FEDERAL COURT OF AUSTRALIA

Prior v Sheldon [2000] FCA 438

COPYRIGHT – Authorship of musical works – Musical theme for television series and “stings” for exits and entrances to program – Conflict of evidence as to authorship of both works – Effect of agreement to submit dispute as to authorship to determination by independent expert selected by APRA – Damages – Loss of royalty payments and interest on royalties – Loss of mention on television series credits - Aggravating factors: flagrancy and benefit to respondent.

Copyright Act 1968, ss10, 32, 35, 36. 78 and 115(4)

JOHN PRIOR v ZELDA SHELDON, STUART SHELDON and ARTEC SOUND VISION PRODUCTIONS PTY LIMITED

ARTEC SOUND VISION PRODUCTIONS PTY LIMITED (Cross Claimant)

JOHN PRIOR (Cross Respondent)

NG 687 of 1998

WILCOX J

SYDNEY

7 APRIL 2000

THE COURT ORDERS THAT:

1.                  It be declared that:

(a)                the applicant, John Prior, and the first respondent, Zelda Sheldon, are the joint authors of the musical work known as the theme for the television series “The Great Outdoors”, composed in 1992;

(b)               copyright subsists in that work, in an adaptation of that work made in 1994 and in adaptations of the themes for background music of the series;

(c)                the applicant and the third respondent, Artec Sound Vision Productions Pty Ltd, as assignee of the first respondent, are joint owners of the said copyrights.

2.                  Judgment be entered in favour of the applicant, John Prior, against:

(a)                the first respondent, Zelda Sheldon, in the sum of seventy six thousand seven hundred and fourteen dollars and twenty six cents ($76,714.26);

(b)               the second respondent, Stuart Sheldon, in the sum of one thousand three hundred and forty two dollars and forty two cents ($1,342.42).

3.                  The cross-claim be dismissed.

4. The first and second respondents, Zelda Sheldon and Stuart Sheldon, pay the costs incurred by the applicant in connection with the principal proceeding.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     WILCOX J: At issue in this case is the authorship of two original musical works, both associated with a television series called “The Great Outdoors”.

2                     The first work is the original theme music for the series. The case of the applicant, John Prior, is that this was a work of joint authorship by himself and Zelda Sheldon, the first respondent. Ms Sheldon claims the work was composed by herself alone.

3                     The second work is a series of 14 “stings” for the television series. A “sting” is a very short piece (usually only a few seconds in duration) used to “exit” the program into a commercial break or to “re-enter” the program after a commercial break. Mr Prior says the stings were composed by himself alone; but Stuart Sheldon, the second respondent, claims he was a joint author, along with Mr Prior.

4                     Ms and Mr Sheldon assigned their respective purported interests in the works to a company controlled by them, Artec Pty Vision Productions Pty Limited (“Artec Pty Ltd”). Because of that circumstance, Artec Pty Ltd was joined as third respondent to the principal proceeding and it has brought a cross-claim seeking declarations in relation to each work consistent with the positions taken by Ms and Mr Sheldon.

5                     The claim made by Mr Prior against Ms Sheldon is based on three causes of action: breach of copyright, breach of an agreement submitting the dispute for expert determination, and the law of passing off. However, counsel for Mr Prior, Mr T Lynch, accepts that the claims in copyright and passing off stand or fall together, depending on what view the Court takes of the facts, and that the most generous basis for an assessment of damages (from his client’s viewpoint) is for breach of copyright, because of the terms of s115(4) of the Copyright Act 1968. Accordingly, it is not necessary to give separate consideration to the passing off claim. Also, if the copyright claim succeeds, it is unnecessary to determine whether Mr Prior also has a valid breach of contract claim against Ms Sheldon.

6                     The only claim made against Mr Sheldon is for damages for infringement of copyright.

7                     The amended Statement of Claim pleads three causes of action against Artec Pty Ltd, as third respondent: breach of copyright, passing off and breach of s52 of the Trade Practices Act 1974. These breaches cover both the original theme music and the stings.

The facts

(i)                 Background

8                     There is a sharp conflict in aspects of the evidence of Mr Prior and Ms Sheldon, in relation to the composition of the original theme of “The Great Outdoors”, and between Mr Prior and Mr Sheldon, concerning aspects of the evidence regarding the stings. However, much of the evidence is uncontroversial. I will detail the uncontroversial evidence, and the parties’ positions on controversial matters, before making findings on the controversial matters.

9                     In 1992 Ms and Mr Sheldon were carrying on business in partnership, under the business name “Artec Sound Vision Productions” (“Artec”). The business of the partnership, like that of the company (the third respondent) which was formed in April 1994 to succeed the partnership, was sound production for bands and the creation of marketing songs and jingles for corporate clients and advertising agencies. Ms Sheldon had been composing songs since 1980. In her affidavit she said:

“My role in Artec was to write the jingles. My songs have always been written very simply, three to six chords and mostly written in C, G or D. Stuart assists me by playing a guitar to compliment [sic] a melody and chord structure which I had composed. For example, sometimes he would play the guitar to compliment [sic] a chord structure or progression which I had developed.”

10                  Mr Sheldon described himself in his affidavit as “an audio and musical director and head engineer” of Artec Pty Ltd. He said he and Ms Sheldon were “originally both musicians”. They started the partnership, on a part-time basis, in 1984 “to try and sell jingles, advertising music and record bands”. He described his role at Artec Pty Ltd in this way:

“Essentially my role at Artec is as a musical director. When Artec is given a project I manage Zelda and any other composer working on the project. I also listen to their compositions and assess whether they satisfied the project description. I give some direction on occasion but otherwise try not to have too much input. My primary role is to ensure that our client gets what they need when they need it.

I also occasionally write musical works and sometimes record and mix programs.”

11                  In about 1991 or early 1992, Ms and Mr Sheldon met John Maybe of Travel Entertainment Pty Limited, later called Sorena Productions Pty Limited (“Sorena”). At Mr Maybe’s request, Artec supplied Sorena with music for a four part documentary series to be called “Track Record”.

(ii)               Composition of the theme

12                  In early July 1992 Sorena contacted Artec in respect of music for a 13 part television series to be called “The Great Outdoors”. Sorena’s initial request was for theme music to be used in conjunction with a pilot program. This was required by the end of July. At that time, Artec employed a music composer and programmer named Mario Grigorov. Mr Grigorov and Ms Sheldon each composed some possible themes. Artec submitted two of them to Sorena but both were rejected. Ms and Mr Sheldon had a conversation with a friend involved in television. According to Mr Sheldon, the friend said they needed “to make it more commercial like 2 Day FM”. Ms Sheldon’s version of the friend’s advice was “to be more rock, like Midnight Oil”.

13                  According to Ms Sheldon, this conversation stimulated a new effort by her. During the afternoon of 23 July 1992, she said, she “came up with a composition which I thought was suitable for the ‘Great Outdoors’ theme”. In her affidavit, Ms Sheldon explained what she did:

“I played the guitar and sang the melody onto the tape and then recorded the drum rhythm and tom feel as well as the didgeridoo. I played around with it on the tape I had composed it on and timed it and I thought it was probably the sound we were looking for.”

14                  In oral evidence, Ms Sheldon said the drum and didgeridoo sounds were vocalised and recorded on the tape separately from each other and from the guitar and vocal melody, which were recorded simultaneously.

15                  Ms Sheldon said that, when she put this material on the tape, she was “very excited and ran to find Stuart”. She played the tape to Mr Sheldon, so that he heard the vocal melody and guitar and she sang to him the drum rhythm and didgeridoo parts. According to Ms Sheldon, Mr Sheldon commented “that is the right kind of sound for the ‘Great Outdoors’”. According to both Ms Sheldon and Mr Sheldon, Ms Sheldon then played the tape to Mr Grigorov and asked him to “produce” it so she could submit it to Sorena; however, Mr Grigorov said he did not have time and knew a friend, John Prior, “who would be able to program it for you”. Ms Sheldon said in her affidavit:

“I had been introduced to him by Mario previously. I understood that he was the rock drummer, he was good with rhythms and samples. This was different from Mario who was more orchestral. I thought that he would be a good person to program the theme because it was very rhythmic and had didgeridoo and other similar sounds.”

Mr Sheldon said in his affidavit:

“I knew John Prior through Mario. I had also heard loops of Charlie McMann [sic: McMahon] playing didgeridoo which John Prior had programmed. I thought he was a good programmer and I thought that John Prior would be good because I knew that he had done didgeridoo stuff.”

16                  During the course of oral evidence, it turned out that both Ms and Mr Sheldon knew John Prior, the present applicant, rather better than these statements suggest. Over the preceding six months, Mr Prior had done a number of compositions for Artec. Although Ms Sheldon had not worked with Mr Prior in a creative sense, she had heard music he had composed for Artec.

17                  Ms Sheldon telephoned Mr Prior and made an arrangement to see him that night at his studio in Mosman. According to Ms Sheldon, she told Mr Prior she had “written some music which I need to be programmed”. Mr Prior’s version is different:

“During the conversation, Zelda said to me: ‘Can you help me with a submission for the theme of ‘The Great Outdoors’. Mario and I submitted music that has just been rejected by the production company, and he’s busy working on the underscore for the pilot. We need to submit another theme quickly, can I come to your studio tonight?”

A time was agreed. There is some dispute as to what it was.

18                  It is common ground that Ms Sheldon went to Mr Prior’s studio that night and remained there for several hours (the exact number is also in dispute), ultimately leaving with a tape of the proposed theme. Mr Prior described the tape as “a recording suitable for use as a demonstration of the theme for the pilot program”. Ms Sheldon did not agree it reached that standard. She said it was “not finished. It did not have the rhythm guitars, which it needed to have. It also had a melody line with a keyboard sound which I didn’t think sounded right”. It seems Mr Prior also realised the presentation could be improved. Although he was not asked to do so, after Ms Sheldon left his studio that night he spent some time developing and refining the theme. He said he “added other sounds and instruments and tidied up the composition I had created earlier”. He made a new recording which he took to Artec the next day.

19                  The debate about the standard of the tape has little significance. It seems to be common ground that, during the period 24 to 28 July 1992, work was done at Artec’s studio to improve the presentation of the theme. Mr Prior participated in this work. But nobody suggests the work had creative significance. Both parties agree that, for practical purposes, the theme music was composed by the time Ms Sheldon left Mr Prior’s studio on the night of 23-24 July. The principal dispute between Mr Prior and Ms Sheldon concerns the course of events during that evening. I will deal with that matter later.

(iii) Payment for the theme

20                  On the affidavits, there appeared to be an issue between the parties concerning the payment of fees by Artec to Mr Prior. However, the situation became clear during the course of oral evidence. It seems Mr Prior raised the matter of payment with Mr Sheldon very soon after 23 July; he thought the following day, Mr Sheldon thought a few days later. It seems also to be clear that Mr Sheldon’s response was affected by uncertainty as to whether the theme composed on 23 July would be accepted by Sorena. At some stage, he offered Mr Prior a fee of $600 together with a further $1,000 if the theme was accepted. On 28 July 1992 the theme was submitted to Sorena. It was promptly accepted and, in due course, Mr Prior received a payment of $1,600.

21                  Mr Prior said in evidence that, on a number of occasions, he raised with Ms and Mr Sheldon the matter of entitlement to royalties. Mr Prior made clear, during the course of his evidence, that he regarded the work as substantially his composition; but he said he has always conceded Ms Sheldon made some creative contribution. Consistently with that position, in discussions after 23 July 1992 he sought acknowledgment that he was a joint composer of the work, along with Ms Sheldon. Mr Prior said that, although this request was made in her presence on several occasions, Ms Sheldon never would deal with it. She always left it to Mr Sheldon to respond; but Mr Sheldon never addressed the matter in a substantive way. Mr Prior particularly mentioned a meeting at Artec’s office on 21 November 1992, when he said there was a need to talk about ownership of the theme. He said that, in order to resolve the matter, he was prepared to offer Ms Sheldon 50%. Mr Sheldon said “No”. Ms Sheldon did not speak. Mr Prior explained in his affidavit;

“I made this offer of co-ownership of the theme to Zelda because I wanted to settle the issue as soon as possible. I knew that Artec might engage further services from me for the television series and for other projects, and that it might be more willing to do so if I was generous.”

(iv)             Composition of the stings

22                  One day in mid-December, Mr Sheldon telephoned Mr Prior and told him Artec needed some stings for “The Great Outdoors” series. A meeting was arranged for the following day.

23                  On the following day Mr Sheldon went to Mr Prior’s studio. He instructed Mr Prior as to the number and length of the required stings and suggested that “some should be short sections of the theme, or hint at the theme, and others could be different”. Mr Sheldon had brought with him a VHS video cassette dub of several short visual stings. He used this to show Mr Prior how the musical stings would be used.

24                  Over two sessions, on that day and the following day, Mr Prior worked at his keyboard to bring into existence five musical items that he later rearranged into 14 slightly different pieces, each of which could be used as a sting. It is common ground that Mr Sheldon was present for only part of this time. Mr Prior said Mr Sheldon was present for about one hour on the first day, when he gave instructions about what was required, and he then left Mr Prior to work alone for a couple of hours. On the second day, Mr Prior said, Mr Sheldon came for about an hour at the commencement of his work and then left, returning at the end of Mr Prior’s composition to hear the result. Mr Sheldon, by contrast, said he was present for about two hours each day.

25                  The critical issue in relation to the stings is not the length of time Mr Sheldon was present, but whether he made a creative contribution in the music. I will return to that issue.

(v)               APRA registration

26                  The Australasian Performing Right Association (“APRA”) acts as the agent of composers to collect royalties due to them arising out of the public performance of their work, including on television. It can carry out this task only if it has particulars of works likely to earn royalties, with accurate information as to the identity of the person or persons entitled to receive those royalties. Registration of a work with APRA is therefore a matter of importance to a composer, especially a composer of a work, like the theme for a television series, that is likely to be played publicly on numerous occasions.

27                  Mr Prior gave evidence that, at the meeting of 21 November 1992, he produced an APRA registration card for the theme of “The Great Outdoors” and asked Ms Sheldon to sign it. The card distributed entitlement to royalty payments equally between Ms Sheldon and Mr Prior. Ms Sheldon failed to sign the card and Mr Prior subsequently decided to proceed unilaterally. On 15 February 1993 he submitted to APRA a registration card, signed only by himself, in which he attributed 50% of the royalty rights to Sorena (on the basis it was the owner of the lyric heard with the musical theme) and 25% to each of Ms Sheldon and himself. On the same day he submitted a further registration card covering the 14 stings, in which he claimed 100% of the royalty rights. Under cross-examination, Mr Prior said it was a “mistake” for him not to have shown these cards to the Sheldons at that time, but he said his relationship with them was then very poor and he had thought it would be a waste of time to do so.

28                  On 8 March 1993 APRA notified Mr Prior that it had omitted Sorena from the interests registered in respect of the theme (apparently on the basis that the “lyric” consisted only of the vocalised title of the work) and was crediting interests of 50% to each of Ms Sheldon and himself. The letter went on:

“Under normal circumstances APRA would return the card to you to obtain the co-writer’s signature or contact the co-writer, direct to ascertain whether she agrees with the percentages allocated. You have requested this not be done as you are taking legal action and contact with Zelda Sheldon could jeopardise an already precarious situation further for you.

We will note our files and await your advice if and when the situation sorts itself out or when Zelda Sheldon registers the work.”

(vi)             The APRA dispute

29                  On 14 April 1993 Ms Sheldon lodged with APRA an application in respect of “The Great Outdoors” theme in which she claimed a 100% interest. APRA informed Mr Prior of the application in a letter dated 13 July. At about that same time, APRA sent out to members its half-yearly royalty statements and cheques. On perusing her royalty statement, Ms Sheldon realised she had been paid only 50% of the royalties due in respect of “The Great Outdoors” theme. She contacted APRA and was told of Mr Prior’s competing claim.

30                  At the invitation of APRA, both Ms Sheldon and Mr Prior lodged statutory declarations concerning composition of the theme. The contents of the declarations conflicted and APRA advised both parties that it would withhold royalty payments until the dispute was resolved. In March 1994 the Arts Law Centre mediated the dispute but no agreement was reached.

31                  In July 1994 Ms Sheldon decided to make an adaptation of the theme. In her affidavit she explained her purpose:

“I decided to remove any parts of the Composition which could be attributed to John Prior. This was to show that the entirety of John Prior’s contribution to the Composition was programming and arranging and that, without his contribution, the Composition remained the same.”

The affidavit went on:

“On or around 12 August 1994, I began re-recording the Composition with Robert Moss. We re-recorded the drum and the bass. On or around 20 September 1994, we re-recorded the didgeridoo (Adapted Composition). We removed John Prior’s programmed parts, such as the rhythm parts, keyboards, pads and tinkly sounds, sampled didgeridoo, the introduction melody line and the counter melody and replaced it with new drums, bass and keyboards parts. Artec also submitted the Adapted Composition to Sorena who used the Adapted Composition as the theme music for the ‘Great Outdoors’ television program. At this time, I also lodged music index cards with APRA claiming 100% ownership of the new theme.”

32                  Ms Sheldon did not tell Mr Prior about the adaptation or the fact that she had claimed 100% of the royalties in respect of its use. Mr Lynch asked Ms Sheldon about these omissions in cross-examination. Ms Sheldon admitted the adapted theme “was an adaption [sic] of the original theme”. She also admitted she knew that “the right to make an adaption exists with the copyright owner of the original theme”.

33                  Mr Lynch also put to Ms Sheldon questions about the position of APRA:

“You did the adaption, you sought registration of the adaption, and you represented to APRA that you were the sole composer of that work in the adaption?---Yes.

You knew that that was true only to the extent that you were the sole composer of the original theme?---Yes.

You knew, and you knew APRA knew, that there was a dispute about the authorship of the original theme?---Yes.

Nevertheless, you don’t disclose to APRA, in ’94, that the second theme is an adaption. Do you?---No.

That was misleading to APRA, wasn’t it?---Yes.”

34                  Ms Sheldon had given a warranty to Sorena that she was the sole composer of the original theme. After the adapted theme was substituted, she gave a similar warranty about that work. Mr Lynch also questioned Ms Sheldon on that matter:

“And what you’re suggesting is that somewhere around that time, you think, you misled APRA but you didn’t mislead, any longer, Sorena. Is that right?---Sorena was aware before that.

That there was a dispute?---Yes.

…

You did not tell Sorena that the 1994 adaption might be subject to the same copyright claim that had arisen – that is Mr Prior’s – that had arisen to the original theme?---No.”

35                  When Ms Sheldon lodged her APRA claim for 100% of the rights to the theme, she also lodged a claim, on Mr Sheldon’s behalf, for 50% of the stings, the other 50% being attributed to Mr Prior. In the following year, after he became aware that Mr Prior disputed his claim, Mr Sheldon created some new stings with Robert Moss. Thereafter these were used, instead of the stings written in December 1992.

(vii)           The APRA expert determination

36                  The rules of APRA contain the following clause:

“7.06 The Association offers a dispute resolution procedure, by way of binding referral to an independent expert, in situations where writer members are in dispute as to the proportions in which royalty allocations are to be shared, subject to all parties agreeing to submit to the procedure.”

37                  In early 1995, apparently at the initiative of Mr Prior, it was agreed that this procedure should be used for resolution of the dispute between Mr Prior and Ms Sheldon concerning the royalties earned by “The Great Outdoors” theme. APRA’s solicitor, Stephanie Faulkner, prepared draft terms of reference and forwarded them to both parties for comment. They were approved and, on 3 April 1995, an agreement was executed by Ms Sheldon, Mr Prior and APRA. The agreement was in the following terms:

“WHEREAS:

A.                 Zelda Sheldon and John Prior are members of APRA (‘the Members’).

B.                 A dispute has arisen between Members regarding their respective shares (if any) in royalties distributable by APRA for the musical work ‘Great Outdoors Theme’ (‘the Work’).

C.                APRA has placed accumulated royalties relating to the disputed shares in a suspense account pending resolution of the dispute.

D.                The Members wish to determine the dispute as herein provided by a Solicitor or Barrister experienced in copyright law (‘the Expert’).

IT IS NOW HEREBY AGREED:

1.                  The dispute is referred for determination as herein provided to the Expert who shall be appointed by APRA. If the Expert is unable to complete the determination, another Expert shall be appointed by APRA.

2.                  The Expert will determine the respective share if any of each Member in royalties distributable by APRA for the Work and will communicate that determination to the parties in writing without reasons.

3.                  The Expert will:-

(a)               act as an expert and not as an arbitrator;

(b)               proceed in such manner as the Expert thinks fit without being bound by the rules of natural justice or the rules of evidence;

(c)                have regard to such documents, information, submissions and other material that the Members or APRA may give to the Expert or the Expert may otherwise obtain.

4.                  The Members will pay in equal shares the fees and any expenses of the Expert and in the event that a Member (‘the defaulting Member’) fails (in whole or in part) to make such payment APRA may pay the subject money and

(a)               deduct an amount equal to the subject money from the defaulting Member’s accumulated royalties, and/or,

(b)               recover an amount equal to the subject money from the defaulting Member as a debt due and payable.

5.                  The Expert will not be liable to all or any of the Members APRA and any third party for anything done or omitted by the Expert pursuant to this Agreement and the Members and APRA and each of them release and indemnify the Expert from and against any claims (including negligence and misconduct other than fraud) in respect of such matters.”

38                  The expert selected by APRA was David Catterns QC, a barrister experienced in matters of copyright. He was instructed by a letter dated 6 April 1995 that contained a copy of the parties’ agreement, the Terms of Reference and materials supplied to APRA by each of the claimants.

39                  Mr Catterns interviewed each of the parties separately. Each apparently gave him some additional information. On 23 June 1995 Mr Catterns wrote a letter to Ms Faulkner in the following terms:

“Thank you for referring this matter to me. I saw Ms. Sheldon and Mr. Prior separately on 30 May 1995 and read the material with which each of them provided me. I also listened to various tapes which Ms. Sheldon provided at our meeting and subsequently. On 14 June 1995, I went to Mr. Prior’s studio and listened to his material.

In my opinion, Ms. Sheldon and Mr. Prior are joint authors of the musical work ‘The Great Outdoors Theme’ within the meaning of the Copyright Act1968. I do not think that the use of the words ‘The Great Outdoors’ constitutes an associated literary work – i.e. lyric.

Accordingly, in my opinion, the proper share between the joint authors is 50%:50%.

This opinion also applies to the commercial play-outs and play-ins and show wrap-ups. It does not apply to the ‘stings’ which (I am instructed) were composed by Mr. Prior and Mr. Stuart Sheldon.

My answer to the questions referred to me are, thus:

A.                Whether Zelda Sheldon is the author of the lyric to the work ‘The Great Outdoors Theme’ and, if so, the percentage to be apportioned to the authorship of the lyric;

-                     There is no literary work being the lyric to ‘The Great Outdoors Theme’ and no percentage should be attributed to this.

B.                Whether Zelda Sheldon is the sole composer of the music ‘The Great Outdoors Theme’;

&

C.                Whether John Prior is the co-composer of the music ‘The Great Outdoors Theme’ and, if so, the percentage to be apportioned to his contribution to the music;

-                     Zelda Sheldon and John Prior are the co-composers of the music and the percentage shares of each should be 50%.

D.                Whether Zelda Sheldon is the sole composer and author of the commercial play-outs, play-ins and show wrap-ups based on the work ‘The Great Outdoors Theme’;

&

E.                Whether John Prior is the co-composer of the commercial play-outs, play-ins and show wrap-ups based on the work ‘The Great Outdoors Theme’ and, if so, the percentage to be apportioned to his contribution to the music.

-                     Zelda Sheldon and John Prior are the co-composers of the commercial play-outs, play-ins and show wrap-ups and the percentage shares of each should be 50%.” [Original emphasis]

40                  Ms Faulkner forwarded copies of Mr Catterns’ letter to both Ms Sheldon and Mr Prior, along with a request that each pay one-half of his fee. I gather each of them complied with that request. APRA subsequently made such adjustments as were necessary to provide Mr Prior with 50% of the royalties payable in relation to the original (1992) theme. However, adjustment was made in relation to royalties earned on the background music for the series. This music was adapted from the original theme but is the subject of a separate accounting in APRA’s books. It is common ground between the parties that the entitlement to royalties for the background music follows the entitlement in respect of the theme. Ms Sheldon has received and retained 100% of the background royalty payments earned up to the end of 1996. Half the background royalty payments earned since that time have been paid by APRA to Ms Sheldon. The other half has been, and remains, held in an APRA suspense account.

41                  APRA had not been informed that the 1994 theme was an adaptation of the 1992 theme so that, notwithstanding Mr Catterns’ determination, it continued to pay Ms Sheldon the whole of the royalties received by it in respect of that work; which was the only version of the theme still being used and, therefore, earning royalties. As Mr Prior was not aware the adaptation had been made, he was unable to alert APRA to the need to share the royalties earned by it. This, also, was a matter raised with Ms Sheldon during the course of her cross-examination.

42                  First, Mr Lynch had Ms Sheldon confirm that she had understood that APRA, she and Mr Prior would all be bound by the expert determination:

“The purpose of the expert determination procedure was to settle the dispute?---Yes.

And in one way or another you knew it was going to be settled by that?---Yes.

You did not believe that you could look at the result and then decide whether you would agree with it or not at the time you signed it on 3 April?---That’s correct.”

43                  Ms Sheldon confirmed that she appreciated that the effect of the determination was that she and Mr Prior were co-authors of the original theme. Her evidence then went on:

“You never disclosed to anyone, Mr Prior, APRA or the expert prior to that determination that the adaption had begun to be used, did you?—I can’t recall.

You didn’t, did you?---I can’t recall.

Do you suggest that you disclosed to any one of those three people that the adaption had commenced to be used on the program?---I can’t recall mentioning that.

Now I appreciate that up until the expert determination you had a belief that Mr Prior’s claim for co-authorship was not well-founded?---Yes.

But after that time you knew it had been resolved on the basis of joint authorship of the original theme?---Yes.

You didn’t tell APRA, who you knew was bound by that determination, at that time that the 1994 work for which you had submitted cue cards was an adaption of the original theme, did you?---No.

And you knew that that adaption as a result of the determination was a matter that he was now entitled to royalties for, because it was an adaption of a jointly authored original work. You knew that, didn’t you?---I believe it wasn’t an adaption.

…

You have said to me some minutes ago that you understood that the copyright owner of the original theme would have the right to control an adaption of it?---Yes.

You knew that the 1994 theme was an adaption of the original theme?---Yes.

Therefore you knew that the owners of the original theme, whoever they might be, were entitled to royalties?---Yes.

Up until June of ’95 you say your position was that you had no doubt that you were the sole owner?---That is correct.

And although you didn’t disclose in ’94 the dispute to APRA, that is the basis for it, I assume. It was your belief that the dispute wasn’t one that Mr Prior might win?---Could you repeat that, please?

The reason you didn’t tell APRA in 1994 about the fact of the adaption was that you wanted to represent it as your work as you did to them?---Yes.

That, you’ve agreed, was misleading?---I didn’t believe at the time it was.

But you have got no doubt now when you look back on it, have you? ---That it could have been, yes, I’ve got no doubt that it could have been.

And what I’m asking you is, after the expert determination you knew that the resolution of the dispute about ownership of the original theme – authorship of the original theme meant that so far as APRA was concerned – because they were a party to the determination – that there should be royalties payable to Mr Prior for the use of the 1994 adaption?---Under, what, the determination?

Yes?---Yes.

Now, you never told APRA after the June determination that, in fact, the 1994 work was an adaption, did you?---I can’t recall.

You didn’t, did you? Did you? You continued to take 100 per cent royalties knowing that the determination – so far as APRA was concerned meant that you weren’t entitled to 100 per cent royalties?---Yes.

And that continued to be the case until some time after – some time in about February of 1997, didn’t it?---I’m not sure; I can’t recall the date.

In your APRA royalty statement for the 4^th June 1996 you received 100 per cent royalties for the Great Outdoors theme as adapted in 1994?---Yes.

And what happened was that in February of ’97 you were contacted by APRA who said they wanted a refund?---Yes.

And so it is up until February of 1997 that you continued to take royalties at 100 per cent for an adapted work that you knew you weren’t entitled to 100 per cent of royalties for?---By determination yes.”

Composition of the original theme

(i)                 The evidence

44                  In his affidavit Mr Prior said Ms Sheldon came to his studio at about 6.30pm to 7.00pm on the evening of 23 July 1992. She said to him that the producers of the show want some “up” and “bright” music with “lots of tom fills”. She drummed a number of semi-quavers on her lap and said she had a melody. According to Mr Prior, Ms Sheldon then sang the first three notes of a major scale (which Mr Prior recognised as the basic melody for “Figaro” and “Three Blind Mice”), descending to resolve, using a dotted 16^th note rhythm. Ms Sheldon then sang the words “the great outdoors” using the first note of the previous melody. Mr Prior said these were the only instructions he received in connection with the theme.

45                  Mr Prior said he played on his keyboard a number of variations on the “Figaro” melody. Apparently he added to them during the evening. He said he recorded the variations in his computer, using Cubase music software, and saved them onto a floppy disk. He produced the floppy disk in evidence.

46                  Mr Prior said he selected a tempo, using the metronome in Cubase. He played it to Ms Sheldon and asked her whether it was a good tempo. She said “Yes”. He then selected drum sounds from his Akai S1100 sampler, recorded a pattern into the computer and played it to Ms Sheldon for her approval.

47                  Mr Prior deposed that he had previously recorded samples of didgeridoo music played by a musician named Charlie McMahon. He said he loaded some of these samples into his sampler and created a pattern. He then selected other sounds from his sampler and K2000 synthesiser, including bass, piano and some synthesiser sounds. He then developed the three note melody that had been sung to him by Ms Sheldon, by adding notes to the end so that it did not resolve melodically and then an answer phrase that did resolve. He added structural elements such as accompanying chords, bass line and counter-melody. Mr Prior said he created the introduction to the work by copying and editing the drum pattern, composing chords, bass line, counter-melody and other elements. He also created melody chords, a bass line and counter-melody to accompany the “lyric” for the theme, the words “the great outdoors”. Mr Prior saved all this material on floppy disks which he produced in evidence.

48                  Mr Prior said in his affidavit that Ms Sheldon “did not speak for most of the evening while I worked at composing the theme”. At the end of this work, he asked Ms Sheldon whether what he had done was “good enough for a demo”. She said it was and asked for a dub. So he duplicated the music onto a tape and gave the tape to Ms Sheldon. He exhibited the original disk to his affidavit. Mr Prior said Ms Sheldon left at about 1am.

49                  Under cross-examination by Ms K Eastman, counsel for the respondents, Mr Prior said he “jammed a little bit” on the three “Figaro” notes “just to find the different feelings and the other notes that I added to that melody”. He then “quickly made a decision about which chords I was going to use”. He “continued to refine” this during the evening. Asked about the three notes, Mr Prior said: “I agree that she sang three notes which in itself is a melody but it’s not the final melody as it ended up being”.

50                  The evidence went on:

“So the sequence of events is that Ms Sheldon sang?---Yes.

She stopped?---Yes.

You played the chords?---I may have played the melody first, but yes, possibly.

And that reflected what she had just sung?---No. Well, it was a development of what she had sung, yes. It included what she had sung, plus a lot more.

When you say a lot more, what are you saying?---I played other notes.

And you said to her, having played those notes, ‘How’s that?’ or ‘Is that okay?’---Yes, I did.

And she agreed?---Yes.

The stage was then to incorporate some tempo, do you agree?---Yes, I might say I would normally find the tempo first. I may have adjusted the tempo later, I don’t remember, but usually we would find the tempo using the click track in the computer first.

I will just ask you what you did on this night and I’m suggesting to you that the next step was developing a tempo, wasn’t it?---You have to choose a tempo before you start recording and the default setting is 100 beats a minute. The song is between 125 and 126 beats a minute so I would have had to have set the tempo first. I may have finally tuned it later in the evening but that would have been the first task.

Are you saying that the first task was not you playing the chords but setting the tempo?---In reference to putting the information into the computer, yes. As far as me turning around from hearing Zelda singing the three notes and maybe playing a few notes on the keyboard, well, no.

The tempo was again following Ms Sheldon singing a rhythm to you, wasn’t it?---Yes, it was.

She suggested the tempo and you then reflected it in terms of the work that you were doing at the keyboard. Do you agree?---Yes, I estimated the tempo from what she had sung and then asked her if that was okay. I imagine that I would have done that.

In that sense you were keen to ensure that you were putting down on the keyboard what she had instructed you to do?---What are you suggesting that she instructed me to do?

I am suggesting to you that Ms Sheldon sang or played out the tempo, didn’t she?---Yes.

And you then in response recorded that at the keyboard?---Yes.

You followed what she had performed for you in terms of what you were doing?---With regard to the tempo, yes.

When she’d done that, you then said to her ‘Is this a good tempo?’, or words to that effect?---Yes.

She agreed that it was?---Yes”

51                  Mr Prior said he “would have set up my sounds next”. He thought he first incorporated drum sounds with lots of “tom” feel, as requested by Ms Sheldon. Ms Sheldon approved the result, so he moved on to other sounds. Ms Eastman suggested a sequence of events with which he substantially agreed, although he thought the piano part was added earlier than she suggested. The evidence went on:

“What did that involve?---Putting in a melody, playing a melody on the piano and recording that into the computer.

Again, I suggest to you that that was a process where Ms Sheldon said, this is the melody and you then performed that or recorded what she had said or sung or suggested?---No, she didn’t.

After the melody sounds came the other sounds, such as the tinkling sounds or the pipe sounds?---Yes, they came later.

Again, that was a suggestion that you made to her?---That I made?

Yes?---Yes.

When she agreed, you incorporated those sounds?---Yes, I didn’t,[sic] yes. The answer is yes.

When you reached the point of programming the main melody with the available keyboard sounds, do you recall that Ms Sheldon told you that it wasn’t quite the right sound or words to that effect?---No, I don’t.

She said, at that point not to worry about that aspect because she would get a session guitarist to play that main melody part?---She did mention that it might be nice to double the main melody with a guitar, yes.

You then suggested some smaller or what might be called little counter melodies as part of this process. Do you recall doing that?---Well, everything that I created in the piece, aside from those three notes, every section has different counter melodies. The bass is a counter melody. The, every other instrument is a counter melody. So the answer is, yes.

Again, this was a process where you would, for example, give a demonstration and say to Ms Sheldon, what do you think of this? Is that okay or words to that effect?---After a while, when I realised that my questions to Zelda were rhetorical, that she was quite happy with all of the things that I was doing and the direction I was going, I think I may have stopped asking her. So, perhaps by that stage I wasn’t asking her and I [was] just busily involved in creating it.

That is not the case, is it, Mr Prior? That didn’t happen, did it?---Sorry, what didn’t happen, which part?

You sitting there asking rhetorical questions through the evening. That didn’t happen, did it?---Well, I stopped asking questions after a while. In the last two or three hours I think perhaps nothing was said at all.

It was the case, wasn’t it, that the process was one where you would ask the question and they weren’t rhetorical questions because Ms Sheldon invariably had an answer to them, yes or no. She either agreed or she disagreed with you?---She only agreed and I did ask her in the manner that you have suggested the first few times about the first few tasks I did.

She didn’t always agree with your suggestions, did she?---Yes, she did.

The process was one where it didn’t move forward until you had reached an agreement with her?---In the beginning to be polite, yes, that’s correct. She was the person who had brought me the proposition of making this piece of music.”

52                  The account of the evening given by Ms Sheldon is substantially different from that of Mr Prior. In her affidavit she said she “sang the rhythm to show the feel of the song” and then “sang the melody and played the chords live on guitar”. Ms Sheldon did not explain the provenance of the guitar. Mr Prior said in evidence that he did not play the guitar and did not have a guitar at his studio. Ms Sheldon did not claim to have brought a guitar to the studio. She did claim to have taken to the studio the tape she had played to Mr Sheldon and Mr Grigorov, but she said in her affidavit she did not play the tape to Mr Prior “because I thought it sounded tinny and, as I did not know John, I was embarrassed about how it would sound”. So Ms Sheldon gave Mr Prior a “live performance of the theme music”. In oral evidence in chief, she offered some demonstrations.

“Can I just ask you now to perform as you did for Mr Prior on that night?---Okay. After I explained the structure of the song, the rhythm and what the elements were of the rhythm I then gave a vocal performance of what that drum rhythm was going to be.

Okay?---And this is how it went. (DEMONSTRATION) Then I asked if he was clear about that, and then I gave a performance of what the didgeridoo was going to sound like. And I explained that it was going to go over the top of that rhythm and again it’s a vocal version of that. (DEMONSTRATION) And I said that those two elements of the rhythm were going to continue all the way through the 30 second thing.

And what did you do next?---Then I said over the top of that there are some chords which I will play for you. (DEMONSTRATION) And then I repeated that and I said there’s also words that go at the end of that as well which are the ‘Great Outdoors’ and I sang him them after that.

And then what did you do?---And then we – I repeated that (DEMONSTRATION) and repeated it with the words that I sang and then we started working on the actual drum feel.”

53                  Ms Sheldon said that Mr Prior sat at his sampling programmer during her performance. He then played the chords on the keyboard and put in sample sounds. “He then cut and pasted to get the rhythm the way I had performed and written the theme music”. Her affidavit evidence continued:

“31. I was at John’s studio for three to four hours. I told him which sounds were needed. I then listened to the sounds he had on his equipment and I selected the ones which were appropriate to be included in the theme music.

32. He offered advice on the arrangement and different sounds to fit into the beat and I would consider his advice and whether what he was suggesting was suitable for the Composition. He put in a melody line for the introduction and then a counter melody in a later spot. However, this was not the main melody. His melody was inserted after the first four bars. He came up with sounds such as a tinkling sound and a pipe sound to be used as a counter rhythm. He also threw in some basic chords to make my chords more sophisticated. These were the same chords that I had already composed. Similarly, the sounds which he inserted were inserted into my rhythm. For the harmony, John programmed a bass line as per the root chord. John also programmed the main melody with an available keyboard sound. However, I told him that it was not the right sound and not to worry about it because we would get a session guitarist to play the main melody part. John contributed other little counter melodies to the arrangement as an addition to my main melody. The ones that worked, I accepted. This is the usual practice when working with programmers. They offer suggestions about the sounds, licks and counter melodies and the musician decides whether or not they fit with the feel of the music they have composed.”

54                  During the course of cross-examination, Ms Sheldon said:

“My chords were very basic. The chords that John Prior suggested were inverted; they had other little things attached to them; they were more than just basic chords.”

55                  At a later stage of her evidence, Ms Sheldon agreed that the rendition of musical ideas into form was done entirely by Mr Prior. She assented to the proposition that “he made the musical noises on his equipment … from musical ideas discussed between (herself) and him”. She expressly agreed that “not every idea that is expressed in the music on the tape” she took away that evening was hers, that Mr Prior’s ideas for the counter-melody, some chords, and the tinkling and pipe sounds were incorporated in the music and that he contributed musical sounds to the rhythm and harmony through to the bass line.

(ii) Findings

56                  It seems to me that, even on Ms Sheldon’s evidence, Mr Prior was a joint author of the original theme. Ms Sheldon conceded that Mr Prior made numerous creative contributions to the work. She was never prepared to accept that his contribution was compositional and kept insisting on the word “arrangement”, but her own evidence shows that Mr Prior did more than arrange musical ideas advanced by her. He contributed ideas of his own, that were incorporated in the final product.

57                  However, I need not decide the issue of joint authorship upon the basis of Ms Sheldon’s evidence. Whether or not Ms Sheldon’s evidence establishes that position, Mr Prior’s evidence certainly does, if it is accepted. And I have no doubt it ought to be accepted. A number of factors impel me to that conclusion.

58                  First, I found Mr Prior an impressive witness. He seemed to me a person who was doing his best to be accurate and responsive. He exhibited to his affidavit floppy disks which, he asserted, contained the material he had contributed to the work. He produced those disks in evidence and brought with him the equipment needed for playing them to the Court. No suggestion was made by Ms Eastman to Mr Prior that the disks were not what he claimed them to be, or that the sounds they contained were recorded later than 23 July 1992. Yet she made no request to play the disks and asked no questions about them. Under those circumstances, I think it is reasonable to assume that the disks support Mr Prior’s account of events.

59                  In contrast to Mr Prior, Ms Sheldon turned out to be a most unimpressive witness. She frequently prevaricated under cross-examination; giving non-responsive answers, requesting repetition of clear questions or claiming not to be able to recall. Her behaviour in relation to APRA, especially her failure to reveal to APRA or Mr Prior (even after Mr Catterns’ determination) the connection between the original theme and the adaptation, reflects badly on her character.

60                  Moreover, the inherent probabilities support Mr Prior’s account of events. He was a professional musical composer. Prior to 23 July 1992, he had been engaged by Artec to compose other musical items. Ms Sheldon knew his skills extended beyond mere arrangement of other peoples’ compositions. In the period immediately before 23 July, two themes, composed by Ms Sheldon and/or Mr Grigorov, had been submitted to Sorena for approval but both had been rejected. A theme was required by the end of July and time was running out. What would be more likely than for Artec to go to a third composer, who had recently composed other work acceptable to it, in the hope he could come up with a piece that would satisfy Sorena?

61                  I do not doubt that Ms Sheldon had ideas about the music she wanted Mr Prior to compose. There seems to be no reason to disbelieve the evidence, of both Ms and Mr Sheldon, that a friend suggested the music needed a stronger beat; that is, “more rock” or “more commercial like 2Day FM”. Nor is there any reason to doubt that Ms Sheldon thought this would best be supplied by drums with lots of “tom feels”. I accept, also, that Ms Sheldon hit on the ideas of using what Mr Prior called the Figaro theme and incorporating didgeridoo sounds. Ms Sheldon said all these ideas were on the tape she played to Mr Sheldon and Mr Grigorov before going to Mr Prior’s studio. Both Mr Sheldon and Mr Grigorov said they heard the tape played and I see no reason to disbelieve them. Mr Grigorov appears to be an independent witness. Ms Sheldon did not produce the tape in evidence, but I do not regard that as a suspicious circumstance. At the time, there would have been no reason for Ms Sheldon to regard the tape (on any version, merely an early draft of the work) as being important. Ms Sheldon said it was her practice to re-use tapes and that is understandable.

62                  However, accepting all this, it seems to me that Ms Sheldon took to Mr Prior’s studio only a few ideas for the work. The embryonic nature of her ideas is indicated by the fact that she did not play the tape to Mr Prior. For a 30 second piece, the finished work is surprisingly complex. It contains a great number of musical ideas, expressed by many instruments. If the tape had demonstrated substantial progress towards bringing those ideas together, how better for Ms Sheldon to instruct Mr Prior than to play the tape to him? Her claim that she took the tape to the studio, but did not play it to Mr Prior because it “sounded tinny” defies belief.

63                  A further factor supporting Mr Prior’s version of events is the financial arrangement made between the parties. If Mr Prior was merely an arranger putting together a miscellany of musical ideas emanating from Ms Sheldon, I would have expected him to have been paid a flat fee; a fee for his time, but with no extra payment if the theme was accepted by Sorena. After all, on that basis, he was a mere artisan, who did what he was told and took no credit or responsibility for the result. But this was not the arrangement offered him by Artec; on the contrary, he was paid a fee of $600 with an extra payment if, but only if, the work was accepted by Sorena.

64                  I have no doubt that Mr Prior made a major creative contribution – possibly the major creative contribution - to the theme. The theme should be regarded as a work of joint authorship.

65                  This conclusion coincides with that reached by Mr Catterns, although I reached it without any reference to his opinion. However, the coincidence of view means there is little point in my spending time on Mr Prior’s breach of contract claim. My view is that the parties agreed with each other, and with APRA, to be bound in relation to the original theme by the conclusion of APRA’s independent expert, who turned out to be Mr Catterns. For Ms Sheldon to resile from that position is to expose herself to liability in damages for breach of contract. However, those damages would be assessed on the basis of a joint authorship. Having regard to the availability of s115(4) of the Copyright Act in the assessment of damages for infringement of copyright, but not for breach of contract, the damages available to Mr Prior for breach of contract , on a joint authorship basis, cannot be greater than those available for breach of copyright, on the same basis. Under those circumstances it is sufficient for me to confine myself to the latter head when considering the damages payable by Ms Sheldon to Mr Prior. I will do that later.

Composition of the stings

(i)                 Evidence

66                  In para 24 above I referred to the dispute as to the amount of time Mr Sheldon spent with Mr Prior in relation to the composition of the stings. However, there is no dispute that Mr Prior did most of the required creative work. The question is whether Mr Sheldon made any contribution at all to that work. Mr Prior says he did not.

67                  Mr Prior said in his affidavit:

“Stuart made suggestions to me concerning matters such as the use of sound effects and incidental sounds, visual cues that should be supported musically, and the volume of sounds.

Stuart did not compose any melody, chords or rhythms. Stuart acted as a music producer responsible for delivering the product of my work to his client, …”

68                  In cross-examination Mr Prior gave the following additional evidence:

“What I suggest to you is that what occurred was that Stuart made some suggestions about certain sounds and you sampled them or tried them out on your keyboard?---No, he didn’t suggest sounds to me. Stuart sat at the mixing desk some of the time and basically changed the volume and the EQ of things which is what a producer or engineer would normally do.

And you suggested certain sounds and you discussed them with Stuart?---I would have certainly included him in my thoughts at the time of doing it, but Stuart wasn’t there for a lot of the time I might out [sic]. I was not able to discuss it when he left and I just continued to work.

We’re talking about the process while the two of you were together that there was an exchange of ideas between the two of you while working on the stings, wasn’t there?---Yes, but not about the stings or the composition of them.”

69                  A little later Mr Prior gave this evidence:

“You played around together using samples of parts of the theme?---In so much as I used some of the same sounds that I had chosen for use in the theme, yes. But, in so much as working with Stuart and discussing whether, you know, will you have this sound or that sound, no. That’s not what happened.

Well, the case is you wouldn’t have been doing this exercise had he not been there, would you?---Yes, I did. I continued work when he left.

I suggest to you that you played around with sound effects that had been used in the theme?---Yes, I did with the – yes.”

70                  Mr Lynch objected to the ambiguity involved in Ms Eastman’s use of the words “played around”. The evidence went on:

“Well, this process involved you playing the sounds?---Yes, that’s correct.

And I suggest to you that then I use the expression, played around, we’re referring to the process of you trying out different sounds on your keyboard?

---I don’t think the word try is really applicable here, so I would have to say no to this.

So you didn’t play sound on the keyboard?---Yes, I did, but I didn’t try and experiment and develop concepts. I pretty much knew what was needed and I just went ahead and did it. It wasn’t - - -

I suggest to you knew what was - - -

HIS HONOUR: Let him finish. It wasn’t what?---It wasn’t a very difficult job. It really wasn’t. It was just a – I’m sorry if I’m speaking out of turn just for a second here, but maybe this will help save a little bit of time is that once they got the theme obviously they wanted to have some stings for the various segments and obviously they wanted them to flow through in the same style that I had created that they had come to me to create. And so I loaded up my theme sounds. They told me how long the stings were. He brought around I believe, and my memory may fail me here, but actually a video player so that I could work with the pictures and then he left. He said, they go from three to five seconds or whatever it was he actually said on the day and then I just put in a chord and a little tinkle and a sound effect. There’s one sting. It’s really not something that I had to experiment and try and play around and discuss and all the things that you’ve suggested in the last 20 minutes.”

71                  Mr Prior agreed that he acted “under the instruction of Mr Sheldon”, in that “he explained that we needed the stings” but he denied that Mr Sheldon told him what to do, in terms of musical concepts. Asked about collaboration, Mr Prior said:

“I don’t believe it was a collaboration. He did not play a musical instrument. He did not suggest any chords or melodies or rhythms or even where I put a sound effect. All he was concerned with was that my music worked with the pictures and he worked in the realm of volume and EQ and perhaps even adding a touch of reverb on the odd sound which is not uncommon to the job of a engineer/producer. He was concerned with what the client needed. I was concerned with what the client needed in a musical context. He was in a production context.”

72                  In his affidavit, Mr Sheldon deposed:

“I went over to John’s new studio. I already had some ideas about how the stings should sound. John and I sat down together with his keyboard and worked through together various sound for the sting. We sat there and played around with ideas and samples, using parts of the theme, sound effects from the theme, didgeridoo hits and bird sounds, a gills here and a chord there. I knew the kinds of things I wanted and tried to make it fun and creative. It was a collaboration of ideas. Some of John’s and some of mine.”

73                  Apparently because of an oversight by counsel, Mr Sheldon was not cross-examined about this statement. Nevertheless, it was apparent at the trial that Mr Prior disputed Mr Sheldon’s account, as is evident from Mr Prior’s responses to Ms Eastman’s extensive cross-examination about the matter. There is an issue I must resolve.

(ii) Findings

74                  I accept Mr Prior’s account of the composition of the stings. My acceptance is not founded only on my favourable impression of him as a witness. It seems to me the evidence he gave under cross-examination, quoted above, is obviously correct. As might be expected of a producer, Mr Sheldon told Mr Prior the required length of the stings. They were all to be very short, no more than three to five seconds. As Mr Prior said, the producers (Sorena) would obviously wish the stings to reflect the theme. Given their shortness, there would not be time for more than “a little tinkle and a sound effect”. As the Court demonstration showed, the sound effect was a dramatic “whoosh” which itself lasted for a second or so. There was no scope for anybody to “play around with ideas” using “didgeridoo hits and bird sounds, gills here and a chord there”. To the extent that any of those sounds found their way into any of the stings, this was because they were already in the theme.

75                  Another factor that supports Mr Prior’s version of events is that he is a professional music composer whereas Mr Sheldon is a sound engineer. Although Mr Sheldon claims a musical background, the earliest work identified on his curriculum vitae was the “Great Outdoors”, as “music director/composer/music audio director” and nothing further until a similar role in “The Elegant Solution” in 1998. In para 10 above I quoted Mr Sheldon’s own description of his role in Artec Pty Ltd. There is no suggestion his role was different, in respect of Artec, in 1992. It will be recalled Mr Sheldon said: “I also listen to their compositions and assess whether they satisfied the project description. I give some direction on occasion but otherwise try not to have too much input”. There is no reason to think he would have departed from this practice in relation to the relatively mechanical task of composing a series of short stings based on existing theme music.

Relief

(i) The claim by the applicant against the first respondent

76                  It follows from my findings in respect of composition of the theme that Mr Prior and Ms Sheldon are joint authors of that work. It is a “work of joint authorship” within the meaning of s10 of the Copyright Act; that is “a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author …”. Section 78 of the Act provides that a reference in the Act to the author of a work is to be read, in relation to a work of joint authorship, as a reference to all the authors of the work.

77                  Section 32(1) of the Act provides (amongst other things) that, subject to the Act, copyright subsists in an original musical work that is unpublished and of which the author was a “qualified person” at the time when the work was made. Subsection (4) defines the term “qualified person” as including an Australian citizen. On the evidence, both Mr Prior and Ms Sheldon were Australian citizens at the date of composition of the “Great Outdoors” theme. It follows that copyright subsists in the theme. The same statement may be made about the background music and the adapted theme, both of which are agreed to be adaptations of the original theme.

78                  Section 35(2) provides that, subject to the section, the author of a musical work is the owner of any copyright subsisting in it. By virtue of s78, this must be read as a reference to all the authors of the work. In this case, therefore, Mr Prior and Ms Sheldon are joint owners of the copyright in the original theme, the adapted theme and the background music. Having regard to the position of APRA, it is desirable to make a declaration to that effect.

79                  I turn to the matter of damages. Section 36 of the Act provides that, subject to the Act, “copyright in a … musical … work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia … any act comprised in the copyright”. Part owners of copyright hold as tenants in common, not joint tenants: see Lauri v Renad [1892] 3 Ch 402 at 413 and the comment thereon in Copinger and Stone James on Copyright (12^th ed) at para 372, Cescinsky v George Routledge & Sons Limited [1916] 2KB 325 and Prior v Lansdowne Press Pty Ltd [1977] VR 65. Therefore, s36 must be read as indicating it is an infringement of the copyright of a joint owner of copyright in a work for a person to do or authorise an act comprised in the copyright without the licence of that joint owner. That joint owner may sue in respect of the infringement without the participation of the other joint owner or owners. This is so even if the infringer is the co-owner of the copyright, as in Powell v Head (1879) 12 Ch D 686 and Cescinsky. In the present case, therefore, Mr Prior is entitled to take action against Ms Sheldon in respect of any act comprised in the jointly owned copyright that she did or authorised without his authority. This plainly extends to her claims on APRA for the whole of the royalties earned by performance of the original theme, the adapted theme or the background music. Mr Prior is entitled to recover damages in respect of these infringements of his rights.

80                  The received royalties earned in respect of the themes (original and adapted) have now been adjusted by APRA, so as to distribute them equally between Mr Prior and Ms Sheldon. However, the effect of Ms Sheldon’s actions is that Mr Prior was delayed in receiving his share of the royalties. He should be compensated for that delay by my allowing, as an item of damages, interest on the share of royalties that fell due to him, from time to time, from the date payments would ordinarily have been made to him until the date they were made. I indicated to Mr Lynch that, if I reached the stage of assessing damages for this item, I would adopt a rate of 10% per annum. He made a calculation that was subsequently revised and whose accuracy is acknowledged by the respondents’ solicitor. That calculation assesses interest in respect of late payments for the original theme as $1,846.49 and $6,248 for the adaptation; a total of $8,094.49. I will allow that sum as the first item of damages.

81                  As I previously mentioned, APRA has not adjusted the royalties for the background music. Ms Sheldon received 100% of the royalties earned by the background music up to the end of 1996. This amounted to $16,827.62. Mr Prior is entitled to recover, by way of damages, one half of that amount; that is, $8,413.81. Currently APRA is holding $12,357.99 background royalties. Mr Sheldon is entitled to receive that sum. That will take his background royalty receipts (to date) to $20,771.80. Ms Sheldon has so far received $29,185.61. If $8,413.81 is deducted from that sum, the result is also $20,771.80.

82                  It is necessary to add interest in respect of the delay experienced by Mr Prior in receiving his share of the background music royalties. This item has been calculated at $4,839.16 up to the present time. As it will no doubt take a couple of months for Mr Prior to receive the money held by APRA in suspense, I will allow a further item of $205.96 representing interest at 10% for two months on $12,357.99.

83                  The total of these calculated items is $16,714.26

84                  Mr Lynch submits I should also allow a sum of general damages to compensate his client for the fact that he “failed to obtain a credit on the program that has run since the beginning of 1993 as a co-author of the theme”. He pointed out that Ms Sheldon had agreed in cross-examination that each episode of “The Great Outdoors” included a credit about the authorship of the music which was limited to a reference to herself. This was because she did not disclose Mr Prior’s involvement to Sorena but, on the contrary, warranted to Sorena that she was the sole author of the theme. Ms Sheldon agreed that, if there was a work of joint authorship, there should have been a joint credit.

85                  Mr Lynch accepts that it was not possible precisely to quantify the damage suffered by Mr Prior as a result of his being deprived of a credit for the “The Great Outdoors” music. Nonetheless he says, this was a serious injury requiring a grant of substantial damages. He points out that the effect of the deprivation is that Mr Prior lost the kudos of being associated with a successful series that, judging from the royalty statements, continued to be used by television at least until 30 June 1999. Without a credit on the program itself, he was not able, realistically, even to claim the series in his curriculum vitae. Ms Eastman did not offer any argument in opposition to Mr Lynch’s submissions on this issue.

86                  No doubt it would have been possible for Mr Prior to refer to “The Great Outdoors” theme in his curriculum vitae, but without a credit on the program itself this would have been an unwise course. Anybody who checked the program might have been caused to question his integrity. Hopefully, the future situation will be different, as a result of the decision in this case.

87                  It is not easy to put a monetary value on the loss identified by Mr Lynch, but I accept the loss is real and substantial. Reputation is critical to a person who follows a vocation dependent on commissions from a variety of clients. Success breeds success, but only if the first success is known to potential clients. To deprive a person of a credit to which he was justly entitled is to do him a great wrong. Not only does he lose the general benefit of being associated with a successful production; he loses the chance of using that work to sell his abilities. I accept that only a small minority of viewers are likely to be concerned with that subject; people such as film and television producers and directors. But these are the very people who matter to a person in Mr Prior’s position.

88                  It is not possible mathematically to estimate the damages referrable to loss of a credit, but it may, perhaps, give some perspective if I note that the royalties received by APRA in respect of the “Great Outdoors” themes and background music to 30 June 1999 exceeded $160,000. This amount may exceed the normal level of musical royalties for a television series, but it does indicate that the loss, through the lack of appropriate acknowledgment, of even one further commission might have a substantial financial effect. I think it is reasonable to allow $40,000 in respect of this item.

89                  Finally, the applicant seeks additional damages under s115(4) of the Copyright Act. That provision reads:

“(4) Where, in an action under this section:

(a)               an infringement of copyright is established; and

(b)               the court is satisfied that it is proper to do so, having regard to:

(i)                 the flagrancy of the infringement;

(ii)               any benefit shown to have accrued to the defendant by reason of the infringement; and

(iii)             all other relevant matters;

the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.”

90                  Mr Lynch put his client’s claim for additional damages solely on the basis of Ms Sheldon’s conduct “in persisting with the claim after the expert determination”. He said:

“I don’t think that there is any reason that your Honour would doubt that the dispute up until that time was genuine between the parties, and any infringement would not flagrant.

In our submission, it is different after the expert determination. And I say that regardless of whether its effect in law is a compromise or not, because the representations that had been made in August of 1994, about the adaption, couldn’t in conscience be maintained after the expert had concluded otherwise.

And they couldn’t be maintained against Sorena in terms of the warranty, and they couldn’t be maintained against APRA.”

Once again, Ms Eastman put no argument in respect of this item of claim.

91                  I think this is a case of flagrant infringement of copyright, at least in respect of the period after Mr Catterns’ determination. Ms Sheldon knew the author, or authors, of the original work was/were, entitled also to copyright in the adaptation. She knew Mr Catterns had ruled that Mr Prior was a joint author of the original work. It followed that he was entitled to a 50% share in the royalties earned by the adaptation. But she deliberately concealed from him any knowledge of the adaptation; thereby precluding any claim by him. And she deliberately concealed from APRA that the 1994 work, which she had claimed as her sole composition, was an adaptation of the 1992 work. Ms Sheldon’s duplicitous conduct can only be described as a flagrant infringement of Mr Prior’s rights. I propose to allow $20,000 by way of additional damages.

92                  The total of the damages is $76,714.26. I will enter judgment for Mr Prior, in that sum, as against Ms Sheldon.

(ii) The claim by the applicant against the second respondent

93                  It follows from findings set out above that Mr Prior is the sole owner of copyright in the stings. Mr Sheldon infringed that copyright by claiming a 50% interest in the royalties earned by the music. The stings composed in December 1992 were replaced in 1994 by stings not shown to have been adaptations of those written by Mr Prior. The claim is therefore a small one: one half of the value of the royalties earned by the 1992 stings up until the time when they ceased to be used, plus interest on that amount. One half of the royalties amounts to $789.66. I will add interest at 10% in respect of seven years, being $552.76. This takes the total sum to $1,342.42. I will enter judgment in favour of Mr Prior against Mr Sheldon in that amount.

94                  As the stings are no longer used, I see no need for a declaration in relation to them.

(iii) The claim by the applicant against the third respondent

95                  The deeds whereby Ms Sheldon and Mr Sheldon purported to assign to Artec Pty Ltd their copyright interests in the music associated with “The Great Outdoors” are undated. However, fax notations demonstrate they were in existence in November 1998. The evidence suggests the deeds were executed at about that time, as part of the respondents’ preparation of this case.

96                  There is no evidence of any act of infringement of copyright by Artec Pty Ltd. The declaration made in relation to the interests of Mr Prior and Ms Sheldon in the theme should take account of her assignment of her interest to Artec Pty Ltd, but there is no need for a separate declaration.

(iv) The claim by Artec Pty Ltd against the applicant

97                  Artec Pty Ltd claims to be entitled, as assignee of Ms Sheldon, to sole ownership of the copyright in the theme and, as assignee of Mr Sheldon, to joint ownership (with Mr Prior) of copyright in the stings. I do not doubt that the two deeds are effective to assign whatever interests Ms Sheldon and Mr Sheldon previously held. However, it follows from my findings that the interests held by Ms Sheldon and Mr Sheldon fell short of those claimed by Artec Pty Ltd. The cross claim must be dismissed.

(v) Costs

98                  As Mr Prior has succeeded against Ms Sheldon and Mr Sheldon in respect of each issue falling for determination, he is entitled to an order that they pay his costs. There should be no order for costs as between Mr Prior and Artec.

99                  Mr Lynch submits that, in the special circumstances of this case, any costs order in favour of his client against Ms Sheldon ought to be on a basis more favourable than the usual party/party scale. His reason is that it was unreasonable of Ms Sheldon to ignore the binding nature of Mr Catterns’ determination and put Mr Prior to a redetermination of the issues arising out of the composition of the theme.

100               I see the force of this submission and I accept Mr Lynch’s submission that Mr Catterns’ ruling was binding on Ms Sheldon, as a matter of contract law. Although the litigation has involved an additional issue, ownership of copyright in the stings, it is difficult to believe this action would have been brought if Ms Sheldon had accepted Mr Catterns’ determination and applied it to the 1994 adaptation and the background music. The amount involved in the stings claim would not have justified legal action.

101               Nonetheless, I do not propose to make any special order in relation to the relevant scale of costs. In assessing the claim for additional damages, I took into account Ms Sheldon’s reaction to Mr Catterns’ determination. I would be double-counting if I also used her intransigence as a reason for making a special costs order. I propose simply to order that the respondents pay the applicant’s costs of the proceeding. Costs will be assessed or taxed on a party/party basis.

Associate:

Dated: 7 April 2000