FEDERAL COURT OF AUSTRALIA

Universal Music Australia Pty Ltd v Miyamoto [2003] FCA 812

COPYRIGHT – infringement of copyright in sound recordings – “remixing” by disc jockeys of copyright tracks on compact discs (“CDs”) –– retailing of CDs containing remixed tracks – applicants, exclusive licensees in Australia in respect of the copyright – respondents, disc jockeys and retailers of the CDs – multiple applicants and respondents – joinder of parties in single proceeding – whether a single lump sum order for costs should be made against all respondents creating joint and several liable for the whole amount.

Copyright Act 1968 (Cth) ss 101, 103

UNIVERSAL MUSIC AUSTRALIA PTY LTD

(ACN 000 158 592) & ORS v JUN MIYAMOTO & ORS

N 1331 OF 2002

LINDGREN J

18 JULY 2003

SYDNEY

As against the First, Second, Third, Fourth, Fifth,

Sixth and Twelfth Respondents

Note:             Certain expressions used in these orders are defined for the purposes of these orders in the Schedule of Definitions hereto.

the court orders that:

1.         All issues of the quantum of pecuniary relief be determined separately from and after the determination of all other issues in this proceeding.

the court declares that:

Copyright declarations

The first respondent

2.         The first respondent has infringed the copyright of the first, second and third applicants in the following recordings (First Group of Recordings):

The first and second respondents

3.         The first and second respondents have infringed the copyright of the first, second and third applicants in the following recordings (Second Group of Recordings):

The third respondent

4.         The third respondent has infringed the copyright of the first and second applicants in the following recordings (Third Group of Recordings):

The third, fourth and fifth respondents

5.         The third, fourth and fifth respondents have infringed the copyright of the first and third applicants in the following recordings (Fourth Group of Recordings):

The sixth and twelfth respondents

6.         The sixth and twelfth respondents have infringed the copyright of the first, second and third applicants in the following recordings (Fifth Group of Recordings):

Trade Practices Declarations

The first respondent

7.         The first respondent, in trade or commerce, has engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Bizarre Ride Representations to be made.

8.         The first respondent, in trade or commerce, has made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the Bizarre Ride Representations to be made.

The first and second respondents

9.         The first and/or second respondents, in trade or commerce, have engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Black Label Representations to be made.

10.       The first and/or second respondents, in trade or commerce, have made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the Black Label Representations to be made.

The third respondent

11.       The third respondent, in trade or commerce, has engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Gunz Representations to be made.

12.       The third respondent, in trade or commerce, has made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW)  in causing the Gunz Representations to be made.

The third, fourth and fifth respondents

13.       The third, fourth and/or fifth respondents, in trade or commerce, have engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Allstars Representations to be made.

14.       The third, fourth and/or fifth respondents, in trade or commerce, have made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the Allstars Representations to be made.

The sixth respondent

15.       The sixth respondent, in trade or commerce, has engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the First Representations to be made.

16.       The sixth respondent, in trade or commerce, has made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the First Representations to be made.

the court orders that:

Copyright claims - Permanent injunctions against copying

The first respondent

17.       The first respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the First Group of Recordings, without the licence of the first, second and third applicants.

The first and second respondents

18.       The first and second respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Second Group of Recordings, without the licence of the first, second and third applicants.

The third respondent

19.       The third respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Third Group of Recordings, without the licence of the first and second applicants.

The third, fourth and fifth respondents

20.       The third, fourth and fifth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Fourth Group of Recordings, without the licence of the first and third applicants.

The sixth and twelfth respondents

21.       The sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Fifth Group of Recordings, without the licence of the first, second and third applicants.

Copyright claims – Permanent injunctions regarding copying applicants’ catalogue

22.       The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the first applicant, or any sound recordings contained as at 14 February 2003 within the Universal Music Catalogue, without the licence of the first applicant.

23.       The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the second applicant, or any sound recordings contained as at 14 February 2003 within the Sony Music Catalogue, without the licence of the second applicant.

24.       The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the third applicant, or any sound recordings contained as at 14 February 2003 within the Warner Music Catalogue, without the licence of the third applicant.

Copyright claims - Permanent injunctions against Making and Trading In

The first respondent

25.       The first respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from manufacturing, or authorising the manufacturing of (Making) and/or selling, or by way of trade offering or exposing for sale, or distributing for the purpose of trade, or by way of trade exhibiting in public (Trading In) the following records without the licence of the first, second and third applicants:

The first and second respondents

26.       The first and second respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In the following records without the licence of the first, second and third applicants:

The third respondent

27.       The third respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from Making and/or Trading In the following records without the licence of the first and second applicants:

The third, fourth and fifth respondents

28.       The third, fourth and fifth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In the following records without the licence of the first and third applicants:

The sixth and twelfth respondents

29.       The sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise,  be permanently restrained from Making and/or Trading In the following records without the licence of the first, second and third applicants:

Copyright claims - Permanent injunctions regarding Making and Trading In applicants’ catalogue

30.       The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the first applicant, or any sound recordings contained as at 14 February 2003 within the Universal Music Catalogue, without the licence of the first applicant.

31.       The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the second applicant, or any sound recordings contained as at 14 February 2003 within the Sony Music Catalogue, without the licence of the second applicant.

32.       The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the third applicant, or any sound recordings contained as at 14 February 2003 within the Warner Music Catalogue, without the licence of the third applicant.

Copyright claims - Permanent injunctions regarding websites

33.       The first, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Trading In the Bizarre Ride Infringing Record, the Black Label Infringing Records and the Alltime Showtime Record without the licence of the first, second and third respondents whether from the website at the URL www.anthemrecords.com.au or from any other website operated by them.

Trade Practices claims - Permanent injunctions

The first respondent

34.       The first respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from making, or causing to be made, or being a party to or directly or indirectly knowingly concerned in the making of:

(a)        the Bizarre Ride Representations; and

(b)        any matter which is substantially identical to the Bizarre Ride Representations.

The first and second respondents

35.       The first and second respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or causing to be made, or being parties to or directly or indirectly knowingly concerned in the making of:

(a)        the Black Label Representations; and

(b)        any matter which is substantially identical to the Black Label Representations.

The third respondent

36.       The third respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from making, or causing to be made, or being a party to or directly or indirectly knowingly concerned in the making of:

(a)        the Gunz Representations; and

(b)        any matter which is substantially identical to the Gunz Representations.

The third, fourth and fifth respondents

37.       The third, fourth and fifth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or causing to be made, or being parties to or directly or indirectly knowingly concerned in the making of:

(a)        the Allstars Representations; and

(b)        any matter which is substantially identical to the Allstars Representations.

The first and twelfth respondents

38.       The first and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or causing to be made, or being a party to or directly or indirectly knowingly concerned in the making of:

(a)        the First Representations; and

(b)        any matter which is substantially identical to the First Representations.

in respect of the first, second, third, fourth, fifth, sixth, SEVENTH, EIGHTH and twelfth respondents

the court further orders:

39.       The Applicants have leave pursuant to O 6 r 2 of the Federal Court Rules to join all the Applicants and all the Respondents in the proceeding.

40.       The proceedings be stood over to 9.30 am on 1 August 2003 for directions for the further conduct of the proceedings.

As against the Seventh and Eighth Respondents

Note:      Certain expressions used in these orders are defined for the purposes of these orders in the Schedule of Definitions hereto.

the court further orders that:

1.         All issues of the quantum of pecuniary relief be determined separately from and after the determination of all other issues in this proceeding.

the court declares that:

Copyright declarations

The seventh and eighth respondents

2.         The seventh and eighth respondents have infringed the copyright of the first, second and third applicants in the following recordings (Sixth Group of Recordings):

the court orders that:

Copyright claims - Permanent injunctions against copying

The seventh and eighth respondents

3.         The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Sixth Group of Recordings, without the licence of the first, second and third applicants.

Copyright claims - Permanent injunctions regarding copying applicants’ catalogue

4.         The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the first applicant, or any sound recordings contained as at 14 February 2003 within the Universal Music Catalogue, without the licence of the first applicant.

5.         The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the second applicant, or any sound recordings contained as at 14 February 2003 within the Sony Music Catalogue, without the licence of the second applicant.

6.         The seventh and eighth respondents, whether by their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the third applicant, or any sound recordings contained as at 14 February 2003 within the Warner Music Catalogue, without the licence of the third applicant.

Copyright claims - Permanent injunctions against Making and Trading In

The seventh and eighth respondents

7.         The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In the following records without the licence of the first, second and third applicants:

Copyright claims - Permanent injunctions regarding Making and Trading In

applicants’ catalogue

8.         The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the first applicant, or any sound recordings contained as at 14 February 2003 within the Universal Music Catalogue, without the licence of the first applicant.

9.         The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the second applicant, or any sound recordings contained as at 14 February 2003 within the Sony Music Catalogue, without the licence of the second applicant.

10.       The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the third applicant, or any sound recordings contained as at 14 February 2003 within the Warner Music Catalogue, without the licence of the third applicant.

Copyright claims - Permanent injunctions regarding websites

11.       The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise,  be permanently restrained from Trading In the Bizarre Ride Infringing Record and the Alltime Showtime Record without the licence of the first, second and third respondents whether from the website at the URL www.unsound.com.au or any from other website operated by them.

entry of orders

12.       I direct that these orders not be entered until further order.

notice of motion

13.       The seventh and eighth respondents’ notice of motion be stood over to 1 August 2003 at 9.30am.

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

schedule of definitions

The Allstars Infringing Record means the record manufactured by, or on behalf of, the third, fourth and fifth respondents:

The Allstars Representations means the representations that the third, fourth and/or fifth respondents have made, in trade and commerce, in relation to the Allstars Infringing Record, which are that:

(a)        third, fourth and/or fifth respondent, is, or are, the owner(s) of copyright in each of the recordings contained on the record; and

(b)        the records were manufactured, or alternatively sold, with the licence of the owner, or owners, of copyright.

The Bizarre Ride Infringing Record means the record manufactured by, or on behalf of the first respondent:

The Bizarre Ride Representations means the representations that the first respondent has made, in trade and commerce, in relation to the Bizarre Ride Infringing Record, which are that:

(a)        the first respondent is the owner of copyright in each of the recordings contained on the record; and

(b)        the records were manufactured, or alternatively sold, with the licence of the owner, or owners, of copyright.

The Black Label Infringing Records means the records manufactured by, or on behalf of, the first and second respondents which are:

The Black Label Representations means the representations that the first and/or second respondent has made, in trade and commerce, in relation to the Black Label Infringing Records, which are that:

(a)        the first and/or second respondent, is, or are, the owner(s) of copyright in each of the recordings contained on the record; and

(b)        the records were manufactured, or alternatively sold, with the licence of the owner, or owners, of copyright.

The First Representations means the representations that the sixth respondent has made, in trade or commerce, in the course of carrying on its business and offering for sale, selling, authorising the offer for sale and sale of the Bizarre Ride Infringing Record, the Black Label Infringing Records, the Gunz Infringing Record and the Allstars Infringing Record, which are that:

(a)        the sixth respondent has the right, licence or all consents necessary to Trade In the Bizarre Ride Infringing Record, the Black Label Infringing Records, the Gunz Infringing Record and the Allstars Infringing Record; and

(b)        the offering for sale, and sale of, the Bizarre Ride Infringing Record, the Black Label Infringing Records, the Gunz Infringing Record and the Allstars Infringing Record does not constitute an infringement of copyright owned by another person.

The Gunz Infringing Record means the record manufactured by, or on behalf of, the third respondent which is:

The Gunz Representations means the representations that the third respondent has made, in trade and commerce, in relation to the Gunz Infringing Record, which are that:

(a)        the third respondent is the owner of copyright in each of the recordings contained on the record; and

(b)        that the records were manufactured, or alternatively sold, with the licence of the owner, or owners, of copyright.

The Sony Music Catalogue means the catalogue of sound recordings that the second applicant controls, which contains recordings within the meaning of the Copyright Act 1968 (Cth) including the following sound recordings:

The Universal Music Catalogue means the catalogue of sound recordings that the first applicant controls, which contains recordings within the meaning of the Copyright Act 1968 (Cth) including the following sound recordings:

The Warner Music Catalogue means the catalogue of sound recordings that the third applicant controls, which contains recordings within the meaning of the Copyright Act 1968 (Cth) including the following sound recordings:

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

REASONS FOR JUDGMENT

introduction

1                     As appears from the heading, there are ten applicants and twelve respondents. The applicants move by notice of motion filed on 13 June 2003 for final declarations and orders.  They move pursuant to O 10 r 7 or O 20 r 1, and invoke O 18 r 4, of the Federal Court Rules.

2                     Order 10 subr 7 provides:

“Where a respondent fails to comply with an order of the Court directing that party to take a step in the proceeding, any other party may move the Court on notice –

(a)       ... ;

(b)       if the party in default is a respondent – for judgment or an order against him; or

(c)        ....”

3                     The applicants rely on a direction that the respondents file their defences by 2 May 2003, with which the respondents failed to comply.

4                     Order 20 r 1 is the familiar provision for summary judgment against a respondent. 

5                     Order 18 r 4 provides that where admissions are made by a party, whether by a pleading or otherwise, the Court may, on the application of any other party, pronounce any judgment or make any order to which the applicant is entitled on the admissions.  The admissions relied on here arises from the service of a notice to admit facts and the non serving in response to it of a notice disputing facts:  see O 18 r 2.

6                     The applicants have settled with the ninth, tenth and eleventh respondents and so the motion relates only to the first, second, third, fourth, fifth, sixth, seventh, eighth and twelfth respondents.

PARTIES

7                     The proceeding commenced with the filing of an application by the ten applicants with leave of the Duty Judge on 12 December 2002 against five identified disc jockeys.  At that time they were named in the title to the proceeding as follows:

First respondent:                       “Jun Miyamoto, also known as DJ Moto”

Second respondent:                  “John Doe 4 also known as Chocolate Boy Wonder”

Third respondent:                      “John Doe 1 also known as DJ Peter Gunz”

Fourth respondent:                    “John Doe 2 also known as DJ Demo”

Fifth respondent:                       “John Doe 3 also known as D Day Tickelz”

His Honour reserved leave for the applicants to maintain the proceeding as so constituted until they had sufficient information to move the Court for leave to amend by substituting the true names of the four John Doe respondents.  Progressively as the names of the individuals referred to as the various “John Does” became known, their true names were substituted, pursuant to orders made by me.

8                     Being disc jockeys, the first five respondents have been called “DJ respondents”.  The remaining seven respondents were joined as parties pursuant to orders of the Court.  For reasons that appear in the next paragraph, I will call them the “retailer respondents”.

9                     In summary, the proceeding arises out of the “remixing” by the DJ respondents of tracks from sound recordings, and the selling or offering for sale by the  remaining respondents, of compact discs containing the remixed tracks.  The copyright in the sound recordings is vested in persons of whom various applicants are the exclusive licensees in  Australia.  It seems, however, that some of the applicants may have been included for more abundant precaution.  In fact, the principal applicants are the first, second and third applicants, to which I will refer as Universal Music, Sony Music and Warner Music, respectively.

10                  By the amended application filed on 14 February 2003, the applicants seek declarations of certain kinds against the DJ respondents and declarations of different kinds against the retailer respondents.  As well, they seek injunctive relief and other orders.  They also seek an order for costs.

11                  It is appropriate to note that many, if not all, of the artists in question are successful international artists with a substantial degree of popularity in Australia and overseas.

12                  I will order that the question of damages or an account of profits be dealt with separately on a future occasion.

13                  One matter which has troubled me is whether it is appropriate for all ten applicants and twelve respondents to be dealt with in the one proceeding.  It is understandable how this has come about – it has come about as part of an anti-piracy campaign conducted by the various music recording and selling enterprises represented by the applicants.

14                  Order 6 rule 2 of the Federal Court Rules provides:

“Two or more persons may be joined as applicants or respondents in any proceeding –

(a)       where –

(i)        if a separate proceeding were brought by or against each of them, as the case may be, some common question of law or fact would arise in all the proceedings; and

(ii)       all rights to relief claimed in the proceedings (whether they are joint, several or alternative) are in respect of or arise out of the same transaction or series of transactions; or

(b)       where the court gives leave so to do.”

15                  Analysis may reveal that in relation to every sound recording which was “remixed”, there is one compact disc which was, or there are several compact discs which were, sold by one or more of the retailer respondents, and that every CD has tracks for sound recordings, in respect of the copyright in which various applicants are the exclusive licensees.  So, it may be that there is a “connection” between each party and every other party.  I have not explored this question.  It is obvious, however, that there are many connections.

16                  It seems to me convenient and in the interests of both the applicants and the respondents that all the parties and causes of action be embraced within this single proceeding – see my observations later as to costs.  To remove any doubt I propose to make an order under O 6 r 2(b) of the Court’s Rules giving leave to the applicants to join all twelve respondents in the proceeding.  Such leave may be given after joinder and without notice to the parties to be joined:  O 6 r 4.  The view has been taken that where leave is given after joinder has in fact occurred, the leave takes effect retrospectively as at and from the date when joinder in fact occurred:  Cerche v Commissioner of Taxation [2001] FCA 1146.

BACKGROUND

17                  I will summarise the factual background, much of which is contained in the various notices to admit facts.  These notices were sent on 2 and 3 June 2003 and no notices disputing any of the statements of facts were received within the 14 day period allowed after service.  In June and July 2003 the notice of motion for summary judgment and supporting affidavits were served on the respondents.

18                  The compact discs, the subject of these proceedings, are the following:

19                  The sound recordings, the subject of these proceedings are the following:

20                  The admissions arising from service of the notices and non-response to them show that the following applicants are the exclusive licensees in Australia of the copyright in respect of the following sound recordings:

First applicant, Universal Music Australia Pty Ltd

(“The Universal Recordings”)

Second applicant, Sony Music Entertainment (Australia) Ltd

(“the Sony Recordings”)

Third applicant, Warner Music Australia Pty Ltd

(“the Warner Recordings”)

21                  The DJ respondents and retailer respondents have manufactured, sold, offered for sale, or authorised the sale of, compact discs which reproduced the Universal recordings, the Sony recordings and the Warner recordings, without the licence of Universal Music, Sony Music or Warner Music, respectively.

22                  Copies of all of the compact discs (with the exception of that entitled “Black Label III”) were available for purchase through the website of the sixth respondent, trading as “Anthem Records”, at www.anthem.com.au.

23                  The compact discs contained substantial reproductions of the Universal recordings, the Sony recordings and the Warner recordings.

24                  The manufacture of the compact discs and the selling of them and offering of them for sale, infringed the applicants' copyright.

25                  The above fact also stands admitted as a result of the non response to the notices to admit facts. 

26                  There has been infringement of copyright under ss 101 and 103 of the Copyright Act 1968 (Cth).

27                  The claims of contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth)and ss 42 and 44 of the Fair Trading Act 1987 (NSW)are not necessarily so straightforward, but the allegations are also admitted by the non-response to the notices to admit facts.  In these circumstances, I do not think it appropriate to investigate whether the inference may be open that in some cases consumers may have had reason to suspect that there had been an infringement constituted by the remixing. 

28                  I will make declarations and orders by way of injunction, as well as an order that the question of damages or an account of profits be dealt with on a future occasion. 

COSTS

29                  The question of costs is an interesting one.  The applicants ask me to make a lump sum order for costs.  Michael John Williams, a partner at Gilbert and Tobin, solicitors for the applicants,  an experienced intellectual property lawyer, has sworn an affidavit giving some detail of the work which has been undertaken on behalf of the applicants in the proceeding.  There is no doubt that a very considerable amount of work has been undertaken.  Mr Williams has also given, with supporting reasons, his estimate of the amount of costs which would be recovered by the applicants on a taxation of costs.  After allowing for a deduction in respect of the ninth, tenth and eleventh respondents, with whom, as noted earlier, the applicants settled, and also in respect of costs incurred by the applicants in respect of a business “Insane”, which did not become a respondent, his estimate of the professional costs and disbursements incurred by the applicants in relation to the remaining respondents is $173,382.56.

30                  Mr Williams estimates that on average a reduction of some 40 percent is made on taxation in order to arrive at party and party costs.  This would give a figure of $104,029.54.  In addition, at the time of swearing his affidavit on 8 July 2003, his estimate of the costs on the further conduct of the application for summary judgment was $10,000, including professional costs and counsel’s fees.  Subjecting that figure to the 40 percent reduction, one is left with an amount of $6,000 to be added on to the sum of $104,029.54, giving a total of $110,029.54.  The applicants seek an order for a rounded off figure of $110,000.  They join in asking that the order be made in favour of Universal Music alone.

31                  I see no reason to question Mr Williams’s affidavit evidence.  Moreover, I would wish to make a lump sum order.  However, I have a difficulty.  What is sought is an order creating joint and several liability, so that each respondent would be liable to pay the whole of the costs – of course, each would have a right of contribution against the others.  My difficulty can be indicated by this rhetorical question:  Why should one respondent have to bear costs incurred in bringing a proceeding against all the other respondents? 

32                  Let it be assumed that all the respondents except one do not pay.  Is it just that that one should have to bear the total amount of $110,000?  Would the costs attributable to bringing a proceeding and proving the case against that one alone be anything remotely approaching $110,000?

33                  On the other hand, there are difficulties in the suggestion that the amount each respondent should be required to contribute to costs should be the amount that respondent would have had to pay if a separate proceeding had been brought against that respondent.  For example, each of the twelve respondents would have to pay the amount of the filing fee on the proceeding brought against that respondent, whereas, as a result of all having been sued in the one proceeding, the applicants have burdened each respondent with only one twelfth of a single filing fee (on the assumption that all respondents do in fact contribute).  No doubt illustrations of such savings of costs could be multiplied: another obvious one is the cost of proving the existence of copyright which has not had to be undertaken more than once.

34                  It may prove to have been in the interests of each respondent that the single proceeding was brought.

35                  Because this issue has caused me some difficulty I will not make an order for costs this afternoon but the question can be dealt with on 1 August 2003, which is the date proposed for directions for the purpose of the claim for damages or an account of profits.

ORDERS – seventh and eighth respondents

36                  Today, the date fixed for delivery of judgment, Mr C M McCooe, solicitor, has sought leave to appear for the seventh and eighth respondents, and to file an appearance and a notice seeking leave to file a defence out of time.  Agreement has been reached between the applicants and the seventh and eighth respondents that the appearance and notice of motion be filed and that any orders against those respondents not be entered until further order. Consequently, the substantive orders I will make today are in two sets:  those against the first, second, third, fourth, fifth, sixth and twelfth respondents on the one hand, and those against the seventh and eighth respondents on the other hand.

Associate:

Dated:              2 August 2003