below that it would not be unjust or oppressive conduct for the AOC now to act inconsistently with the Whitchurch interests’ assumption.
4. The Whitchurch interests’ reliance upon the assumption; and
5. The suffering of detriment by reason of reliance upon the assumption
339 The respondents seek to plead that the Whitchurch interests would suffer detriment in two ways if their assumption as to their title were now falsified. First, they say that the Whitchurch interests “have lost the opportunity they would otherwise have had to remedy any deficiency that may be found to have existed in their titles”. Second, they plead that the “reputation of the late Peter Whitchurch and his family and that of [TBF] will be severely damaged by reason of their public claims to rights in the Melbourne Olympic Films being held by the Court to be without foundation”. The respondents sought to plead this second form of detriment for the first time on the first day of the hearing. The AOC objected, submitting that it raised a factual issue with which it (the AOC) was not in a position to deal. I accept the AOC’s submission. The amendment suggests inquiries as to the extent, if any, to which the Whitchurch interests still deal in films and how they are regarded in that respect. No satisfactory explanation was given for the failure to plead this species of detriment earlier. I disallow the amendment, but even if I had allowed it, it would not have availed the respondents for reasons that appear below.
340 In my view, the first of the two forms of detrimental reliance is illusory. There is no evidence to suggest that if the AOF or the AOC had, at any time prior to the commencement of these proceedings, for example, after receiving the “invitation to treat” in March 1987, asserted its copyright in the Films, the Whitchurch interests would have sought to purchase that copyright, thereby remedying their lack of title. There is also no evidence that any opportunity they once had to do so has been “lost”. It has always been, and still is, open to the Whitchurch interests to seek to purchase the copyright. It is, of course, no answer to say that the AOC would be unlikely to sell or would want too high a price: the same difficulties, if they exist, would have confronted the Whitchurch interests regardless of when they had sought to buy.
341 I turn now to the second form of detrimental reliance sought to be pleaded. First, any loss of reputation on the part of TBF itself is legally irrelevant to the estoppel in favour of the Whitchurch interests because there is no suggestion that damage to TBF’s reputation is or causes damage to those interests. Second, there is no evidence of the Whitchurch interests’ “reputation” on the basis of which an assessment can be made of the likelihood of damage to it. The nature of the reputation in question is not specified. Is it the Whitchurch interests’ reputation as a dealer in the rights to footage of sporting events, their general business reputation, or their reputation generally in the community? In my view, there is no evidence of damage to reputation and this form of detrimental reliance has therefore not been proved.
342 The respondents do not plead that the Whitchurch interests have suffered detriment by incurring a legal liability in damages to TBF for breach of the contractual undertaking as to title. The evidence suggests a reason: there is no such liability because TBF has suffered no loss.
343 By an Asset Purchase Agreement dated 6 May 1998, TBF sold to ESPN all of the property and assets which TBF owned and utilised in its business, including all TBF’s right, title and interest in and to its “Olympic Library”. ESPN expressly assumed and undertook to be liable for any and all of the liabilities, obligations and commitments of TBF relating to, or in connection with, inter alia, the Olympic Library, and, in particular, proceeding NG 49 of 1997. ESPN also acknowledged that TBF had made available to it the pleadings and other documents in that proceeding. The price payable by ESPN to TBF is not apportioned as between assets sold.
344 Let it be assumed that included in the assets sold was any cause of action TBF had against PWP for damages for breach of warranty of title. The assertion of the claim against PWP would have led nowhere because PWP would have answered, correctly, that TBF had suffered no loss by reason of the operation of the contractual arrangement mentioned between it and ESPN.
345 In sum, it is for good reason that the respondents have not pleaded what may have appeared to be the most obvious form of detriment supposedly suffered by the Whitchurch interests.
6. In all the circumstances, would it be unconscientious for the AOC to depart from the assumption?
346 I have mentioned previously reasons why I do not think it would be unjust or oppressive for the AOC to depart from the assumption made by the Whitchurch interests.
347 The AOC also submits in the present context that it is not estopped because it did not know that it owned the copyright in the Films when it made the representations and when it was silent in the face of the Whitchurch interests’ dealings and attempted dealings with them. It submits that in the light of its ignorance, it is not unjust or unconscionable for it now to assert the title which it has learned in recent years that it has.
348 I accept Coates’ evidence that he did not know that the AOC had any rights in respect of the Films until 1996 when TBF commenced its proceeding against Filmworld. On the other hand, Coates conceded, inevitably, that the AOC could have made inquiries earlier, and, if necessary, sued much earlier than it did. Coates’ cross-examination included the following:
“I think the overriding matter that weighed most on my mind in deciding to proceed [with the present action] was the fact that for the first time we had looked at the Memorandum and Articles of Association of the company which was the organising committee [OCOG] and it had been brought to my attention that on a winding-up the assets of that committee were to vest in the Australian Olympic Federation. And that being the case I was certainly keen to see us gather in those assets including this film.
Was that matter, that is the ascertainment of the terms of the memorandum of association, the critical matter which caused you to take a view that AOC may have a claim in respect to these films?--- Yes, it was. I never stopped to think about it before yet I had been involved in constituting the company which would have run the 1992 Olympics in Australia had Brisbane been successful and similarly that same company was to have been the company had Melbourne run the ’76 [sic – 1996] games and then originally was to be the organising committee for Sydney, and all of the principles upon which we established those organising committees and subsequently the SOCOG, the Sydney organising committee, are based on that premise. But I had not gone back and really applied it to Melbourne previously.”
“Mr Coates, is it the effect of what you have said before that your belief, at least up until the last year or so, was that AOC did not have any rights in respect of these films?
..................................................................................................................
THE WITNESS: No, I don’t believe it went to any rights; I just recollect there was a process that in respect of requests to use the film the AOF AOC referred such requests elsewhere. I don’t think that I had ever until these proceedings or until the Big Fights proceedings commenced considered whether the AOC had any rights at all.”
349 In Willmott v Barber (1880) 15 Ch D 96 at 105-106, Fry J set out the necessary elements of a proprietary estoppel as follows:
“A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights. What, then, are the elements or requisites necessary to constitute fraud of that description? In the first place the plaintiff must have made a mistake as to his legal rights. Secondly, the plaintiff must have expended some money or must have done some act (not necessarily upon the defendant's land) on the faith of his mistaken belief. Thirdly, the defendant, the possessor of the legal right, must know of the existence of his own right which is inconsistent with the right claimed by the plaintiff. If he does not know of it he is in the same position as the plaintiff, and the doctrine of acquiescence is founded upon conduct with a knowledge of your legal rights. Fourthly, the defendant, the possessor of the legal right, must know of the plaintiff’s mistaken belief of his rights. If he does not, there is nothing which calls upon him to assert his own rights. Lastly, the defendant, the possessor of the legal right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal right. Where all these elements exist, there is fraud of such a nature as will entitle the Court to restrain the possessor of the legal right from exercising it, but, in my judgment, nothing short of this will do.” (emphasis supplied)
350 This passage was accepted as a correct statement of the law by the High Court in Svenson v Payne (1945) 71 CLR 531 at 542-543. In that case, a man died, owning a hotel. His will gave his trustee power to grant leases for terms not exceeding seven years. The trustee and life tenant (“JSP”) under the will granted to the defendant (“Svenson”) a lease of the hotel for ten years and a further lease for fifteen years to commence upon expiry of the original ten-year term. About one year prior to the expiry of the initial term, JSP died. The executors of his will, who were also the executors of the will of the original deceased, and one of whom (“Mrs Furnell”) was JSP’s daughter and was remainderman and sued in that capacity also, sought a declaration that the second lease was void.
351 Svenson, who had not inquired as to JSP’s power to grant her the lease, pleaded that the plaintiffs were estopped from saying that the second lease was void. She pleaded that JSP had been required under statute to carry out work on the hotel, that she, Svenson, had done that work at her expense to the plaintiffs’ knowledge, and that the plaintiffs had, “by their silence, permitted and induced” her to take the lease and to do the work.
352 Mrs Furnell had not been consulted prior to the grant of the impugned lease by JSP (her father) and had become aware only some time after the grant of it that she had a present interest in remainder, that JSP’s power of leasing was limited and that her consent to either of the leases was material.
353 The High Court (Latham CJ, Rich and Williams JJ) said (at 542-543):
“As Fry J pointed out in Willmott v Barber, where the requisites necessary to raise the estoppel are set out, a person is not deprived of his legal rights unless he has acted in such a way as to make it fraudulent in the equitable sense for him to set up those rights. If Mrs Furnell had not caused any search to be made and had remained unaware that she was entitled in remainder under her grandfather’s will to the hotel, and that her father as trustee had no power to grant a lease for more than seven years which would be binding after his death, there would have been no case against her based on estoppel. As the result of the search, she ascertained that the lease would not be binding except during her father’s lifetime, but she also honestly believed that she could do nothing until after his death. To act on this belief would not, in our opinion, be conduct on her part which would make it fraudulent for her not to assert her rights until after his death.”
354 A requirement of a standing by with knowledge of ones title and of ones right to object to the other person’s conduct was also recognised by Megarry J in Re Vandervell’s Trusts; White v Vandervell Trustees Ltd [1974] 1 All ER 47 at 74.
355 In Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd [1982] QB 133, however, Oliver J considered that more recent authorities supported “a much wider equitable jurisdiction to interfere in cases where the assertion of strict legal rights is found by the court to be unconscionable”: at 147. He said (at 151-152):
“ ... the more recent cases indicate, in my judgment, that the application of the Ramsden v Dyson, LR 1 HL 129 principle – whether you call it proprietary estoppel, estoppel by acquiescence or estoppel by encouragement is really immaterial - requires a very much broader approach which is directed rather at ascertaining whether, in particular individual circumstances, it would be unconscionable for a party to be permitted to deny that which, knowingly, or unknowingly, he has allowed or encouraged another to assume to his detriment than to inquiring whether the circumstances can be fitted within the confines of some preconceived formula serving as a universal yardstick for every form of unconscionable behaviour.
So regarded, knowledge of the true position by the party alleged to be estopped, becomes merely one of the relevant factors - it may even be a determining factor in certain cases - in the overall inquiry.” (emphasis supplied)
That is, knowledge by the party sought to be held estopped from asserting his or her rights is a factor relevant to the issue whether he or she “played such a part in the adoption of the assumption that it would be unfair or unjust if he were left free to ignore it” (Grundt v Great Boulder Proprietary Gold Mines Ltd (1937) 59 CLR 641 at 675 (Dixon J)), but is not necessarily an essential factor in all cases. This view is consistent with the reasoning of Perley CJ in Horn v Cole (1871) 51 NH 287; 12 Am Rep 111 at 117, where the learned Chief Justice of the Supreme Court of New Hampshire referred to numerous American cases in which:
“the party who was estopped by his declarations or his conduct to set up his legal title, was ignorant of it at the time, and of course could have had no actual intention to deceive by concealing his title. Yet, if the circumstances were such that he ought to have informed himself, it has been held to be contrary to equity and good conscience to set up his title, though he was in fact ignorant of it when he made the representations.”
356 This decision was referred to by Meagher, Gummow and Lehane in Equity: Doctrines & Remedies (3rd ed, 1992) at [1710], p 416 in the context of a statement by the learned authors that a representor who was ignorant of his or her legal title when making a representation may be estopped from later asserting that title if he or she “ought to have appreciated” his or her position. The learned authors expressly recognised, however, that Svenson v Payne stood as High Court authority against the proposition in Australia: at [1721], p 428. Reference may also be made to Vine Products Ltd v Mackenzie & Co Ltd [1969] RPC 1, a case of alleged laches, in which Cross J said (at 26):
“When A is said to have lost his right to object to some conduct on the part of B, it is no doubt relevant to consider not only whether A knew what was being done, but also whether he knew of his right in law to object to what was being done. But the weight fairly to be attributed to ignorance of the law must vary with the circumstances. It must, for example, be greater if it is ignorance of some private right – for example, the true construction of some obscure deed – than where it is … ignorance of a general principle of law.”
357 On any reckoning, the issue discussed would fall to be considered in the light of the nature of the owner’s conduct in the particular case. It is more readily accepted that knowledge of title may not be required in a case of a positive representation than in the case of silence. Again, no doubt there are “intermediate” positions such as “reason to suspect” on the part of the party sought to be estopped that he or she is the owner.
358 It seems to me, however, that I am bound by the High Court decision in Svenson v Payne to regard “knowledge of title” as a necessary element in all cases. If I had not been of that view, the present issue could have been discussed at some length. A striking consideration against the AOC is the passage of so much time without its taking the trouble to make any independent inquiry as to its rights. The most striking, but not the only, considerations against the respondents are the lack of prejudice suffered by the Whitchurch interests and, for that matter, TBF, and the fact that ESPN appears to have purchased, in effect, a “chance”.
359 I do not think that it is contrary to good conscience for the AOC to enforce its legal rights by reason of the deaths of witnesses, loss of documents or impairment of memory of available witnesses. In this respect, TBF submits as follows:
“ ... over the 36 years which have passed since the assignment of copyright to Peter Whitchurch by OCOG, the evidence upon which the Respondents are now able to rely has been seriously affected:
• Relevant witnesses have died, namely the late Peter Whitchurch, the late Elsie Whitchurch and the late Jim Jacobs, as must have most, if not all, of the members of OCOG who, if alive today would be aged in their nineties or over 100 years of age: ... Peter Whitchurch’s evidence would have been relevant on a variety of topics including his authorship of the dramatic works comprised in the films, the ownership of the photographic material upon which the films were taken, the assignment by OCOG of its rights to him and his assignment of rights to PWP. Elsie Whitchurch would have been likely to be able to give evidence as to the assignment of rights to PWP and as to the circumstances relating to the unsigned letter of 23 August 1979 ... Jim Jacobs could have given evidence as to what he was told by John Whitchurch as to PWP’s entitlement to deal with the films, as to what enquiries he had made concerning the ownership of the films by the Whitchurch interests and as to the outcome of those enquiries. Members of OCOG would have been likely to be able to shed light, inter alia, on the disposal of OCOG rights to Peter Whitchurch and the arrangements made with third parties such as the French film makers.
• The Court is left to speculate as to what may have actually happened in connection with the ownership of the photographic material used for the filming ( ... ), the ownership of the physical films ( ... ), the grant of rights by OCOG to third parties such as CSA ( ... ) and the assignment of rights to the films by Peter Whitchurch or his estate to PWP ( ... ).
• The recollections of the witnesses who are alive have undoubtedly been impaired by the passage of time.
• Relevant documents have or may have been lost:
à the letter dated 12 September 1960 (...);
à the French film contract;
à the Coca Cola contract, save for a brief extract ... ;
à other documentation and information that has been lost as a result of the poor record keeping and secretive nature of Sir Edgar Tanner: ... ;
à microfiche corporate records of OCOG: ... ;
à documentation evidencing an assignment of copyright from Peter Whitchurch to PWP preceding the Cappy Agreement;
à the original version of PWP’s agreement with Cappy complete with annexures;
à Big Fights’ renewal of its licence agreement with PWP in 1987.
By reason of the matters above, it is unconscionable for the AOC to make the claims which it now makes and it is accordingly estopped from doing so.”
360 The foundation of TBF’s present submission must be that the AOC should have asserted its title to the copyright in the Films earlier than it did. What is the earliest time by which it might reasonably be expected to have done so? The first time that the AOC became aware that the Whitchurch interests were proposing to dispose of the copyright in the Films and of the physical Films was when the AOF Inc received PWP’s “invitation to treat” in March 1987. But the AOF Inc did not own either form of property at that time: the National Companies and Securities Commission owned both. The AOC was not to become their owner until the publication of these Reasons, some twelve years later.
361 Let it be assumed that the AOF Inc should, acting reasonably, have directed efforts following March 1987 towards acquiring title from the National Companies and Securities Commission. Peter Whitchurch and Elsie Whitchurch had already died. Jacobs, who died in March 1988, may well have died before giving a statement and certainly would have died prior to the hearing of any proceeding brought by the AOF Inc. In any event, Jacobs could not have given evidence relevant to any issue which I have been called upon to decide: evidence of what John Whitchurch told him and of what he told Cayton is not of that kind.
362 In relation to the documentary evidence, again I do not think that any prejudice has arisen between March 1987 and 21 January 1997 when the AOC commenced the first of the present proceedings. The evidence of Henry Alfred Gordon, the official historian for the AOC, was that between 1991 and 1994 he conducted a great deal of research into the modern Olympic movement in Australia and that he found very few records in respect of the period 1947 to 1973 during which Tanner had been the Secretary-Treasurer of the AOF. He said that his research revealed Tanner to be a “fairly secretive person by nature, and certainly disinclined to put much detail on the public record”. In other words, the lack of documentary evidence (for example a copy of Peter Whitchurch’s letter of 12 September 1960) may well be due, not so much to the delay from 1987 to 1997, but to lack of proper record keeping at the time of the Games and in the twenty years or so following them. There is certainly nothing to suggest that the documents disappeared between 1987 and 1991 when Mr Gordon began his research.
363 I do not find it necessary to refer to all the other matters on which TBF relies in its submissions. It is possible that the evidentiary picture would have been a little better if these proceedings had been heard in late 1988 rather than late 1998, but the difference would have been slight. I do not think that the change between those times makes it unconscientious for the AOC to assert its proprietary rights.
364 In summary, because: the AOC did not encourage the Whitchurch interests to make the relevant assumption or to act on it; the AOC was unaware of its rights; the Whitchurch interests possessed the 1960 correspondence setting out the actual contractual arrangement between Peter Whitchurch and OCOG whereas the AOF and its successor did not; the AOF and its successor did not intend or know that the Whitchurch interests would rely on their representations or silence; the relevant assumption by the Whitchurch interests pre-dated the representations and silence; and the Whitchurch interests would suffer no detriment if the AOC is now permitted to depart from the assumption, I do not consider that it is unconscientious, unjust or oppressive for the AOC now to assert its copyright in the Films.
365 For all the above reasons the second pleaded estoppel case fails.
366 I referred earlier to third and fourth estoppels pleaded as against John Whitchurch alone. I need not discuss those forms of estoppel because if John Whitchurch is estopped in a manner that prevents him from making the claims he now makes, this would avail the respondents nothing. The reason is that I have held that the AOC is not estopped from asserting against its title to the copyright in the Films and its ownership of the physical Films.
the limitation ACT 1969 (NSW), abandonment AND LACHES
367 At the heart of these three defences is TBF’s submission that the AOC has been guilty of delay in seeking relief.
368 The AOC did not have a cause of action for infringement of its copyright in the Films or for conversion of the physical Films, until, at the earliest, 8 December 1997 and 5 June 1998 respectively, when it entered into the deeds with the ASC. As noted earlier, the copyright in the Films and the general property in the physical Films were initially owned by OCOG. The AOC submitted that those rights were held on trust for it once OCOG was wound up, but I have not, at least in the absence of further argument, accepted that submission. I have accepted, on the other hand, that OCOG’s rights vested initially in the Commissioner for Corporate Affairs, subsequently in the National Companies and Securities Commission, and eventually in the ASC, and that those rights were assigned by the ASC to the AOC by the deed between the ASC and the AOC of 8 December 1997 as amended by the deed of 5 June 1998.
369 In fact, as noted earlier, the assignment and the agreement to assign provided for in the deed dated 8 December 1997 between the ASC and the AOC are expressed not to have effect until, relevantly, “the Court holds or finds” that the copyright in the Films was vested in OCOG as at the date of its dissolution. It appears, therefore, that the AOC is in the curious position of not having had either form of property prior to the publication of these Reasons for Decision. The limitation defence on which the respondents rely in relation to the physical Films therefore cannot succeed. The same is true of the alleged abandonment which the respondents plead in relation to copyright, but which they address in submissions in relation to the physical Films.
370 In relation to laches, it may be said that the failure to secure an assignment upon dissolution of OCOG in 1974 is one of the very circumstances going to establish laches. I am not aware, however, of any case in which laches has been found proved on the basis of delay in acquiring a cause of action, but I will say more of this below.
371 Despite what I have just said in relation to the limitation defence and abandonment, I will proceed to address all three of the present defences individually.
Limitation Act 1969 (NSW)
372 The respondents plead that the physical Films were converted. In the pleading, the acts of conversion relied on are as follows:
· the removal of the films from the shop at Oak Flats by Benson and her son in November or December 1987;
· the sending by PWP (through Benson) in 1988 or 1989 of a letter to numerous organisations around the world advising that the films were for sale so that PWP could be wound up and the estate of Elsie Whitchurch could be finalised;
· the making of the contract between PWP (Benson) and Filmworld on 12 June 1990.
In submissions, the respondents addressed only the first of these pleaded acts of conversion and in its submissions in reply the AOC did likewise. So will I.
373 The respondents rely on s 65(1) of the Limitation Act 1969 (NSW) which provides, relevantly, as follows:
“65 (1) …on the expiration of a limitation period fixed by or under this Act for a cause of action specified in column 1 of Schedule 4, the title of a person formerly having the cause of action to the property specified opposite the cause of action in column 2 of that Schedule is, as against the person against whom the cause of action formerly lay and as against the person’s successors, extinguished.”
374 Column 1 of Schedule 4 includes a reference to “conversion of goods” and the property specified in column 2 is “the goods”. The relevant limitation period is six years from the accrual of the cause of action: s 14(1)(b). Accordingly, if the changing of the locks of the shop at Oak Flats and the removal of the Films from the shop in November or December 1987 constituted a conversion of the Films, the title of the ASC to them was extinguished in November or December 1993 as against the converter and as against the successors of the converter, including the AOC.
375 I do not think that the acts mentioned constituted a conversion. Rather, the Films were simply relocated in the context of a dispute between the children of Peter Whitchurch. From the time of Peter Whitchurch’s death in 1981, PWP dealt with the Films. Whether it did so purportedly as owner or as agent is irrelevant to the present issue. On 24 January 1987, John Whitchurch, Benson and Talbot agreed that PWP should have control of the Films for the purpose of selling them. At no time did PWP surrender possession of them. Rather, one faction within PWP changed their location in a manner and to a place not agreed to by the other faction. But a change in possession is a necessary element of conversion. “Even a purported sale of ... chattels [will not operate as] a conversion if unaccompanied by delivery of possession or other interference with the character of the actual possession”: Australian Provincial Assurance Co Ltd v Coroneo (1938) 38 SR (NSW) 700 at 717 (Jordan CJ).
376 There is another reason why there was no conversion of the Edited Films in November or December 1987: at that time the AOF Inc did not have a right to immediate possession of them because the agreement of 23 November 1960 gave Peter Whitchurch the right to possession of them and that agreement was still on foot.
377 For the above reasons, the “lock-out” and the relocation of the physical Films did not constitute a conversion of them and for this further reason the AOC is not prevented by s 65 of the Limitation Act 1969 (NSW) from asserting its title to them as against any of the Whitchurch interests or their successors in title, and the AOC is not disentitled to an order for delivery up of possession of them on this particular ground.
Abandonment
378 The respondents plead that the AOC abandoned ownership of any copyright in the Films or, in the alternative, in such of them as were not the subject of the OCOG/Peter Whitchurch agreement. But they submit only that the AOC abandoned its rights to the physical Films. I proceed by reference to the submission.
379 It is uncertain whether it is possible to abandon proprietary rights in a chattel. In Johnstone & Wilmot Pty Ltd v Kaine (1928) 23 Tas LR 43, after discussing certain old authorities, Clark J said (at 58):
“On the whole I think I should adopt the rule that the intentional abandonment of a chattel by the owner of it does not divest him of his ownership, and that if another person finds the chattel not knowing who the owner of it is, he is in the same position as the finder of a lost chattel who does not know who the owner of it is.”
380 The matter was considered more recently in Moorhouse v Angus and Robertson (No 1) Pty Ltd [1981] 1 NSWLR 700 (CA) and Cook v Saroukas (1989) 97 FLR 33 (NT/Angel J). In Moorhouse, the plaintiff was an author whose books had been published by the defendant. After some five years in the case of his first book and somewhat shorter periods in respect of the others, he requested the return of the manuscripts that he had submitted to the defendant. The defendant returned some but claimed that it could not find the others. The Court held that pursuant to the publishing contract the manuscripts remained the plaintiff’s property. In response to the plaintiff’s claim for damages for detinue and breach of the contract of bailment, the defendant asserted that the plaintiff had abandoned his interest in the manuscripts.
381 The leading judgment was delivered by Samuels JA. His Honour did not decide the question mentioned but proceeded on the assumption that proprietary rights in goods can be lost or extinguished by abandonment. However, he said that,
“[t]o attract the principle, it would be necessary for the party asserting the abandonment to present evidence which established an express intention to abandon or from which such an intention might be inferred.” (at 706)
His Honour was not satisfied that the plaintiff’s failure to demand the return of his manuscripts earlier was “evidence from which an unequivocal intention to abandon title to the manuscripts could have been inferred” (at 707). Hutley and Mahoney JJA reasoned similarly. Mahoney JA expressly left open the question whether “the matter is to be judged, not by subjective intention but according to the inferences to be derived objectively from what [the plaintiff] said and did” (at 713). Neither Hutley JA nor Samuels JA attempted to resolve this question either. All three judges agreed that whatever approach was taken, an intention to abandon had not been shown on the facts of the case.
382 Similarly, in Cook v Saroukos, above, Angel J did not decide whether title to a chattel could be lost by abandonment, or whether, if it could, “the matter should be judged by subjective intention or objectively from what the plaintiff said and did”, because, on either view he was not satisfied that abandonment was made out since there had not been shown a “renunciation of the value of the property by the owner for all purposes” (at 41).
383 In the present case, the physical Films were not, at any relevant time, in the possession of OCOG or the AOC or its predecessor. The Edited Films were retained after 1960 by Peter Whitchurch pursuant to the agreement of 23 November 1960. He was a bailee of them and was entitled to retain possession of them for as long as the agreement remained on foot. Without possession of, or at least access to, the physical Edited Films or a copy of them, he would not have been able to exercise his right of “reprint and sale”. The AOC’s failure to demand the return of the Edited Films was consistent with this arrangement and not evidence of an intention to abandon ownership of them.
384 Did the position change in this respect when it came to the AOC’s attention in 1987 that the Whitchurch interests were attempting to sell the Films? I think not. As I have already indicated, until a time shortly before the commencement of these proceedings the AOC did not appreciate that it owned the copyright in the Films or the general property in the physical Films. Therefore, it could not have had a subjective intention to abandon the physical Films. Looked at objectively also I think it ought to have been apparent to the Whitchurch interests from the way in which the AOC was conducting itself that it understood it had no rights in respect of the physical Films, not that it understood that it had such rights and was intending to give them up.
385 The physical Films other than the Edited Films were not held by Peter Whitchurch in connection with the exercise by him of his rights under the agreement dated 23 November 1960. Peter Whitchurch did not deliver them to the Commonwealth National Library pursuant to his agreement with OCOG. He held them, the Newsreels and the Sports TV films as bailee also.
386 For the above reasons, it has not been demonstrated that the AOC abandoned, from either a subjective or an objective viewpoint, its ownership of the physical Films.
Laches
387 I have difficulty with the respondents’ case of laches. They plead laches “[i]n answer to the claims for relief ... so far as they are discretionary.” It is appropriate that the pleading should be limited in this way because “[l]aches is an equitable defence and is not available in answer to a legal claim”: Orr v Ford (1989) 167 CLR 316 at 340 per Deane J.
388 What are the applicants’ claims? The applicants claim various declarations, injunctions, orders for delivery up, and then:
· damages pursuant to s 115(2) of the Act for infringement of copyright or, at the election of the applicants, an account of profits;
· additional damages pursuant to s 115(4) of the Act;
· damages pursuant to s 116 of the Act; and
· damages pursuant to s 82 of the Trade Practices Act 1974 (Cth).
The parties’ submissions on laches were expressed in general terms as if laches would defeat the applicants’ claims entirely or not at all. But:
“The availability of a defence of laches and what will suffice to make it good depends upon the nature of the claim”
(Orr v Ford, above, at 340, per Deane J).
389 The starting point, in my view, is to identify the rights of the applicants that the remedies sought are designed to protect. The primary right sought to be protected is the AOC’s copyright. The duration of copyright in a pre-Act photograph is provided for in s 212 of the Act and it has not yet expired. There seems to be no reason why a declaration should not be made accordingly. The AOC will be entitled to protect that copyright during the remainder of its term.
390 The second right which the AOC is entitled to protect is its general property in the physical Films. Again, there seems to be no reason why the challenge to its title to them should not be quashed by the making of a declaration.
391 Beyond those two declarations, the question of relief is less straightforward. In the first place it is arguable that the defence of laches has no application to remedies provided by statute. That is, in the context of the remedies of injunction, damages, an account of profits and additional damages under s 115 of the Act and delivery up under s 116 of the Act, it is arguable that the defence of laches is not available because those remedies are not equitable ones: cf Masterton Homes Pty Ltd v LED Builders Pty Ltd (1996) 33 IPR 417 at 419, 423-425 per Lockhart J. This issue was not debated before me.
392 Moreover, the defence may operate differentially as between various equitable claims to which laches is an answer.
393 In my view, the appropriate course here is not, at this stage, to grant any relief beyond declaratory relief.
394 On 20 May 1998, I ordered that the present trial be limited to the issue of liability. All the ramifications of that order may not have been foreseen at that time. Having regard to the way in which the case has been conducted and the foregoing reasons, I treat “liability” as not including infringement and as referring only to questions of title.
395 These Reasons for Judgment have made it clear that upon the Court’s finding or holding that OCOG was entitled to the copyright in the Films and the general property in the physical Films, the deeds between the ASC and the AOC dated 8 December 1997 and 5 June 1998 operate to vest title in the AOC. It may be that the AOC will not wish to press claims for monetary relief. It may be that in the light of the declarations to be made, there will be no ongoing threat by ESPN to infringe the AOC’s copyright.
396 Be all this as it may, I would need to have the benefit of further submissions in the light of these Reasons for Judgment before I would be in a position to deal with the claims for relief other than the claims for the declarations.
397 I do not think it profitable to discuss much further the issue of laches. As I said earlier, that defence would fall to be considered in the light of any particular equitable relief sought in respect of any particular infringement. Laches is not made out in respect of an equitable remedy sought for a particular infringement merely by a failure to seek relief in respect of earlier infringements. Notwithstanding what I have just said, I make the following observations in relation to the defence of laches as the parties argued it.
398 The respondents submit that the AOC and the AOF have remained “inactive” for over thirty six years in the face of “knowledge of the belief held by the Whitchurch interests that they were entitled to act as owners of all rights in connection with the Melbourne Olympic Films including all copyright and all physical Film materials associated therewith”. They submit that by reason of the delay, documentary evidence which might have “cast a different complexion” on the matters in dispute has been lost and important testimonial evidence is lacking because the relevant witnesses, notably Peter Whitchurch and Jacobs, have died. They submit, therefore, that they have been prejudiced by the AOC’s “gross delay”.
399 The AOC submits, inter alia, as follows:
“76 As against Big Fights there is no evidence of a single overt act at any time by Big Fights of which the AOC or its predecessors was, or ought to have been, aware which constituted a breach of the AOC’s rights and which the AOC or its predecessors ought to have retained.
77 The rights of Big Fights which are disputed in these proceedings only arose in September 1993 on a best case basis. Three years before commencement is not undue delay.”
400 The reference to “September 1993” is, no doubt, a reference to TBF’s letter dated 17 September 1993 to Benson proposing that TBF’s licence be extended so as to be world-wide, so as to cover all media, and so as to be exclusive in “the United States, its territories and possessions, and Puerto Rico”, and non-exclusive elsewhere. (In fact that offer from TBF was not accepted by Benson on behalf of PWP until 3 February 1994.) Apart from any other difficulty that may have confronted the AOC in suing in respect of earlier alleged infringements of the copyright is the provision of s 134 of the Act that an action shall not be brought for an infringement of copyright after the expiration of six years from the time when the infringement took place.
401 In the light of para 77 of the AOC’s submissions set out above, I presume that the AOC seeks relief in respect of only the following transactions as alleged infringements:
· The first “enlargement of licence” agreement between PWP (Benson) and TBF concluded on 3 February 1994 referred to in the preceding paragraph;
· The second “enlargement of licence” agreement between PWP (Benson) and TBF concluded on 12 December 1995 (making the world-wide rights exclusive);
· The sale by TBF to ESPN on 6 May 1998.
402 It could hardly be suggested that a defence of laches is made out in respect of these infringements. (The AOC commenced the first of the present proceedings on 21 January 1997). This does not mean that the AOC would necessarily succeed in obtaining any relief in respect of them. But it will be the proper occasion to pursue that question if and when such relief is sought.
THE CROSS CLAIM BY BENSON AND TALBOT
403 The conclusions that the AOC owns the copyright in the Films as well as the general property in the physical Films and is not estopped from asserting both, do not dispose of the proceedings because a question remains as to the status of the agreement of 23 November 1960. Are the rights granted by that agreement still on foot and enforceable against the AOC, and, if so, who holds them?
404 It will be recalled that by the deed dated 20 October 1997, John Whitchurch purported to assign to the AOC all the rights granted by OCOG to Peter Whitchurch by letters dated 15 February 1960 and 23 November 1960 (in the Deed and here referred to as “the Rights”). It is convenient to address first the question whether that deed was effective to vest the Rights in the AOC.
405 The respondents put their case on the present issue in various ways. First, they say that the estates of Peter Whitchurch and Elsie Whitchurch are both fully administered with the result that John Whitchurch and Benson held the Rights as trustees for John Whitchurch, Benson and Talbot as the persons beneficially entitled to the estate of Elsie Whitchurch, and that John Whitchurch was not entitled, as only one of two trustees, to dispose of the Rights.
406 Second, and in the alternative, they submit that the estate of Peter Whitchurch was fully administered with the result that the Rights were held upon trust absolutely for Elsie Whitchurch, the executors of whose will held them for the purposes of the administration of her estate, and that John Whitchurch was not entitled, as only one of two executors, to dispose of them.
407 Third, they submit that if John Whitchurch did have power as one co-executor to dispose of the Rights, so did the other co-executor, Benson, and that she had previously disposed of them to TBF by the agreements dated 17 September 1993, 28 February 1994 and 8 December 1995.
408 Fourth, they submit that John Whitchurch entered into the deed dated 20 October 1997 with the AOC in breach of fiduciary obligations he owed to those beneficially entitled to the estates of Peter Whitchurch and Elsie Whitchurch.
409 As noted earlier, by their cross-claim Benson and Talbot seek to have the deed dated 20 October 1997 declared void or set aside.
410 John Whitchurch submits that he had a right to assign the Rights as (a) the surviving executor of the will of Peter Whitchurch; or (b) one of the two executors of the will of Elsie Whitchurch.
411 John Whitchurch had also agreed, by an earlier agreement dated 11 December 1996, to assign to the AOC “all his [personal] right, title and interest in the entire copyright throughout the world and all other rights of a like nature subsisting now or conferred in respect of the” Films. The respondents submit that this assignment is ineffective because Benson and Talbot have not assigned their own respective one-third interests.
Was John Whitchurch entitled as surviving executor of the will of Peter Whitchurch to enter into the deed of assignment to the AOC dated 20 October 1997?
412 So long as persons remain co-executors, each has authority to bind the other or others and to act in right of the deceased: Union Bank of Australia v Harrison (1910) 11 CLR 492 at 499, 502 (Griffith CJ), 508 (Barton J), 516-517 (Isaacs J), 527 (Higgins J). However, once the estate is fully administered, the executors hold any remaining property, not as executors but as trustees, and one co-trustee cannot dispose of trust property without the concurrence of the other or others: Luke v South Kensington Hotel Co (1879) 11 Ch D 121 (CA) at 125-126 (Jessel MR); Sky v Body (1970) 92 WN(NSW) 934 (Street J) at 935-936.
413 John Whitchurch and Elsie Whitchurch were the executors of the will of Peter Whitchurch to whom Probate of that will was granted in the Supreme Court of New South Wales on 11 May 1982. The evidence as to the administration of Peter Whitchurch’s estate is sparse. John Whitchurch, the surviving executor of Peter Whitchurch’s will, testified that all of Peter Whitchurch’s debts and funeral expenses had been paid but that final accounts in respect of his estate were not filed in the Supreme Court of New South Wales. Benson and Talbot did not know what the position was in relation to the administration of the estate and could speak only of their “understandings”. I accept the evidence of John Whitchurch. On the basis of that evidence and the length of the period of time between Peter Whitchurch’s death on 17 October 1981 and the execution of the deed of 20 October 1997 without, apparently, any recent assertion of claims by creditors, I find that by 20 October 1997 all his debts and the funeral and testamentary expenses associated with his estate had been paid but that the executors’ accounts in respect of the administration of the estate were not filed in the Supreme Court of New South Wales.
414 When John Whitchurch and Benson applied for probate of the will of their mother, Elsie Whitchurch, they made a joint affidavit of assets and liabilities to which was attached an “inventory of property” which included the following item:
“Property Estimated or known value
….
Other personal property
Cinematography Films – estimated 500,000”.
I infer that this entry was meant to refer to or include all the Rights. I also infer that John Whitchurch and Benson meant, when swearing the affidavit, to indicate that in their view by the time of Elsie Whitchurch’s death on 11 September 1986, the Rights did not form part of the unadministered estate of Peter Whitchurch and were the property of Elsie Whitchurch.
415 The executors of Peter Whitchurch’s will were required by s 85(1) of the Wills, Probate and Administration Act 1898 (NSW) to file accounts relating to the estate within twelve months after the grant of probate, that is, by 11 May 1983 (Rules of the Supreme Court of New South Wales Pt 78 r 71(1)). Sanctions for failure to file accounts as required are provided for in ss 86 and 87 of the that Act, including disentitlement to executor’s commission. But in my view, the failure to file accounts did not exclude the possibility that by the time of Elsie Whitchurch’s death on 11 September 1986, John Whitchurch and Elsie Whitchurch had come to hold the assets in Peter Whitchurch’s estate as trustees for Elsie Whitchurch. Elsie Whitchurch was the only person beneficially entitled to the estate of Peter Whitchurch and was a co-executor of his will. She could hardly have been heard to complain about the failure of herself and her son to file accounts in respect of Peter Whitchurch’s estate. Nor, in the light of the joint affidavit of assets and liabilities in Elsie Whitchurch’s estate, could Benson, a co-executor of Elsie Whitchurch’s will, be heard to complain in right of her mother. Of course, neither could John. Talbot had no beneficial interest in Peter Whitchurch’s estate.
416 The fact that the children of Peter Whitchurch have for some time been in dispute as to what should be done with the Rights does not, contrary to the AOC’s submission, affect the position. Elsie Whitchurch was the sole beneficiary under Peter Whitchurch’s will and the dispute between her children had no effect on the devolution of the Rights.
417 For the above reasons, in my view as at the date of the deed between John Whitchurch and the AOC dated 20 October 1997 the Rights no longer formed part of the estate of Peter Whitchurch. It was therefore not open to John Whitchurch as surviving executor of Peter Whitchurch’s will to assign them to the AOC on 20 October 1997.
Was John Whitchurch entitled to enter into the deed of assignment to the AOC dated 20 October 1997 as a co-executor of the will of Elsie Whitchurch?
418 John Whitchurch and Benson were co-executors of the will of Elsie Whitchurch to whom Probate of that will was granted on 21 January 1987.
419 The AOC submits that the estate of Elsie Whitchurch, who, it will be recalled, died on 11 September 1986, was not fully administered as at 20 October 1997, and that John Whitchurch as one co-executor had authority to enter into the deed of that date. TBF, on the other hand, submits that by that date the estate was fully administered and that John Whitchurch, as one co-trustee, had no authority to enter into that deed without the consent of Benson.
420 Again, the evidence as to the state of the administration of Elsie Whitchurch’s estate is sparse. John Whitchurch’s evidence is that certain property forming part of that estate remained and remains undistributed due to the dispute between himself, Benson and Talbot. He refers first, to an amount of $4,948.89 held in a bank account on which he and Benson are joint signatories, and second, to “[his] father’s film collection”. The account is a “Passbook Saver Account” held at the Warrawong Branch of Westpac Banking Corporation in the name of Elsie Whitchurch’s estate on which both Benson and John Whitchurch were required signatories. The account appears to have been opened on 17 March 1987, that is, some six months after Elsie Whitchurch’s death, and the last active operation on it was a deposit made on 30 September 1993.
421 John Whitchurch also testified that the “final accounts” in respect of his mother’s estate have not been filed in the Supreme Court. He annexed to his affidavit a ten-page document, which he said he prepared, entitled “Stage 1 – ESTATE RECEIPTS & DISTRIBUTION – Proposed for EM Whitchurch Estate”. The document was signed by Benson on 9 April 1987, that is, some seven months after her mother’s death. Benson signed and wrote “9-4-87”, at the top left hand corner of the front page and she initialled in the top left corner of the remaining nine pages. Unfortunately, the evidence does not reveal the context in, intention with, or purpose for, which, John Whitchurch created the document or Benson signed and initialled it. The document appears to be an attempt to give an account of the assets in the estate, their realisation, the “loan account” positions as between the three individual beneficiaries and the estate, and distributions among the beneficiaries that had occurred or were proposed. It included the following entry as describing an asset still held:
“Cinematogrphic [sic] Film Collection
Incomplete at this time.”
Talbot gave evidence that her understanding was that
“the only matter remaining to be done in relation to the estate of [her] late mother was to sell the remaining assets and distribute the proceeds or distribute the assets, to the beneficiaries”.
She said that she had unsuccessfully over a long time pressed John Whitchurch to distribute their mother’s estate and that it was to that end that she signed the document on 24 January 1987 referred to earlier, authorising PWP to “commence sale negotiations for all possible cinematographic film together with any associated right/s therein”. I accept this testimony.
422 Benson said that her understanding was that all the debts of her mother’s estate had been paid and that “all matters to do with the estate have been resolved other than matters relating to the family trust and the shareholding in PWP”. For example, she testified that certain land at Robertson owned by the estate was subdivided in 1986, that two lots were transferred to each of the three beneficiaries and the remaining lots sold, and that her parents’ home at 100 Windang Road, Primbee was sold about twelve months after her mother’s death, that is, apparently in or about September 1987.
423 Subject to one complication to which I refer below, I think that the administration of the estate of Elsie Whitchurch was complete and that John Whitchurch and Benson had come to hold the Rights as trustees (a) by the time Benson on behalf of PWP entered into the agreement with TBF on 12 December 1995, and therefore (b) by the time John Whitchurch purported to assign the Rights to the AOC on 20 October 1997.
424 The case is similar to that of In the estate of Dunn, deceased [1963] VR 165 (Herring CJ). Harriet Dunn died in 1931 intestate. Her eldest son was appointed administrator of her estate. He discharged all liabilities but did not realise the most valuable asset, some farming property. Rather, apparently with the consent of the other persons beneficially entitled, he carried on the farming business for the benefit of all. When the eldest son died in 1946, the applicant was appointed administrator in his place. He continued to farm the property, but in 1962, when aged 80 years, he applied to the Court for an order discharging him and appointing a new administrator in his place. Herring CJ refused, as he considered that the administration was already complete and that the applicant held the property as trustee, not as administrator. His Honour said (at 166):
“It cannot be said … that the applicant has carried on the business for the purpose of administering the estate of the deceased or to enable a satisfactory sale to be made. He has carried it on for the benefit of the persons beneficially entitled because they have desired that it should be carried on in this way rather than that it should be sold. It is as owners of the property in equity that they have given this direction and the applicant has treated them as such in carrying it out. His relationship to them has been throughout that of trustee and cestui que trust, not that of administrator and next of kin. During the period he has performed no duty as administrator, there has been no such duty to perform. The case is, therefore, one where there should be a new trustee appointed and not an administrator de bonis non.”
425 His Honour found support for his view in Re Ponder [1921] 2 Ch 59. He referred to the following headnote as summarising Sargant J’s decision in that case:
“An administrator who has paid all expenses and debts and cleared the intestate’s estate stands in the same position towards the next of kin as that which an executor who has cleared the estate stands in towards the residuary legatees; he ceases to be an administrator and becomes a trustee”.
426 In the present case, apparently all the debts of the estate had been paid and most of the property had been distributed. The direction of 24 January 1987 indicates that the beneficiaries, unlike those in In the estate of Dunn, wished to have the remaining property in the estate realised. However, as they were having difficulty in finding a purchaser, John Whitchurch, and subsequently Benson, on behalf of PWP continued to deal with the films.
427 The AOC refers to Stokes v Churchill (1994) NSW ConvR ¶55-694, in which Santow J made the following observations on the question when the administration of an estate is complete (at 59,967-59,968):
“Obtaining probate, collecting all the assets of the estate and paying the debts and expenses of the estate, are necessary conditions for the completion of the administration. But completing those tasks may not suffice to complete administration. Thus if there were some further impediment to transferring an asset to ... those presently entitled thereto under the will, being sui juris, then at least so far as that asset were concerned, the duties of administration would not be completed.
It is when administration is complete, that the executor becomes functus officio as executor and thereafter holds as trustee for the beneficiaries of the estate. However, if there were no impediment to transferring title to an asset, such as land, to those who are sui juris and presently entitled under the will, while that task might be characterised as one of the duties of administration, albeit conditional on completion of the others, the better view is that completion of this task is not necessary before the executor becomes a trustee.
… if all other executorial duties have been completed, except that the lands have not been transferred, there being no impediment to their transfer to beneficiaries presently entitled and sui juris, the executor becomes a trustee with no longer any statutory power of sale.”
428 The AOC submits that in the present case there was an impediment to the completion of the administration of the estate of Elsie Whitchurch. It submits that the impediment consisted of the uncertainty surrounding the question whether the estate or PWP owned the Rights and the precise nature of the Rights. It submits that this uncertainty prevented any sale of the Rights or the transmission of them to the three beneficiaries.
429 According to John Whitchurch, the conversations in which he and Benson debated whether the Rights were owned by PWP or the estate of Elsie Whitchurch took place in about September 1993. In January 1987, when the three beneficiaries and the two executors signed the direction to PWP to “commence sale negotiations”, that controversy had apparently not emerged: all accepted that the Rights had belonged to Elsie Whitchurch and previously to Peter Whitchurch.
430 The ill defined nature of the Rights did not prevent TBF from agreeing to buy them for US$10,000 pursuant to the agreement with PWP dated 28 February 1994 and for US$15,000 pursuant to the agreement with PWP concluded on 12 December 1995. Apart from this, on general principle I consider that the disputation does not stand in the way of a conclusion that the Rights, however they might be properly defined, had come to be held by John Whitchurch and Benson as co-trustees of the estate of Elsie Whitchurch.
431 It follows that John Whitchurch, being at the time only one of the two trustees of the estate of Elsie Whitchurch, was not entitled to enter into the deed of 20 October 1997. The AOC does not submit that if this should be my conclusion, I should nonetheless not declare that deed void.
432 TBF submits that the Rights had passed to PWP. If this were correct, there would be obvious consequences for the deed dated 20 October 1997 by which John Whitchurch purported to assign them to the AOC. First, PWP is not the assignor. Second, John Whitchurch purported to execute the deed in capacities other than on behalf of PWP. Third, if he had signed on behalf of PWP, he would not have bound PWP because he did not possess either actual or ostensible authority to do so.
433 If, as TBF submits, the Rights had passed to PWP and Benson had had authority to bind PWP, the earlier agreement dated 28 February 1994 and the agreement concluded on 12 December 1995 which she made with TBF did not purport to assign the Rights. The Rights were only a right of “reprint and sale”. Peter Whitchurch was not granted
“the sole and exclusive world-wide rights in all media in perpetuity ...”
to use the language of the agreement of December 1995. In any event I am not satisfied that the Rights were ever assigned to PWP.
434 John Whitchurch’s purported assignment on 11 December 1996 for $10,000 of all his “personal” right, title and interest in the Films remains to be considered. Since, at the time, he and Benson held the Rights as trustees of the estate of Elsie Whitchurch for the three children in equal shares, all that John Whitchurch had to assign was an undivided one third equitable interest in the Rights. The assignment was, in my view, effective to assign that interest to the AOC. Accordingly, John Whitchurch and Benson now hold the Rights as trustees for the AOC, Benson and Talbot as tenants in common in equal shares.
REPUDIATION OF THE 23 NOVEMBER 1960 AGREEMENT
435 The AOC submits that if the deed of 20 October 1997 between it and John Whitchurch is void, it is entitled to accept as a wrongful repudiation of the agreement of 23 November 1960, the attempts by Benson through PWP to assign the benefit of that agreement to TBF and to sell the physical Films.
436 TBF submits in reply, first, that it is not open to the AOC to accept a repudiation of the 23 November 1960 agreement because the AOC was not a party to it. OCOG’s letter of that date did, in fact, reserve the right, not only of OCOG but also of “the Australian Olympic Committee to obtain a copy of any of [the Edited Films] for their own purposes at laboratory cost plus cans and reasonable handling charges”. The letter also directed Peter Whitchurch to “get in touch with Mr Tanner (AOF)” about the action required in respect of the “remnants of film”.
437 As noted earlier, the terminology, “International Olympic Committee” and “National Olympic Committees”, was well established in the Olympic movement. The AOF was the “National Olympic Committee” for Australia. There is nothing improbable in the view that in writing the letter of 23 November 1960, OCOG and the signatory of the letter, Nette, should be taken to have intended the expression “Australian Olympic Committee” to bear its ordinary meaning in Olympic usage, that is, to refer to the National Olympic Committee for Australia as recognised by the IOC from time to time. Accordingly, in my view, the expression encompasses the AOC.
438 But the simple fact remains that the AOC was not a party to the agreement of 23 November 1960. Let it be assumed that the ASC was entitled to accept the supposed repudiation: the ASC did not assign that right to the AOC on 20 October 1997.
439 Did the Whitchurch interests repudiate the agreement? To be more precise, did the trustees of the estate of Elsie Whitchurch, namely, John Whitchurch and Benson, do so? The instruction signed by the trustees (as executors according to the document) on 24 January 1987 in favour of PWP was for PWP:
“to commence sale negotiations for all possible cinematographic film together with any associated rights therein now held and or exploited under implied and or approved terms of contract which have existed over a number of years ... ” (emphasis supplied)
440 Let it be assumed that this exposed an intention of the trustees to act inconsistently with the agreement of 23 November 1960. If it was a repudiation by them of that contract, the fact is that the ASC did not accept it and it occurred more than six years before the commencement of these proceedings. (As we know, PWP did not find a buyer for its principals and so nothing came of the instruction.)
441 The purported dealings by PWP with TBF of February 1994 and December 1995, occurred within six years before the commencement of these proceedings. But they were not acts of the trustees, John Whitchurch and Benson. Benson did not purport to contract on behalf of them both: she signed as a director of PWP. If she had purported to contract on behalf of them both, she would have failed in the attempt to bind her brother: the estate was fully administered and the Rights were held by her and her brother as trustees with the result that she could not bind him. Her act would not have been a repudiatory act by “the trustees”.
442 Nor were PWP’s dealings of February 1994 and December 1995 within the terms of the authority given by the trustees to PWP in January 1987. That authority was “to commence sale negotiations”. PWP was only in this limited respect, that is, “to commence sale negotiations”, the agent of the trustees. Benson states that her brother said to her:
“I want you to sign this to finalise mother’s estate, so that PWP can go ahead with the sale of the films.”
Talbot testifies that he said:
“We have to sign this if we are to dispose of the films.”
John Whitchurch disagrees: he states that the conversation was to the effect that PWP should be enabled only
“to seek expressions of interest in the films so that [they could] find out how much people would be prepared to pay for them.”
443 On 5 March 1987, John Whitchurch, on behalf of PWP sent out the first “invitations to treat” calling for expressions of interest from prospective purchasers. The “To Whom it May Concern” letter that Benson, on behalf of PWP, sent out at the end of 1988 or early in 1989, was to a similar effect.
444 By its terms, the authority dated 24 January 1987 did not authorise PWP to sell. On the evidence, the trustees did not give PWP authority beyond that stated in the document. It would require clear evidence to persuade me that they intended to authorise PWP to conclude a sale without referral back to them. Even if Benson’s and Talbot’s versions of the conversation are correct, what was said was not so clear as to produce that result. It is consistent with those versions that the signing of the authority was being put forward by John Whitchurch as a condition precedent to the matter of a sale progressing and that PWP would need to obtain further authority from the trustees before actually selling.
445 It follows that the dealings which PWP, acting through Benson, concluded with TBF without the consent of John Whitchurch, were not repudiatory acts by the trustees and were not effective to bind the trustees or to divest them of any property.
446 The AOC submits that it was an implied term of the agreement of 23 November 1960 that it could terminate that agreement at any time, or, in the alternative, that it could do so at any time after giving reasonable notice to Peter Whitchurch or his estate. I do not accept the submission. In my opinion, the intention of OCOG and Peter Whitchurch was that for a one-off payment of £100, Peter Whitchurch was to be given the limited rights of “reprint and sale” referred to in the agreement for as long as the copyright in the Films subsisted. There is nothing in the terms of the exchange of letters between Peter Whitchurch and OCOG to suggest the right of unilateral termination contended for by the AOC. Nor do I find it necessary to imply such a term in order to give the parties’ agreement commercial efficacy. The Rights remain held by John Whitchurch and Benson as trustees.
INFRINGEMENT OF COPYRIGHT BY TBF, ESPN, BENSON AND TALBOT
447 As noted earlier, the AOC has not identified in its submissions what conduct it claims amounts to infringement of copyright. Therefore, I do not, at least at this stage, make any finding of infringement or give injunctive relief.
CONCLUSION
448 In summary,
· copyright subsisted in the photographs of which the Films consisted as artistic works and not in the Films as dramatic works;
· OCOG was the owner of the copyright in the photographs and of the physical Films;
· OCOG granted to Peter Whitchurch non-exclusive rights of reprint and sale of the Edited Films and, for that purpose, the right to possession of the physical Edited Films for the duration of the copyright in the photographs constituting the Edited Films;
· OCOG did not assign to Peter Whitchurch the copyright in the photographs in the Edited Films or the general rights of property in the physical Edited Films;
· OCOG owned the copyright in the photographs constituting the Films and the general property in the physical Films at the time of OCOG’s dissolution on 30 April 1974;
· OCOG’s copyright in the Films and general property in the physical Films are now vested in the AOC via the ASC pursuant to the deed between them dated 20 October 1997;
· the AOC is not estopped from asserting title to the copyright in the Films or its general property in the physical Films and is not defeated by the operation of the Limitation Act 1969 (NSW), abandonment or laches;
· the AOC is not able to terminate the contract dated 23 November 1960 between OCOG and Peter Whitchurch by accepting a wrongful repudiation of it;
· the contract dated 23 November 1960 is not terminable by the AOC at will or upon the giving of reasonable notice;
· in view of the assignment by deed between them dated 11 December 1996 by John Whitchurch to the AOC of John Whitchurch’s one third interest in the rights granted by OCOG to Peter Whitchurch on 23 November 1960, John Whitchurch and Benson now hold those rights in trust for Benson, Talbot and the AOC in three equal undivided shares; and
· the AOC has not at this stage shown that any of the respondents have infringed its copyright or that it is entitled to injunctions restraining them from infringing it or to any other relief except declaratory relief and an order for delivery up of the physical Films other than the Edited Films.
449 I will at this stage make only certain declarations. Directions will have to be given for the further conduct of the proceedings. I will stand them over to a date when the parties should bring in short minutes of any orders and directions to be made.
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I certify that the preceding four hundred and forty nine (449) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren. |
Associate:
Dated: 3 August 1999
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Counsel for the Applicant: |
Mr A J Bannon SC with Ms J R Baird of counsel |
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Solicitor for the Applicant: |
Clayton Utz |
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Counsel for the First, Fifth, Sixth and Eighth Respondents: |
Mr R B S Macfarlan QC with Mr R Cobden of counsel |
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Solicitor for the First, Fifth, Sixth and Eighth Respondents: |
Mallesons Stephen Jaques |
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Date of Hearing: |
1-5 June, 14-15 September 1998 |
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Date of Judgment: |
3 August 1999 |
