FEDERAL COURT OF AUSTRALIA

Melbourne University Publishing Ltd v Williamson [2005] FCA 1910

COSTS – claim for infringement of copyright – consent judgement – no letter or other demand before action – whether respondent should pay costs

MELBOURNE UNIVERSITY PUBLISHING LIMITED & ORS v SCOTT STEPHEN WILLIAMSON

NO VID 1434 OF 2005

HEEREY J

20 DECEMBER 2005

MELBOURNE

                                    ORDERS

Upon the respondent acknowledging to the court and the applicants that he has infringed the copyright in each of the literary works and published editions whose title appears in column 1 of Schedule 1 to the Statement of Claim in the proceeding, being a copyright of the applicant (the “relevant applicant”) whose name is set out in column 6 of Schedule 1 for that title by reproducing in a material form the whole or a substantial part of the literary work.

THE COURT ORDERS THAT:

1.         The court grants leave to the applicants to file and serve the amended application that was placed on the court file and served on the respondents on 14 November 2005.

2.         The respondent, whether by himself or his employees, agents or howsoever otherwise be restrained from, without licence of the relevant applicants or without lawful defence, reproducing in any material form, or authorising the reproduction in any material form of, any literary work of which any applicant is the owner of the copyright. 

3.         If the parties are unable to agree on or before 20 January 2006 an amount to be paid by the respondent to the applicants (by way of damages including additional damages pursuant to s 115(4) of the Copyright Act 1968 (Cth) or, at the election of the applicants, an account profits) in respect of the acknowledged infringements, the applicants may apply to the court for further orders.

4.         Subject to 5 below, the respondent preserve all property in his possession relating to the acknowledge infringements including”

(a)        Photocopies and electronic copies of all the works and published editions contained on the photocopy list of titles being Schedule 1 to the Statement of Claim.

(b)        All accounting records, in electronic and hard from, relating to photocopying of those works and published editions and purchase orders and sales thereof.

5.         The respondent deliver up on oath to the applicants’ solicitors within 30 days of the date of these orders for destruction under supervision all reproductions in any material form of the whole or any substantial part of the works (as defined in the Statement of Claim) acknowledge to be infringed.

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

REASONS FOR JUDGMENT

1                     The parties have agreed to consent orders providing in effect judgment against the respondent by the applicant publishers for infringement of copyright, damages to be assessed in default of agreement, preservation of property and delivery up of infringing works.  The only matter in dispute is a question of costs.  The applicants are seeking an order that the respondent pay the applicants’ costs of the proceeding on a party and party basis, to be taxed in default of agreement. 

2                     Mr Peterson, for the respondent, says - and this is not in dispute - that the application was served without notice; there was no letter of demand.  Immediately on receipt of it his client sought his advice and Mr Peterson advised him to take the course which has been reflected in the consent orders.

3                     The background of this is that the respondent operates a small photocopying shop.  At the shop there are notices warning against infringement of copyright and advising that persons infringing copyright do so at their own risk.  In the circumstances, Mr Peterson says there should be no order as to costs.  Mr Rothnie for the applicant says that had a letter of demand been sent it might have constituted unjustified threats under s 202 of the Copyright Act 1968 (Cth).  Mr Rothnie says it is only speculation that if such a letter had been sent the agreement would have been reached in the way that it has.

4                     I accept Mr Peterson's submissions.  It seems to me that it is more than speculation that had a letter of demand been sent the parties would have reached the common sense resolution that they have.  In fact, it is a widespread and salutary practice in all forms of civil litigation for a prospective plaintiff to write a letter of demand, for the very reason that a prospective defendant can take advice and, if there is no defence, save the substantial costs that would be involved even for a brief undefended application like the present one.  I do not think that there was any real prospect of the applicants infringing the provision against unjustified threats because ex hypothese their threats would have been justified since there seems to have been no answer to the copyright infringement claim.

5                     So, for those reasons, I will make the orders sought except that there will be no orders for costs.                  

Associate:

Dated:              20 December 2005