FEDERAL COURT OF AUSTRALIA

JWR Productions Australia Pty Ltd v Duncan-Watt (No 2) [2020] FCA 236

ORDERS

THE COURT ORDERS THAT:

1.    The proceedings be dismissed.

2.    Unless any party applies within 7 days for a different order with respect to costs, the applicants pay the respondent’s costs.

3.    If any party applies for a different order as to costs in accordance with order 2:

(a)    the party applying for such an order file with the application for costs:

(i)    a submission of not more than 3 pages identifying the order sought and why it is contended such an order should be made and stating whether the party wishes to be heard in respect of the application;

(ii)    any evidence proposed to be relied upon;

(b)    the party against whom such an order is sought file within 3 days of receipt of the application:

(i)    a responding submission of not more than 3 pages, which includes a statement as to whether the party wishes to be heard; and

(ii)    any evidence relied upon.

4.    Unless otherwise ordered, any application for costs be determined on the papers.

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

ORDERS

THE COURT ORDERS THAT:

1.    The proceedings be dismissed.

2.    Unless any party applies within 7 days for a different order with respect to costs, the applicants pay the respondent’s costs.

3.    If any party applies for a different order as to costs in accordance with order 2:

(a)    the party applying for such an order file with the application for costs:

(i)    a submission of not more than 3 pages identifying the order sought and why it is contended such an order should be made and stating whether the party wishes to be heard in respect of the application;

(ii)    any evidence proposed to be relied upon;

(b)    the party against whom such an order is sought file within 3 days of receipt of the application:

(i)    a responding submission of not more than 3 pages, which includes a statement as to whether the party wishes to be heard; and

(ii)    any evidence relied upon.

4.    Unless otherwise ordered, any application for costs be determined on the papers.

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

REASONS FOR JUDGMENT

THAWLEY J:

A    OVERVIEW

1    Thank You For Being A Friend is a puppet parody of the famous television series, The Golden Girls. It was jointly created by Mr Jonathan Rockefeller and Mr Thomas Duncan-Watt and successfully debuted as a small production in Sydney on 13 February 2013.

2    With a view to improving the profile of the production and taking the show around Australia and internationally, Mr Rockefeller and Mr Duncan-Watt decided to licence the show to Neil Gooding Productions Pty Ltd (Mr Gooding) and Matthew Management (Mr Henderson) as producers. A licence was first granted in July 2013. The script was revised, a proper set was created, and the producers commenced performances in Australia in January 2014.

3    Mr Rockefeller and Mr Duncan-Watt worked on other projects together. These included a novel, No. 5½, on which they collaborated from about June 2014.

4    In 2015, after Mr Rockefeller had moved to the United States of America (US), Mr Rockefeller asked Mr Duncan-Watt to write a new script with a view to the two of them producing a puppet parody of The Golden Girls, called The Goldenish Girls: A Puppet Parody. The aim was to produce this show internationally, debuting in New York.

5    Mr Duncan-Watt was concerned this would not be possible whilst Thank You For Being A Friend was the subject of an exclusive licence to Neil Gooding Productions and Matthew Management. Mr Gooding and Mr Henderson were in the process of bringing that show to the US. Mr Rockefeller reassured Mr Duncan-Watt that his lawyers had matters in hand and that the licence to Neil Gooding Productions and Matthew Management in respect of Thank You For Being A Friend would be terminated.

6    Mr Rockefeller sought advice, including as to whether he could prevent Mr Gooding and Mr Henderson from bringing Thank You For Being A Friend to the US or whether he could terminate the relevant licence agreement for breach. He did not receive positive answers to either of these questions.

7    Mr Duncan-Watt wrote the script for The Goldenish Girls with some input from Mr Rockefeller. The major part of the writing was done over the period May 2015 to 9 September 2015. Thereafter, Mr Duncan-Watt resumed work on the novel No. 5½.

8    New script in hand, Mr Rockefeller became increasingly uncooperative with Mr Gooding and Mr Henderson, making it difficult to progress a timely US tour of Thank You For Being A Friend.

9    The relationship between Mr Rockefeller and Mr Duncan-Watt soured. In May 2016, Mr Rockefeller wrote to Mr Duncan-Watt stating he was terminating the agreement under which Mr Duncan-Watt was writing No. 5½ (the Author Collaboration Agreement).

10    Then, on 27 June 2016, Mr Rockefeller wrote stating he was terminating the agreement under which Mr Duncan-Watt had written The Goldenish Girls (the Scriptwriter Agreement) for which they were to be jointly credited.

11    Not three months later, on 19 September 2016, Mr Rockefeller opened a show on Off-Off-Broadway billed as Jonathan Rockefeller’s That Golden Girls Show!. It was a puppet parody of The Golden Girls television show. It was based on the production format and ideas of Thank You For Being A Friend. It used the identical plot of The Goldenish Girls. Mr Rockefeller had prepared the script for That Golden Girls Show! from the script Mr Duncan-Watt had written for The Goldenish Girls.

12    Before That Golden Girl Show! opened, Mr Rockefeller advertised and billed the show as solely his creation. In promoting That Golden Girls Show! he used material which related to Thank You For Being A Friend, including the line “‘The Golden Girls with Puppets: SOLD’ – Time Out Magazine”. Time Out had not reviewed That Golden Girls Show!. Mr Rockefeller described That Golden Girls Show! in a radio interview as a “second version” of Thank You For Being A Friend. He supplied reviews of Thank You For Being A Friend to US reviewers for the purpose of promoting That Golden Girls Show!.

13    At the time he was promoting That Golden Girls Show! in this way, he told Mr Gooding and Mr Henderson that his show was “100% different”, that he had “assiduously differentiated” his show from Thank You For Being A Friend and that he had “gone to great lengths” to communicate that his “brand new show” had no connection and bore no relation whatsoever to Thank You For Being A Friend.

14    None of this rang true to Mr Gooding when he watched the opening performance of That Golden Girls Show! on 19 September 2016.

15    On 19 October 2016, Mr Duncan-Watt, Mr Gooding and Mr Henderson commenced proceedings in the Supreme Court of New York. They alleged that Mr Rockefeller falsely claimed to be the sole creator of That Golden Girls Show! when, in truth, Mr Rockefeller had taken the script for The Goldenish Girls written by Mr Duncan-Watt and applied it to the production format and set design of Thank You For Being A Friend.

16    The New York proceedings came to the attention of The New York Times. On 23 October 2016, The New York Times published an article entitled “Lawsuit Filed Over ‘Golden Girls’ Parody”. The article summarised the allegations which had been made against Mr Rockefeller in the proceedings. The article also quoted Mr Duncan-Watt and Mr Gooding and reported comments from others, including Mr Rockefeller’s legal representatives. A journalist had contacted those people for comment before the article was published.

17    The next day, Mr Gooding published a Facebook post which included a link to the article.

18    In February 2017, Mr Rockefeller and his company, JWR Productions Pty Ltd, commenced two proceedings in this Court, one against Mr Gooding and one against Mr Duncan-Watt. Those proceedings, which are the subject of this judgment, were heard together.

19    The allegations made by Mr Rockefeller against Mr Gooding were, in summary, that Mr Gooding:

(1)    had defamed him. This was said to arise from Mr Gooding’s Facebook post, which provided a link to The New York Times article – see: Section C of these reasons;

(2)    had engaged in conduct, in trade or commerce, which was misleading or deceptive. This was said to arise from Mr Gooding’s conversation with a journalist from The New York Times and Mr Gooding’s publication of the Facebook post – see: Section D.3.

20    The allegations made by Mr Rockefeller against Mr Duncan-Watt were, in summary, that Mr Duncan-Watt:

(1)    engaged in conduct, in trade or commerce, which was misleading or deceptive in conveying certain representations to a journalist from The New York Times – see: Section D.4;

(2)    engaged in conduct, in trade or commerce, which was misleading or deceptive and threatened breach of copyright, by continuing to include on his website certain material relating to the novel No. 5½ after Mr Rockefeller had terminated the Author Collaboration Agreement – see: Section E below;

(3)    breached Mr Rockefeller’s copyright in two photographs which appeared for a time on Mr Duncan-Watt’s website – see: Section F below; and

(4)    unreasonably failed to return items of Mr Rockefeller’s personal property after Mr Rockefeller had demanded their return – see: Section G below.

21    For the reasons given below, each claim brought by Mr Rockefeller and JWR Productions Pty Ltd must be dismissed.

22    Before turning to the specific claims and the reasons each must be dismissed, it is necessary to set out the factual background. This is done next, in Section B. In setting out the background it has been necessary to reach various conclusions as to the legal effect of what the parties did. This is because of the relevance of these matters to the claims which are dealt with later, particularly the defence of truth which Mr Gooding successfully propounded in the defamation case brought against him.

B     FACTUAL BACKGROUND

B.1    The Golden Girls television series

23    The Golden Girls was a critically acclaimed American television sitcom of the 1980s and 1990s televised in around 30 countries. Repeats of the show continue to be televised today. The series featured four central female characters living out their ‘golden’ years as house-mates in Miami, Florida. It is desirable in order to understand the issues and resolve questions about the similarity or otherwise between Thank You For Being A Friend and That Golden Girls Show! to know a little about the four central characters. They were:

(1)    Blanche Devereaux: a Southern belle with a renowned sexual confidence;

(2)    Dorothy Zbornak: a substitute school teacher originally from Brooklyn, New York who was the intellectual of the group;

(3)    Rose Nylund: a Scandinavian American from St Olaf, Minnesota who was naïve to the point of stupidity and told long stories about her home town;

(4)    Sophia Petrillo: Dorothy’s mother who regularly reminisced about her early life in Sicily, Italy.

24    A regular fifth character was Stanley (Stan) Zbornak, Dorothy’s ex-husband, to whom Dorothy had given the best years of her life.

25    The Golden Girls portrayed the family, friendship and romantic issues faced by Dorothy, Rose, Blanche and Sophia as well as the various daily stresses of the characters. The women each have recurring plot lines throughout the series, including dating escapades, money-making ventures and the highs and lows of ageing. These recurring themes were often brought together and dissected over cheesecake in the kitchen. The show is well known for its acerbic humour, racy dialogue, sexual innuendo, and for its theme song – Thank You For Being A Friend – written by Andrew Gold in 1978 and re-recorded in 1985 by Cynthia Fee for the television series.

B.2    Dramatis personae

B.2.1    Jonathan Rockefeller

26    Mr Jonathan Graham Worsley Rockefeller is a scriptwriter, director and producer of theatrical works. During the earlier stages of the events described below Mr Rockefeller was known as Mr Worsley. This was before he married Mr Jones, whose full name is Mr Eugene Wilson Rockefeller Jones.

27    From about February 2015, Mr Worsley commenced regularly using the surname “Rockefeller”, rather than “Worsley” on his written communications. For convenience and to avoid confusion he is referred to as Mr Rockefeller throughout these reasons.

28    From 2003 to 2006, Mr Rockefeller worked for Baz Luhrmann in various of his productions including doing research, design, writing, directing, editing, producing, marketing and advertising. He worked on La Bohème on Broadway, the Chanel No 5 commercial which starred Nicole Kidman, and the films Alexander the Great and Australia.

29    Mr Rockefeller was employed as an Executive Producer at the advertising agency Naked Communications from 2008 to 2011. The team of which he was a member was nominated for a “Cannes Lion” award and won a “Clio Award” during this time.

30    Mr Rockefeller has worked as a screenwriter, including writing the screenplays Satisfaction and Coming of Age. Mr Rockefeller’s production of The Very Hungry Caterpillar Show is both well-known and critically acclaimed.

31    Mr Rockefeller was at relevant times a director of and the sole shareholder in JWR Productions Australia Pty Ltd (JWR Productions). JWR Productions was formerly known as Joey Creative Management Pty Ltd. Mr Rockefeller also had an interest in JWR Productions LLC, a company registered in the United States.

B.2.2    Thomas Duncan-Watt

32    Mr Thomas Duncan-Watt is a professional writer. He has worked as such since 2006 and, more specifically, as a screenwriter since around 2012. He has been a member of the Australian Writers Guild since 2011.

33    Mr Duncan-Watt has written and co-written on well-known comedy series including Good News Week (Australia) and NewsJack (United Kingdom). He has written and co-written animations such as The Deep, Pirate Express, Winston Steinburger & Sir Dudley Ding Dong, Beat Bugs and Dennis the Menace & Gnasher.

B.2.3    Neil Gooding

34    Mr Neil Gooding has worked since 1997 in various capacities on many well-known and critically acclaimed theatre and arena productions.

35    He has received various award nominations for his work as a director. Shows that he has directed have won major awards. He has also received awards and nominations for his work as a producer.

36    In 2014, Mr Gooding received a Chief Glug Award for excellence behind the scenes in Australian musical theatre. His 2014 production of Sweet Charity was nominated for several Helpmann Awards, Sydney Theatre Awards and Green Room Awards and won in many of its categories.

37    Mr Gooding is the sole director of Neil Gooding Productions Pty Ltd.

B.2.4    Matthew Henderson

38    Mr Matthew Henderson has been involved in the business of stage managing, producing and directing live theatre shows since 2002. He has worked within the Australian entertainment industry on many Australian and international theatre productions variously as a producer, co-producer, director, stage manager or assistant. The shows he has worked on include: The Boy From Oz, Fame, Shout!, We Will Rock You, The Lion King, Miss Saigon, High School Musical, Madame Butterfly, Jerry Springer The Opera, Mary Poppins and Aladdin.

39    At the times relevant to the issues in this case, Mr Henderson traded under the business name “Matthew Management”.

B.3    Credibility and reliability

40    The factual findings set out below are based primarily on the contemporaneous documentary evidence and inferences drawn from that evidence and the known or probable facts.

41    In relation to certain contested events, particularly conversations, there were no or few contemporaneous documents which shed light on which account was to be preferred. The parties gave different accounts of a number of conversations. I found Mr Duncan-Watt’s account of those conversations to be significantly more reliable than Mr Rockefeller’s. Mr Duncan-Watt’s accounts were more probable than the accounts given by Mr Rockefeller when assessed against the surrounding events and were more consistent with contemporaneous documentary evidence where such documents were available. His evidence was given in a more objective and less argumentative way. As will become apparent, Mr Rockefeller’s evidence was unreliable in several respects.

42    As Mr Rockefeller’s counsel submitted, it is necessary to put Mr Rockefeller’s often defensive and argumentative evidence into context. It is clear that he was at times emotionally affected. It is also clear that he was hurt by the publication of The New York Times article. I accept those matters and have sought to bring them to account in assessing the reliability of Mr Rockefeller’s evidence. In the end, however, I generally found Mr Rockefeller’s evidence to be unreliable, and Mr Duncan-Watt’s evidence to be reliable. That conclusion is not based on demeanour.

B.4    The development of Thank You For Being a Friend: 2012 to July 2013

43    Mr Duncan-Watt and Mr Rockefeller met in 2006 or 2007. They became close friends. At some point before September 2012, Mr Duncan-Watt and Mr Rockefeller had discussed creating a dramatic parody, including a puppet parody.

44    At a meeting in about September 2012, Mr Duncan-Watt suggested to Mr Rockefeller that they might create a puppet parody of The Golden Girls.

45    Mr Duncan-Watt and Mr Rockefeller commenced developing the concept for Thank You For Being A Friend. The name was derived from the theme song of The Golden Girls television series. The parody Thank You For Being A Friend featured Dorothy, Rose, Blanche and Sophia portrayed by puppets, and introduced a new character, Jeremiah, a gay son of Blanche. The puppets were to be operated by actors or performers whose operation of the puppets would be on stage and therefore seen, and whose facial expressions and voices were integral to the show.

46    Mr Duncan-Watt and Mr Rockefeller had various discussions which resulted in an understanding that they would jointly own copyright in Thank You For Being A Friend, each would contribute 50% of the funds required to create and produce the show, and they would share equally in any profits.

47    Mr Rockefeller began sourcing the puppets to be used in the show in September 2012. The puppets were received in January 2013.

48    Mr Duncan-Watt and Mr Rockefeller agreed to submit Thank You For Being A Friend to the Sydney Mardi Gras Festival in October 2012.

49    Mr Rockefeller prepared a handwritten budget and a contract which the parties signed on 28 October 2012. The contract stated:

This is a contract to specify that Thomas Duncan-Watt and Jonathan Worsley will each individually mount 50% of the costs of “Thank You for Being a Friend” and in return receive 50% of the profits split evenly after all costs, expenses and taxes are paid.

Any additional costs and expenses incurred will be split evenly or the party who mounts the additional funds will receive an additional percentage pro-rata of the funds above and beyond the 50%.

Any future licensing or royalties allocated with “Thank You for Being a Friend” will be paid in a 50/50 split to the intellectual property owners, Thomas Duncan-Watt and Jonathan Worsley.

50    The script development of Thank You For Being A Friend was a collaborative exercise. Mr Duncan-Watt did the majority of the writing. Mr Rockefeller reviewed the draft script and assisted in re-writes. It was Mr Rockefeller’s evidence that he talked regularly with Mr Duncan-Watt in relation to the script, that they met approximately once per week to work on script development and otherwise discussed the project on the telephone. Mr Duncan-Watt gave evidence that he and Mr Rockefeller spent a lot of time talking in person and communicating about the script by email. The script was a joint creation; Mr Duncan-Watt performed the majority of the writing.

51    Thank You For Being A Friend had its debut between 13 and 20 February 2013 at the Comedy Store in Sydney.

52    Mr Rockefeller (JWR) gave an account of a conversation with Mr Duncan-Watt (TDW), around 20 February 2013, as follows:

JWR:    Tom, you have not paid your fair share of the budget. The original agreement was 50:50. You are not paying anything I send to you. We need to go off what we agreed to in our original agreement. Whatever you put in, you get back as a percentage.

TDW:    Yeah, but that’s not really fair now because the show has made a profit, so you should get back what you put in and then it should be 50:50 from there on.

53    Mr Duncan-Watt’s account of the conversation was as follows:

JWR:    The show has made a profit. I paid for more than half of the costs of the show. I should have more like 80% of the profit and the ownership of the show.

TDW:    Why did you do that? We agreed we would both put in half. You never asked me to give you any more money and we agreed we would own the show jointly. Besides, we already knew that ticket sales had covered the rest of our expenses before the show even opened. That’s why I assume you didn’t ask me for more money. If you just paid some of our invoices off with your own money without telling me – knowing the money is coming anyway - it doesn’t mean you get to own more of the show. Why are you being so stupid? Are you trying to rip me off?

JWR:    OK, yes we do own the show jointly, but I should recoup my costs out of the profits.

TDW:    Of course you should.

54    Mr Duncan-Watt and Mr Rockefeller ultimately agreed that Mr Rockefeller would get back what he put in but that the profit would be split equally.

55    Between about February and July 2013, Mr Duncan-Watt worked on improvements to the script, making numerous alterations. He consulted Mr Rockefeller from time to time.

B.5    Early discussions with Mr Gooding and Mr Henderson; Mr Rockefeller’s misrepresentation to Mr Duncan-Watt: January 2013 to July 2013

56    Mr Rockefeller informed Mr Henderson in late January 2013 that he and Mr Duncan-Watt had produced Thank You For Being A Friend. Mr Rockefeller sent a copy of the script to Mr Henderson by email on 18 April 2013. Mr Henderson and Mr Rockefeller had a further conversation about Mr Henderson’s participation in producing the show in late April 2013, and Mr Henderson contacted Mr Gooding about his potential involvement in May 2013.

57    By at least 21 May 2013, Mr Rockefeller was in discussions with Mr Gooding and Mr Henderson about the possibility of licensing to them the performing rights to Thank You For Being A Friend.

58    At some point between April and June 2013, Mr Rockefeller informed Mr Duncan-Watt that Mr Gooding and Mr Henderson were interested in acquiring the rights to produce the show. At that time, Mr Duncan-Watt knew Mr Gooding to be an Australian theatrical producer and Mr Henderson to be an experienced Australian stage manager who wanted to do more producing. He was keen for them to produce the show.

59    Mr Duncan-Watt stated that Mr Rockefeller informed him, around June 2013, that Mr Gooding was insisting on the licensing rights for the show coming through a single company. Mr Duncan-Watt’s account of one of the conversations was that Mr Rockefeller said:

Neil [Gooding] won’t deal with both of us – he insists on the rights coming through a single company. If we want to do the deal, you and I will have to assign all of our rights in the show to JWR Productions, and then I’ll license the rights to Neil through that company.

60    Mr Gooding denied ever raising as an issue with Mr Rockefeller a desire to deal with only one company. It was uncontentious that Mr Gooding never said he would only deal with one company.

61    Although he was resistant to the idea of assigning his rights to JWR Productions, Mr Duncan-Watt wanted the show to go to experienced producers and was prepared to assign his rights to JWR Productions if that was required to achieve such a result.

62    In his evidence, Mr Rockefeller emphatically denied having a conversation in which he stated to Mr Duncan-Watt that Mr Gooding had insisted on any licence agreement being made with a single company. Mr Rockefeller agreed that he discussed with Mr Duncan-Watt assigning copyright to Thank You For Being A Friend to his company, JWR Productions (then Joey Creative Management Pty Ltd), but insisted this was in line with industry practice to protect individuals from personal liability and because Mr Duncan-Watt was not paying his fair share of expenses. Mr Rockefeller stated that he therefore threatened to pull out unless Mr Duncan-Watt assigned his copyright to Mr Rockefeller’s company.

63    For the reasons which follow, I do not accept Mr Rockefeller’s denial that he stated to Mr Duncan-Watt that Mr Gooding had insisted on any licence agreement for Thank You For Being A Friend being made with a single company.

64    At the relevant time, Mr Duncan-Watt had been consulting Mr Bruce Pulsford, a lawyer at the Australian Writers’ Guild. Mr Duncan-Watt wrote an email to Mr Pulsford on 1 July 2013, referring to a meeting he and Mr Pulsford had on 28 June 2013. The email included:

… Neil Gooding - is the right fit, but Jonathan (my co-creator) is still adamant that they only want to deal with one production company [Joey Creative Management Pty Ltd] …

65    Mr Duncan-Watt’s email to Mr Pulsford of 1 July 2013 also indicated that the proposed amendments to the “Writers Assignment Agreement” should contain an extra clause which Mr Pulsford had recommended, to the effect that, if a licence agreement with Mr Gooding and Mr Henderson was not achieved within 3 months, the rights given by Mr Duncan-Watt to Joey Creative Management Pty Ltd would revert to Mr Duncan-Watt. This recommendation became cl 10 of the “Writers Assignment Agreement”, executed a little over a week later. Clause 10 was in the following terms:

10.    This contract will automatically terminate if, within the date which is 3 months from the date of this contract, a legally binding agreement in writing is not in existence between the Production Company (as licensor) and Matthew Management and Neil Gooding Productions Pty Limited (as licensee) the minimum terms of which have been already consented by the writer.

66    It was submitted for Mr Rockefeller that a simple explanation for Mr Duncan-Watt’s words in his email of 1 July 2013 to Mr Pulsford was that Mr Duncan-Watt was mistaken or confused about what Mr Rockefeller had said. That is most unlikely for a number of reasons.

67    First, Mr Duncan-Watt’s email makes it clear that his understanding of what Mr Rockefeller had said came from more than one conversation: the email states that Mr Rockefeller was “still adamant”. Mr Duncan-Watt was cross-examined on his email and did not waiver from the proposition that Mr Rockefeller had insisted that Mr Gooding would only deal with one licensor. I accept Mr Duncan-Watt’s evidence.

68    Secondly, the fact that Mr Rockefeller made the misrepresentation is consistent with Mr Duncan-Watt’s desire to insert cl 10 into the Writers Assignment Agreement, providing for the rights to revert to him if no agreement were reached with Mr Gooding and Mr Henderson.

69    Thirdly, the probabilities strongly favour that Mr Duncan-Watt was giving a frank account of relevant events in order to obtain the best possible advice. In July 2013, there was no dispute between Mr Rockefeller and Mr Duncan-Watt of any significance and Mr Duncan-Watt could not possibly have foreseen the events which would later eventuate.

70    When Mr Rockefeller was asked in cross-examination why Mr Duncan-Watt would possibly lie to his lawyer on 1 July 2013, Mr Rockefeller stated: “Mr Duncan-Watt does have a tendency to manipulate things to be put forward in his better scenarios”. There was nothing about Mr Duncan-Watt’s evidence or the manner in which it was given, nor was there anything in the contemporaneous documents, to suggest any “tendency [on the part of Mr Duncan-Watt] to manipulate things”. I do not accept that Mr Duncan-Watt was otherwise than truthful in what he said to his lawyer in his email of 1 July 2013 and in giving his evidence.

71    Fourthly, the fact that Mr Rockefeller made the misrepresentation is supported by:

(1)    Mr Gooding’s evidence of a conversation with Mr Duncan-Watt in October 2013 which confirmed that Mr Rockefeller had misrepresented Mr Gooding’s position with respect to wishing to deal with only one licensor – see: [95] to [99] below;

(2)    Mr Duncan-Watt’s email of 21 October 2013 – see: [100] to [104] below;

(3)    the events in October and November 2013 referred to below, culminating in the signing of a new licence agreement on 25 November 2013 which included Mr Duncan-Watt as a licensing party – see: Sections B.10 and B.11 below.

72    Having seen Mr Duncan-Watt’s and Mr Rockefeller’s cross-examination on this topic, but relying principally on the contemporaneous documents, I have no hesitation in concluding that Mr Rockefeller lied to Mr Duncan-Watt in April to June 2013 by stating that Mr Gooding was insisting on dealing with one production company when licencing Thank You For Being A Friend. Mr Rockefeller saw the 1 July 2013 email from Mr Duncan-Watt to Mr Pulsford before swearing his affidavit in reply but continued to deny that he had any such conversation with Mr Duncan-Watt. This fact, and Mr Rockefeller’s continued denial of making the misrepresentation in his affidavit evidence and the evidence he gave in cross-examination, reflect poorly on Mr Rockefeller’s credibility.

73    Contrary to Mr Rockefeller’s evidence and submissions, there was nothing which could warrant the conclusion that Mr Duncan-Watt assigned copyright to Mr Rockefeller because of “industry practice” or any disparity in financial contribution as between him and Mr Rockefeller.

B.6    The 9 July 2013 Writers Assignment Agreement

74    Thank You For Being a Friend’s second run occurred at the Darlinghurst Theatre in Sydney from about 2 to 7 July 2013.

75    The “Writers Assignment Agreement” was entered into on 9 July 2013. Both Mr Rockefeller and Mr Duncan-Watt assigned copyright in Thank You For Being A Friend to Mr Rockefeller’s company, JWR Productions (then called Joey Creative Management Pty Ltd). Under the agreement each of them was to receive 50% of the royalties from future productions of Thank You For Being A Friend and to be credited as co-authors wherever it played.

76    I am satisfied that Mr Duncan-Watt agreed to enter into this agreement and assign copyright to JWR Productions because he wanted to secure Mr Gooding and Mr Henderson to produce the show, and because he understood from the false representation made to him by Mr Rockefeller that Mr Gooding insisted on dealing with only one licensor.

77    Mr Duncan-Watt would not have assigned copyright to JWR Productions if the false representation had not been made to him by Mr Rockefeller. Mr Duncan-Watt’s desire to include a clause for the rights to revert to him if no licence agreement was entered into within three months indicates a genuine concern about assigning copyright. This conclusion is also supported by the matters set out in Sections B.9 to B.11 below.

B.7    The 17 July 2013 Licence Agreement

78    On 12 and 17 July 2013, a “Licence Agreement” dated 18 June 2013 was executed by:

(1)    the “Licensor”, JWR Productions (then Joey Creative Management Pty Ltd); and

(2)    the “Originating Producers”, Matthew Management and Neil Gooding Productions.

79    The chapeau included:

… The Licencor licenses to the Originating Producers the right to produce and present the dramatico-musical work entitled THANK YOU FOR BEING A FRIEND (the “Work”) by JONATHAN WORSLEY and THOMAS DUNCAN-WATT (“Authors”) for theatrical productions upon the following terms and conditions:

80    Clause 2 provided:

2. Scope of Originating Producers’ Licence

The Licensor hereby licences to the Originating Producers the right in the Territory to the originating production of the Work on the Theatrical Stage.

81    The term “Territory” was defined in cl 1 as “The World”.

82    Clause 5.4 provided (emphasis in original):

5.4    The Licensor agrees to deliver to Originating Producers the four existing puppets that have been built for the Work. The Originating Producers agree to pay the Licensor the sum of $4000 (plus GST if applicable) in consideration for these. Payment shall be made within Fourteen (14) days of a valid Tax Invoice being submitted to the Originating Producers by The Licensor.

83    Clause 6 dealt with the form of billing and credits. It provided (emphasis in original):

6. Billing and Credits

Originating Producers agree that every billing of the Work and the Authors shall appear on all programs, house boards and displays in the following manner:

Thank You For Being A Friend

By Jonathan Worsley & Thomas Duncan-Watt

The Authors to receive billing credit in all forms of publicity and advertising under the control of the Originating Producers, wherever and whenever the title of the Work appears.

In addition, the Originating Producers agree that the following billing will appear in production programs:

Puppets designed by Joey Creative

Original Production produced by Jonathan Worsley

84    Clause 7 dealt with payments, royalties and accounting.

85    Clause 13 was headed “Reservation of Rights” and provided:

The Licensor reserves for its use and disposition in the Territory and throughout the world at any and all time, all rights of any kind or nature other than the rights specifically licensed to Originating Producers hereunder, whether such rights are now known or shall hereafter come into existence, and whether such rights are of a competing nature with the rights licensed hereunder. The said reserved rights shall include, but shall not be limited to, all motion picture, synchronisation, broadcast, recording, television, radio, stage (other than the first-quality stage), electrica[l], or mechanical reproduction, commercial tie-in and publication rights of all kinds. The Licensor shall have the right to use and exercise and to permit others to use and exercise such reserved rights at any time, free from any claim or interference by the Originating Producers.

86    By cl 14, JWR Productions granted to Neil Gooding Productions and Matthew Management “the first right of refusal to produce, or invest, in any future productions of the Work in the Territory specified in this License, or throughout the World”.

87    The governing law of the agreement was that of New South Wales: cl 24.

B.8    Payment for puppets: July 2013 to November 2013

88    On 29 July 2013, Neil Gooding Productions and Matthew Management paid JWR Productions $4,400 for the cost of the four puppets. The puppets were delivered to them in accordance with cl 5.4 of the Licence Agreement.

89    In his affidavit, Mr Duncan-Watt gave the following account of a conversation with Mr Rockefeller in July or August 2013:

TDW:    Are we selling the puppets to Neil [Gooding] and Matt [Henderson] as part of the deal?

JWR:    I wasn’t able to get any extra money from them, they will be included free as part of the deal.

90    Mr Duncan-Watt then gave an account of a telephone conversation with Mr Henderson which occurred on 2 November 2013 to the following effect:

MH:    I’m starting to question whether Jonathan has been entirely truthful in his business dealings with us. Are those puppets we’ve bought really worth $4000?

TDW:    You bought the puppets for $4000?

MH:    Yes, the Golden Girls puppets.

91    Mr Duncan-Watt said he rang Mr Rockefeller and had the following conversation:

TDW:    Matt Henderson just told me they paid you $4000 for the puppets. You told me we’d given them away for free.

JWR:    I was waiting to do the accounts for the whole deal, I wanted to see if there was any money left over to surprise you with a profit.

92    Mr Duncan-Watt’s partner, Mr Policarpio, gave evidence that he was woken by a late night phone call from Mr Duncan-Watt on the same day, when Mr Duncan-Watt told him that Mr Rockefeller had sold the puppets without Mr Duncan-Watt’s knowledge. Mr Policarpio made a journal entry at the time which confirmed the conversation.

93    Mr Rockefeller gave the following account of a conversation with Mr Duncan-Watt (which Mr Rockefeller considered occurred shortly after 14 November 2013):

TDW:    Speaking of money, I haven’t received my half of the proceeds for the puppets yet. Neil [Gooding] said he sent it to you and it was the first I’ve heard about it.

JWR:    You and I agreed to the minimum terms and I negotiated a better deal with more money for us both. Why exactly are you complaining?

TDW:    Where’s my money? I don’t have my half yet.

JWR:    If you will recall on the first show I overpaid you by two thousand dollars and it took six months to get that money back from you. Once we finalise the reconciliations you will be paid your share. I think you conveniently forget how much more I’ve paid out of my pocket than you have. Remember – the whole entire reason we went into the assignment agreement in the first place was because you did not want to pay for legal fees, insurance and other costs. You don’t take any responsibilities – you put them all on me – yet you want all the rewards.

94    I accept Mr Duncan-Watt’s account of the conversation. Mr Rockefeller later paid Mr Duncan-Watt his share of the sale price of the puppets.

B.9    Conversation between Mr Duncan-Watt and Mr Gooding on 18 October 2013

95    Mr Duncan-Watt and Mr Gooding spoke by telephone in October 2013. Although Mr Duncan-Watt stated in his affidavit that this telephone call was with both Mr Gooding and Mr Henderson, I conclude that he was honestly mistaken in recalling Mr Henderson as having been present. Mr Gooding’s clear recollection was that Mr Henderson was not present during this call. Mr Henderson did not refer to the conversation in his affidavit. The fact that the conversation was only between Mr Duncan-Watt and Mr Gooding is consistent with Mr Duncan-Watt’s email of 21 October 2013 referred to below.

96    Mr Duncan-Watt’s account of the conversation was as follows:

TDW:    The only reason I assigned my rights in the show to Jonathan’s company was that he told me you guys would only deal with one licensor.

NG:    That’s not true. We could just as easily have an agreement with two licensors. We do that all the time.

TDW:    Is it too late to change it?

NG:    No, we can get a new version drawn up.

97    Mr Gooding’s evidence in cross-examination included:

… And then Mr Duncan-Watt in that phone call said to me that Mr Rockefeller had told him that Matthew [Henderson] and I would not sign the licence with the two of them as licence – as co-writers and that the rights had to be bundled into one company.

98    Mr Gooding confirmed that he had not said to Mr Rockefeller that he and Mr Henderson would not sign a licence with two licensors. He stated he had licensed a number of shows with writers and almost always done so “with multiple writers in their own capacity”.

99    Mr Gooding confirmed that he said to Mr Duncan-Watt in the conversation in October 2013 that he and Mr Henderson could equally have had an agreement with two licensors. He confirmed that Mr Duncan-Watt asked if it was too late to change the agreement. Mr Gooding confirmed that he said to Mr Duncan-Watt that he could have a new version drawn up.

100    The substance of this conversation between Mr Duncan-Watt and Mr Gooding was confirmed by a contemporaneous email sent by Mr Duncan-Watt on 21 October 2013 to Mr Tom Hillyard, a lawyer at the Australian Writers’ Guild. In that email, Mr Duncan-Watt described the history behind the Licence Agreement in the following terms (emphasis and errors in original):

Basically in January/February, the person I co-created the show ‘Thank You For Being a Friend’ with, Jonathan Worsley (and the owner of half the copyright) told me and Bruce Pulsford that in order to sell this show to new producers (Neil Gooding and Matthew Henderson) these new producers were insisting they would only sign a contract with a single Pty Ltd company. Based on that fact (an[d] in consultation with Bruce, to whom Jonathan also reiterated this ‘condition’ to) we agreed I would sign a writer’s agreement (attached), assigning my copyright to his production company on the proviso that the sale would go through and that the final contract met certain key criterion.

101    The email then described how Mr Duncan-Watt had found out about Mr Rockefeller’s misrepresentation from Mr Gooding:

On Friday last week [namely 18 October 2013], however, I learned – while meeting with one of the new producers, Neil [Gooding] regarding rewrites – that this ‘pty ltd company’ condition was a complete fabrication by Jonathan, and that not only did the new producers (both Neil and Matthew [Henderson]) never suggest they wouldn’t sign a contract with an individual writer (me), they would prefer to have my name on the contract!

102    Mr Duncan-Watt then gave in the email an account of a conversation he had with Mr Rockefeller:

Since I only found this out on Friday, I immediately contacted Jonathan [Rockefeller] about it, informing him that – for whatever reason – he misled both myself and Bruce [Pulsford] in his dealings. As a result of this information coming to light both myself and the new producers are keen that I be on the contract, so I need Bruce’s help on what the best procedure is. Jonathan has also grudgingly agreed to this process so long as I take care of any rewrites to the contract!

103    Mr Duncan-Watt then recorded that Miriam (who worked at the Australian Writers’ Guild) had suggested three possible courses of action, and asked for Mr Hillyard’s advice in relation to those suggestions:

So, basically what Miriam suggested was that there were a couple of ways of dealing with this smartly and efficiently. What I need is Bruce’s advice and help on whether I need to:

   1.    ‘Rescind’ the writer’s agreement I have with Jonathan?

2.    Simply do an addendum to the existing contract adding me as one of the people signing it?

   3.    Rewrite the contract?

Then I just need help execut[ing] this as simply and painlessly as possible. I already agree to everything in the final contract as it exists currently (except for the credit which Jonathan has agreed to change back to ‘By Thomas Duncan-Watt & Jonathan Worsley’ period), bar the absence of my name on the contract, rather than assigning any rights to Jonathan’s production company via a writer’s agreement.

104    I accept that the October 2013 conversation between Mr Duncan-Watt and Mr Gooding occurred in accordance with the evidence of Mr Duncan-Watt and Mr Gooding, as confirmed by Mr Duncan-Watt’s contemporaneous email. Based on the email, I conclude that it occurred on 18 October 2013.

B.10    Mr Rockefeller agreed to execute a new Licence Agreement, with Mr Duncan-Watt as a licensor

105    Mr Rockefeller stated in his first affidavit that – at the end of a conversation concerning his non-payment to Mr Duncan-Watt of a share of the proceeds from the sale of the puppets (which he incorrectly considered occurred on 14 November 2013) – the following was said:

TDW:    I want my interest back.

JWR:    You’ve assigned it away. You didn’t want it. If you wanted to retain it you would have paid 50% of everything and lived up to your responsibilities – but you haven’t and don’t want to. I would never reverse the assignment agreement with you because you don’t pay for anything and don’t honour your promises.

106    The contemporaneous documents indicate that the conversation with respect to the sale of the puppets occurred on or about 2 November 2013.

107    Mr Duncan-Watt stated that, after his conversation with Mr Gooding on 18 October 2013, he had a conversation with Mr Rockefeller in which he understood Mr Rockefeller to have agreed to sign a new licence agreement which named both Mr Duncan-Watt and Mr Rockefeller as the licensors. Mr Duncan-Watt thought this occurred in November 2013. For reasons I will come to, I conclude that such conversations occurred on 18 October 2013 and possibly in a further conversation or conversations on or shortly before 3 November 2013. Mr Duncan-Watt said the conversation was in the following terms:

TDW:    Neil Gooding just told me that they’d never insisted on only signing with one proprietary limited company to do the license agreement? Why did you tell me they had?

JWR:    That’s not what they told me.

TDW:    Well, now it’s clear there’s no reason to assign rights to your company, you won’t have any objections to us signing a new agreement naming me as co-licensor then, right?

JWR:    Fine, as long as you take care of any legal fees.

TDW:    That’s fine.

108    I accept the conversation occurred substantially in those terms. I conclude the conversation occurred at least on 18 October 2013. That is consistent with the email of 21 October 2013. It may also have been repeated in early November 2013.

109    In his second affidavit, Mr Rockefeller denied the conversation was in the terms just described and put forward the following account of the conversation:

TDW:    I want to sign the licensing agreement.

JWR:    Signing won’t make any material difference. You do understand that the copyright is in the company and signing an agreement won’t have any effect on the ownership of the copyright.

TDW:    But I co-wrote it. I think I should have signed it.

JWR:    But you don’t own the copyright.

TDW:    Then, can I get it back?

JWR:    No.

110    I do not accept that a conversation occurred in those terms. I conclude that Mr Rockefeller gave that evidence solely because he considered it would advance his case.

111    On Sunday, 3 November 2013, Mr Duncan-Watt wrote an email to Mr Gooding and Mr Henderson stating that he and Mr Rockefeller had come together over the weekend and agreed to two amendments to the Licence Agreement. The first was to the order of credits and the second was that Mr Duncan-Watt would now also be a signatory to the Licence Agreement.

112    Mr Duncan-Watt recorded in the email that his lawyer suggested including a clause stating that the new contract with all four signatories would supersede any previous contracts. Consistently with his conversation with Mr Gooding on 18 October 2015, this email referred to Mr Duncan-Watt’s understanding that Mr Gooding and Mr Henderson were amenable to both revisions. That understanding was evidently correct: the proposed amendments were implemented by Mr Gooding without any issue being raised. Mr Duncan-Watt’s email of 3 November 2013 is consistent with the 21 October 2013 email and with Mr Gooding’s evidence.

113    On 14 November 2013, Mr Gooding sent to Mr Duncan-Watt and Mr Rockefeller a revised licence agreement. This included as licensors, both Joey Creative Management Pty Ltd (now JWR Productions) and Mr Duncan-Watt. It also made changes to cl 6 dealing with “billing and credits”. It included a new cl 26 providing that “all previous signed contracts will be superseded”.

114    Having received from Mr Gooding the revised Licence Agreement on 14 November 2013, Mr Duncan-Watt suggested further minor changes by email sent on 15 November 2013. Mr Rockefeller wrote nothing to suggest that the revised Licence Agreement was not what had been agreed, or that he disputed it should be executed. A further draft was circulated by Mr Gooding by an email dated 20 November 2013.

115    I conclude that Mr Rockefeller agreed with Mr Duncan-Watt that he would execute a new licence agreement which provided for both Mr Duncan-Watt and JWR Productions to be the licensors. I conclude that Mr Rockefeller, on behalf of JWR Productions, represented that Mr Duncan-Watt’s original assignment of copyright to JWR Productions would be accepted as ineffective by reason of the manner in which it had been procured by Mr Rockefeller (namely by a knowingly false representation), or that copyright would be assigned by JWR Productions back to Mr Duncan-Watt for the same reason. This occurred through the conversations and conduct between 18 October 2013 and 3 November 2013, set out above.

116    As will next be seen, Mr Rockefeller executed the 25 November 2013 Licence Agreement without demur. There was no contemporaneous documentary record which suggested that Mr Rockefeller did not agree to all aspects of the 25 November 2013 Licence Agreement.

B.11    The 25 November 2013 Licence Agreement

117    In his first affidavit, Mr Rockefeller referred to a “revised Licence Agreement which appears on its face to have been signed by all of the parties”. Mr Rockefeller stated in that affidavit that he had no recollection of ever signing that document and that he denied executing it in Mr Gooding’s presence.

118    Mr Rockefeller’s opening submissions stated that there was “some controversy” about the genesis and execution of this new Licence Agreement.

119    When cross-examined, Mr Rockefeller readily accepted that it was his signature on the new Licence Agreement, and ultimately accepted that he had signed the document on or around 25 November 2013. The “controversy” was thus largely if not entirely quelled.

120    It was submitted by Mr Rockefeller that the genesis of the 25 November 2013 Licence Agreement was Mr Duncan-Watt’s concerns with respect to the form of the credits for Thank You For Being A Friend. This submission was made in aid of Mr Rockefeller’s case that the 25 November 2013 Licence Agreement did not replace the July 2013 Licence Agreement and that Mr Duncan-Watt had nothing to licence because he had already assigned copyright to JWR Productions.

121    The “genesis” of the 25 November 2013 Licence Agreement could be said to have been the form of credits only in the limited sense that the first issue to arise between Mr Duncan-Watt and Mr Rockefeller was one concerning the form of credits. On 9 September 2013, Mr Rockefeller (then Mr Worsley) wrote an email to Mr Gooding and Mr Henderson confirming that he and Mr Duncan-Watt had “revised the way that we’re billing ourselves.” Mr Rockefeller confirmed that this would not affect anything in the contract other than the order of their names. This email followed a conversation between Mr Rockefeller and Mr Duncan-Watt in which they agreed that Mr Duncan-Watt’s name would go first in the credits. It was not proposed to replace the July Licence Agreement at that stage. Rather, in the email of 9 September 2013, Mr Rockefeller proposed that the parties agree to an addendum to the July Licence Agreement.

122    However, a second issue had arisen by 18 October 2013. As set out above, Mr Duncan-Watt had discovered that he had been misled by Mr Rockefeller’s false representation into thinking that he had no real option other than to assign copyright to JWR Productions. Mr Duncan-Watt had learned that, contrary to Mr Rockefeller’s earlier representations, it had not been a requirement of Mr Gooding that a licence agreement be entered into with a single licensor. Mr Duncan-Watt raised this with Mr Rockefeller and consulted a lawyer from the Australian Writers’ Guild. He received advice which ultimately resulted in the parties entering into the 25 November 2013 Licence Agreement.

123    Under the 25 November 2013 Licence Agreement, Mr Duncan-Watt was one of the licensors, together with JWR Productions (then Joey Creative Management). Clause 6 was changed (see [83] above) and now provided:

6. Billing and Credits

Originating Producers agree that every billing of the Work and the Authors shall appear on all programs, house boards and displays in the following manner:

Thank You For Being A Friend

Conceived and Written by Thomas Duncan-Watt & Jonathan Worsley

The Authors to receive billing credit on Posters, DL Flyers and websites under the control of the Originating Producers.

In addition, the Originating Producers agree that the following billing will appear in production programs and any printed collateral where any credits appear:

Originally produced by Jonathan Worsley & Thomas Duncan-Watt

Puppets designed by JOEY

124    Clause 26 was added. It provided that all previous contracts between the parties were superseded:

26. Superseding Contract

It is agreed between the parties, that upon the full execution of this contract, all previous signed contracts will be superseded, and this will be the only valid contact between the parties in relation to the production.

125    Mr Rockefeller submitted that cl 26 had no practical or legal effect:

(1)    First, he submitted that the clause only bound the parties to “this” contract and had no effect on other contracts to which the same parties were not privy.

(2)    Secondly, he submitted that Mr Duncan-Watt had assigned his rights to JWR Productions and that those rights had not been assigned back to him. Mr Duncan-Watt had nothing of legal consequence to give. It was submitted that “[h]is inclusion on the licence agreement may have meant something to him (and seemingly quite a lot) but it was redundant in any relevant sense”. Mr Rockefeller submitted that the 25 November 2013 Licence Agreement could not operate as an assignment of copyright back from JWR Productions to Mr Duncan-Watt under the Copyright Act 1968 (Cth).

126    For the reasons which follow, I reject these contentions.

127    As to the first contention, each of the three parties to the 9 July 2013 Licence Agreement executed the 25 November 2013 Licence Agreement. The 25 November 2013 Licence Agreement introduced a fourth party, Mr Duncan-Watt. It could not have been clearer that the parties’ intention, objectively ascertained from the words they employed, was that Mr Duncan-Watt was one of the licensors.

128    The opening words of the 25 November 2013 Licence Agreement expressly stated that Mr Duncan-Watt was one of the two licensors, defined as the “Licensors”. Clause 1 then confirmed that the “Licensors [one of whom was Mr Duncan-Watt] represent[ed] that they have the right to licence the production and presentation of the Work”. This representation was repeated in cl 10.

129    Clause 23 had previously provided for all royalty payments to be made to Joey Creative Management (JWR Productions). This was changed to provide that payments were to be made equally to the two “Licensors”, Joey Creative Management (JWR Productions) and Mr Duncan-Watt:

23. Notices

Notices to the Originating Producers shall be sent to Neil Gooding Productions Pty Ltd [address]. All payments (can be made by wire transfer) and statements due to the Licensors hereunder shall be addressed to JOEY CREATIVE MANAGEMENT PTY LTD (ABN 83 130 449 428) [JWR PRODUCTIONS] [address] and THOMAS DUNCAN-WATT (ABN 83 534 482 677). Payments to the Licensors shall be split 50% to JOEY CREATIVE MANAGEMENT PTY LTD and 50% to THOMAS DUNCAN-WATT.

130    Mr Duncan-Watt requested this alteration in his email of 15 November 2013.

131    The new clause 26 (“Superseding Contracts”) must be read against the factual context in which the new Licence Agreement came into existence. The contract came into existence because the parties had discovered that Mr Rockefeller had, through a knowingly false representation, secured for the benefit of his company an assignment of Mr Duncan-Watt’s copyright. The parties wanted to undo that wrongdoing.

132    Clause 26, understood in the context of the circumstances known to the parties, and in context of the agreement as a whole, was objectively intended to apply both to the 9 July 2013 Licence Agreement (between JWR Productions, Neil Gooding Productions and Mr Henderson) and to the Writers Assignment Agreement (between JWR Productions, Mr Rockefeller and Mr Duncan-Watt). If cl 26 was intended to refer only to the 9 July 2013 Licence Agreement it would not have referred to “all previous signed contracts”, it would have referred only to the previous Licence Agreement.

133    As to the second contention, Mr Rockefeller relied upon s 196 of the Copyright Act which provides that copyright is personal property, transmissible by – amongst other things – assignment. Subsection 196(3) provides:

An assignment of copyright (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor.

134    Mr Rockefeller submitted that the 25 November 2013 Licence Agreement did not satisfy the requirements of s 196(3) of the Copyright Act, in that it was not an assignment in writing, signed by or on behalf of the assignor.

135    The better view of events is that the purported assignment of copyright by Mr Duncan-Watt to JWR Productions under the “Writers Assignment Agreement” was voidable by Mr Duncan-Watt, it having been procured by Mr Rockefeller’s fraud – see: Derry v Peek (1889) 14 App Cas 337; Civil Service Co-operative Society of Victoria Ltd v Blyth (1914) 17 CLR 601 at 609 - 610. Mr Duncan-Watt rescinded the assignment to JWR Productions, as he was entitled to do – see: Hunter BNZ Finance Ltd v CG Maloney Pty Ltd (1988) 18 NSWLR 420. That rescission was unequivocally communicated by Mr Duncan-Watt’s conduct in entering into the 25 November 2013 Licence Agreement under which Mr Duncan-Watt was a joint licensor of the rights – see: Heydon on Contract at [31.190].

136    An alternative view is that the proper construction of the 25 November 2013 Licence Agreement is that JWR Productions impliedly assigned back to Mr Duncan-Watt the copyright Mr Duncan-Watt had assigned to it under the Writers Assignment Agreement. The implication is necessary to give the contract business efficacy. The terms of the 25 November 2013 Licence Agreement made it clear that the parties’ intention was for both JWR Productions and Mr Duncan-Watt to be the “Licensors”. This only made sense if Mr Duncan-Watt had copyright to licence. Clauses 1, 10 and 23 reveal that the implication is so obvious it goes without saying. The contract is a non-sense without the implication.

137    On this alternative view, if the assignment of copyright from Mr Duncan-Watt to JWR Productions was not rescinded, that company assigned copyright back to Mr Duncan-Watt, and the 25 November 2013 Licence Agreement is sufficient “writing” reflecting the assignment for the purposes of s 196(3). It is well-established that documents which do not in express terms assign copyright, or identify the subject matter of the assignment, can suffice for the purposes of a provision such as s 196(3): E W Savory Ltd v World of Golf Ltd [1914] 2 Ch 566; Greenfield Products Pty Ltd v Rover Scott Bonnar Ltd (1990) 95 ALR 275 at 280.

138    In any event, JWR Productions would have been estopped from denying that Mr Duncan-Watt was a joint licensor under the 25 November 2013 Licence Agreement, as a joint holder of copyright, with an entitlement to 50% of the payments required to be made by the “Originating Producers” as licensees.

139    All the elements of a common law estoppel by convention were made out. Where parties to a contract conduct themselves on the basis of an assumed state of affairs – including that a contract has a particular effect or its terms have a particular meaning – on the faith of which each to the others’ knowledge acts in the conduct of their affairs, they are bound by that assumed state of affairs (or understanding or interpretation) if it would be unconscionable or inequitable to allow departure from it: Thompson v Palmer (1933) 49 CLR 507; Grundt v Great Boulder Proprietary Gold Mines Limited (1937) 59 CLR 641; Con-Stan Industries of Australia Pty Ltd v Norwich Winterthur Insurance (Australia) Ltd (1986) 160 CLR 226.

140    The parties adopted a common understanding of that which governed their relations in circumstances which would render it unjust to allow departure from that understanding. The parties conducted themselves on the basis that Mr Duncan-Watt was the joint holder of copyright in Thank You For Being A Friend and that he was entitled to 50% of the payments due under the 25 November 2013 Licence Agreement.

141    It would be unconscionable to allow departure from that common assumption. Mr Duncan-Watt would not have let the matter rest if Mr Rockefeller had denied that Mr Duncan-Watt was the joint owner of copyright, rather than executing for JWR Productions an agreement which necessarily implied that Mr Duncan-Watt was the joint holder of copyright and proceeding to deal with all parties on that basis – see, for example: [224], [229] and Section B.29 below, particularly [240] to [242]. Mr Duncan-Watt would have taken action to protect his position, for example by seeking a declaration that the Writers Assignment Agreement had been rescinded. That inference arises from the facts outlined above, particularly Mr Duncan-Watt seeking legal advice immediately after he became aware of Mr Rockefeller’s wrongdoing – see: in particular, Section B.9 above.

B.12    Thank You For Being A Friend is revised and finalised: November and December 2013

142    During November 2013, Mr Duncan-Watt made revisions to the script for Thank You For Being A Friend. Some revisions were made as a consequence of suggestions from Mr Gooding and Mr Henderson. The revisions were approved by Mr Rockefeller.

143    Mr Rockefeller stated that he and Mr Duncan-Watt “went through a process of amending the script” of Thank You For Being A Friend and stated that this was a “very collaborative process” between Mr Duncan-Watt and himself. I am satisfied that the revisions were written almost entirely by Mr Duncan-Watt and approved by Mr Rockefeller.

144    The set for Thank You For Being A Friend had been constructed by December 2013 and the show was in rehearsals. The final version of the script for Thank You For Being A Friend was completed on around 12 December 2013.

B.13    Thank You For Being A Friend is performed from January 2014

145    Thank You For Being A Friend was performed at the Theatreworks in Melbourne in January 2014. In February 2014 it was performed at the Seymour Centre in Sydney as an official Mardi Gras festival event. It was performed on subsequent occasions and attracted positive reviews.

B.14    Mr Rockefeller moved to New York in June 2014

146    Mr Rockefeller moved to New York in June 2014. According to Mr Duncan-Watt, Mr Rockefeller said to him in 2014, during a telephone conversation:

I wish we had never signed the agreement with them now that I have the money and contacts in New York. I could produce the show here myself.

147    Mr Rockefeller denied saying this but agreed that he said:

They aren’t doing well enough with the show overseas. I could do it much better from here.

B.15    Mr Duncan-Watt commences work on Mr Rockefeller’s novel: June to September 2014

148    On 19 June 2014, Mr Rockefeller gave to Mr Duncan-Watt a synopsis of a proposed novel, then with the title Blood, Sweat and Perfume. It was later renamed No. 5½. It was based on a screenplay written by Mr Rockefeller called Satisfaction.

149    The script for Satisfaction was an auto-biographical story of Mr Rockefeller’s life and career experiences working with Baz Luhrmann. Mr Rockefeller described Satisfaction as being based on his experiences “working with Baz on La Bohème and on his Chanel No. 5 advertising commercial which featured Nicole Kidman”. Mr Rockefeller had worked on writing Satisfaction for about 10 years and had prepared 10 versions of the script.

150    A revised synopsis of Blood, Sweat and Perfume was sent to Mr Duncan-Watt on 28 June 2014.

151    Mr Duncan-Watt began writing the novel in July 2014. The arrangement was that Mr Duncan-Watt would write the novel inspired by Mr Rockefeller’s material, Mr Duncan-Watt and Mr Rockefeller would “plot it” together, and Mr Rockefeller would review and comment on what Mr Duncan-Watt had written. Mr Rockefeller and Mr Duncan-Watt reached an agreement, orally, that Mr Duncan-Watt was to be paid for his work, that copyright would be jointly owned and that both would be credited as authors.

152    On 5 December 2014, Mr Rockefeller sent to Mr Duncan-Watt a revised synopsis of what was by this time called No. 5½. As described below, a written agreement was put in place in late December 2014.

B.16    Neil Gooding Productions and Mr Henderson execute a “Booking Services Agreement” and have a discussion with Mr Rockefeller: September and December 2014

153    On 1 September 2014, Mr Gooding sent an email to Mr Rockefeller stating:

Matt [Henderson] and I are starting to talk seriously with a US producer and general manager who is about to start pitching the show for touring in the USA late 2015. Can you send through the details of the puppet maker etc. We are going to have to get new ones made at some point for USA etc.

154    On around 14 September 2014, Mr Gooding (for Neil Gooding Productions) and Mr Henderson executed a written “Booking Services Agreement” with East Bank Entertainment. Mr Matthew Chinn executed the contract for East Bank. The agreement related to Thank You For Being A Friend which was described as a “touring theatrical production”. Under the agreement East Bank would promote Thank You For Being A Friend and use its best efforts to book engagements and to secure performances on a logical tour route at agreeable and commercially reasonable financial terms for the ‘producer’ (Neil Gooding Productions and Matthew Management).

155    On or around 10 December 2014, Mr Rockefeller, Mr Duncan-Watt and Mr Gooding met in Ultimo in Sydney. Mr Rockefeller had asked to borrow the puppets for a photo shoot and Mr Gooding brought them with him. Different accounts of the conversation were given by Mr Rockefeller and Mr Gooding. On either account it is clear that Mr Gooding did not mention that the Booking Services Agreement had been executed. Mr Gooding stated that there was complexity around getting the right General Manager in the United States.

156    Although a Booking Services Agreement had been executed in September 2014, a General Management Agreement had not. That was to occur only once a viable tour had been booked.

B.17    Mr Rockefeller, Mr Duncan-Watt and the photo shoot: November and December 2014

157    Mr Rockefeller stated in his first affidavit that, in late November 2014, he spoke to Mr Duncan-Watt saying he wanted to do a photo shoot with the Thank You For Being A Friend puppets when he was in Australia. He said that, during this conversation, Mr Duncan-Watt asked if he could also have a shot taken with a Dennis the Menace puppet. Mr Rockefeller stated that, after this conversation had occurred, he made the relevant arrangements with Mr Dario Gardiman.

158    In fact, Mr Rockefeller had exchanged emails with Mr Gardiman on 9 November 2014, arranging a photo shoot for 13 December 2014 – see also: Section F below.

159    Mr Rockefeller stated that he had a second conversation with Mr Duncan-Watt on around 2 December 2014. Mr Rockefeller asserted he said to Mr Duncan-Watt that Mr Gardiman would take the additional photos and would charge Mr Duncan-Watt $1,000 for them and that he told Mr Duncan-Watt that he would also need to pay for usage of the photographs. He stated:

JWR:    Dario will take the extra photos for you. He will be charging you $1,000 for them. He doesn’t have his studio anymore unfortunately, but he will find another location.

TDW:    Is that how much a shoot usually costs?

JWR:    They usually cost a lot more. You’re getting a very good deal at mates’ rates. You’ve more than doubled his work.

TDW:    I don’t see why I have to pay when you are having some pictures taken anyway.

JWR:    They’re not for me, they’re for you - they’re for your press and your website. You’ll also need to pay for their usage.

TDW:    Why?

JWR:    Tom, you work in advertising, you know you have to pay for usage. If you don’t want to do this, I’ll go and do my own thing without you.

TDW:    How much will the studio be?

JWR:    I’m getting a quote from him.

TDW:    OK – fine. I’ll pay for the shots and we’ll split the other costs. But I’m, not paying for any re-touching – no one else knows how I like my face re-touched. I’ll do that myself.

160    Mr Duncan-Watt gave a different account. He stated that Mr Rockefeller told him that he had organised a photo shoot with Mr Gardiman for them both. This was to take photographs of Mr Rockefeller and Mr Duncan-Watt with the puppets as publicity for Thank You For Being A Friend. Mr Duncan-Watt’s account was that Mr Rockefeller said he was having Mr Gardiman do some other work for him and that Mr Gardiman could also do some shots for the novel, No. 5½. Mr Duncan-Watt asked if he could also get a shot with a Dennis the Menace puppet. Dennis the Menace & Gnasher had recently received a BAFTA nomination. According to Mr Duncan-Watt, Mr Rockefeller did not suggest that there would be any charge to Mr Duncan-Watt. For reasons expanded on immediately below and in Section F, I accept that the conversation occurred in the terms indicated by Mr Duncan-Watt, except that although Mr Rockefeller did say Mr Gardiman was doing other work for him, he may not have mentioned obtaining photographs for the novel, No. 5½.

161    Mr Rockefeller stated in his first affidavit at [59]:

Mr Gardiman did not charge me for the photographs he took of only me, as he took those photographs as a personal favour to me. The $1000 he charged was for the photographs which included Thomas Duncan-Watt [namely those of both Mr Rockefeller and Mr Duncan-Watt for Thank You For Being A Friend].

This is not consistent with his account of the conversation with Mr Duncan-Watt given at [52] of his first affidavit set out at [159] above, in which Mr Rockefeller stated that the amount of $1,000 was for the “extra photos” requested by Mr Duncan-Watt, that is, for the photos that were to be taken of Mr Duncan-Watt with the Dennis the Menace puppet. In his second affidavit, Mr Rockefeller again asserted that he had agreed with Mr Duncan-Watt that Mr Duncan-Watt would pay for the whole photo shoot and that they would split certain incidental costs equally between them. There was no satisfactory explanation given as to why Mr Duncan-Watt would agree to pay the whole cost of a photo shoot conceived and arranged by Mr Rockefeller in part for his own purposes.

162    In the context of the whole of their dealings it is unlikely that Mr Rockefeller would have asked Mr Duncan-Watt to pay for the whole photo shoot or that Mr Duncan-Watt would have agreed to do so. As explained in detail in Section F below, I conclude that it was Mr Rockefeller who agreed with Mr Gardiman to pay $1,000 for the photo shoot. This is consistent with each contemporaneous document, with the fact that $1,000 was paid for the photo shoot by JWR Production and with Mr Gardiman’s letter of 21 December 2016.

163    On 3 December 2014, Mr Rockefeller emailed Mr Gardiman stating:

So we can start piecing together lighting, hair & makeup for the 13th, these are the two shots:

1) With the four Golden Girls puppets, similar lighting to this.

2) The b + w stylized and photoshopped figurine. I’ll try and find the ‘other half’ before then, started looking already.

I also have to let Tom have a go with the puppets – no doubt you remember him.

164    The reference to stylized and photo shopped figurines was a reference to photos in which half of the face was that of Mr Rockefeller and the other half was of a different person, as it turned out the image of a statue reminiscent of a Greek god which Mr Rockefeller had found online.

165    The photo shoot took place on 12 or 13 December 2014.

166    On 18 December 2014, Mr Rockefeller sent an email to Mr Gardiman thanking him for the shoot and stating: “Do you want to send me an invoice for $1,000? Or?”.

167    Mr Rockefeller’s evidence was that this was intended to convey that, if Mr Gardiman did not want to send an invoice, Mr Rockefeller would give him cash. None of the contemporaneous evidence suggested that there was to be a charge of $1,000 to Mr Duncan-Watt for the photo shoot or for the additional shots of him with the Dennis the Menace puppet. The only contemporaneous documents suggested that it was Mr Rockefeller or JWR Productions that was liable for the cost of the photo shoot.

168    On 6 January 2015, JWR Productions paid Mr Gardiman $1,000. No request was made at that time for Mr Duncan-Watt to pay any amount to Mr Gardiman or to reimburse JWR Productions.

169    I conclude that Mr Rockefeller’s two accounts of his conversations with Mr Duncan-Watt in late November 2014 and on 2 December 2014 are incorrect and that Mr Rockefeller did not at that time discuss with Mr Duncan-Watt that Mr Duncan-Watt would be charged for any aspect of the photo shoot or for using the photographs – see also: Section F below.

B.18    Lilianfels and the Author Collaboration Agreement: December 2014

170    Mr Rockefeller and Mr Duncan-Watt went to Lilianfels Resort in the Blue Mountains from 21 to 23 December 2014, to discuss and develop No. 5½. During the time at Lilianfels, Mr Duncan-Watt and Mr Rockefeller jointly created and wrote a new synopsis and chapter breakdown of the novel.

171    Mr Rockefeller stated that he took with him various scripts for various works he had written, including the 10 scripts for Satisfaction. He also stated that he took with him various other documents, including personal journal notes taken during his time working with Baz Luhrman, call sheets for La Bohème and the Chanel No 5 commercial, various magazine clippings and a book titled My Week with Marilyn.

172    Mr Rockefeller stated that Mr Duncan-Watt asked for this material at the end of the trip so that he could use the material in writing No. 5½. Mr Rockefeller says he gave all of this material to Mr Duncan-Watt.

173    Mr Duncan-Watt agreed that Mr Rockefeller gave him certain materials which Mr Rockefeller stated Mr Duncan-Watt might need for the book. Mr Duncan-Watt stated that he had collected scripts before that weekend from a friend of Mr Rockefeller’s, Dani, in Paddington. Mr Duncan-Watt gave an account of a conversation with Mr Rockefeller in which Mr Rockefeller was said to have stated:

I have some stuff at Paddington. You can have the PU chairs and the fan, and the Satisfaction scripts might be useful for 5 ½. Can you pick them up from there and hold onto them for me? There’s also some books, if you could give them to Dario Gardiman when you come to the photoshoot.

174    Mr Duncan-Watt said he took the furniture, delivered the books to Mr Gardiman at the photo shoot and stored the scripts at his place. An email between Mr Rockefeller, Mr Duncan-Watt and Dani sent on 8 September 2014 referred to Mr Duncan-Watt making arrangement to collect the brown leather chairs from Dani.

175    After they returned from Lilianfels, Mr Rockefeller and Mr Duncan-Watt executed an “Author Collaboration Agreement” which related to No. 5½. This was done on 24 December 2014 at Mr Duncan-Watt’s apartment in Elizabeth Bay. The “Author Collaboration Agreement” contemplated that copyright would be held in their joint names and that profits would be shared equally. The authorship of No. 5½ would be represented as follows: by Thomas Duncan-Watt & Jonathan Rockefeller (in that order).

B.19    Mr Rockefeller considers a new Golden Girls puppet parody: January 2015

176    In early 2015, Mr Rockefeller was developing ideas for a series of shows he wanted to create, including one called “Puppet Parodies” based on several comedy shows. One of those he planned to include was a new puppet parody based on The Golden Girls, involving a stage production and several webisodes, to be called The Goldenish Girls: A Puppet Parody.

177    Mr Rockefeller stated that, in early 2015, he said to Mr Duncan-Watt:

We can create an entirely different show from [Thank You For Being A Friend] that is still a puppet parody but completely different. We have to be mindful of our agreement, but it is well within our reserved rights.

B.20    Mr Rockefeller raises possible breaches of the Licence Agreement with Mr Duncan-Watt: February and March 2015

178    Mr Duncan-Watt stated in his affidavit that at some time in 2015, Mr Rockefeller informed Mr Duncan-Watt that Mr Gooding and Mr Henderson were in breach of the Licence Agreement. I conclude this occurred after Mr Rockefeller raised with Mr Duncan-Watt the creation of a new Golden Girls puppet parody in January 2015. Mr Duncan-Watt said Mr Rockefeller said to him:

Neil [Gooding] and Matt [Henderson] are in breach of the licence agreement – they’re not consulting us where they should. We should get ready to do it ourselves.

[and]

My lawyers are sorting this all out.

179    I accept that this conversation occurred.

180    On 24 February 2015 (US time), Mr Rockefeller wrote an email to Mr Gooding and Mr Henderson raising “a few small Housekeeping things outstanding as per our licensing agreement”. The issues included issues with respect to artwork and marketing materials (cl 5.3 of the Licence Agreement) and inspection of books and records (cl 9.1 of the Licence Agreement) and also included:

[Clause] 19.1 [of the Licence Agreement] Agents – we haven’t received any further updates about a proposed US production or proposed US agents since December, and it seemed then that everything was progressing speedily. Is this going ahead? Or still in a discussion phase? As per agreement, it is a requirement that we mutually agree on any agents acting on behalf of the show; on any further licensing agreements; and no rights can be transferred or assigned in any way without prior written consent.

181    Mr Henderson responded on 24 February 2015 with respect to the artwork and books and records.

182    On 12 March 2015 (US time), Mr Rockefeller sent a follow up email to which Mr Henderson replied. Mr Henderson’s response included:

Regarding the US run there isn’t much to report. We are still working on that and would hope to have some more concrete and confirmed information by mid this year. We are not assigning any third party the rights. Neil [Gooding] and I will be running the show from Australia with staff on the ground engaged by us.

B.21    Mr Rockefeller obtains legal advice, including as to whether the Licence Agreement can be terminated: March 2015

183    On 16 March 2015, Mr Rockefeller sent to Mr Andrew Dawson (a lawyer from the firm Brett Oaten) an email stating:

Hi Andrew,

Thank you for looking at this. I have detailed any potential breaches and any responses received below. The document is marked and numbers [sic] below.

As mentioned, we will be launching a completely new work and want to make absolutely certain there are no potential conflicts with our new US production and the current Licence.

Best,

Jonathan

9.1 – Records

I have been continuing to request a copy of all the records and they have only provided GBO sales.

My understanding is it is for all monies expended, internally or externally. This is their response:

With the Records in clause 9.1, if you let me know what info you want, will send something through if its appropriate.

The clause actually does not give the right to see all records. It puts an onus on Matt [Henderson] and I to maintain all records (which we have to do for the ATO anyway), but only gives the right of inspection for the purpose of verifying accuracy of all statements furnished and the sums paid by the Originating Producers under the terms of the License.

So, in effect, it means that if you wanted to verify the ticket sales or income that your royalties are based upon, you have the right to inspect the paperwork from the venues and ticketing companies etc.

It does not mean that we provide you with all information on cast wages, travel expenses etc. Some of this is all non-contentious anyway, so who really cares, but things like wages are contracted as being confidential.

Anyway, all that legality aside, if you let me know what info you wanted [I] will get it for you. But, we certainly can’t provide breakdowns of all expenses etc.

GFO does not have to do this to the writers and rights holders of Wicked. All they want to know is what is the box office, and what are the royalties. The amount spent on set, costumes, cast etc are not part of that agreement.

19.1 & 21 – Agents/Assignability

In several inquiries dating back prior to November, I have continued to ask about a proposed US production and proposed US agents. My understanding is that all agents acting on behalf of the show or representing the show; or any further agreements would need our approval, and no rights can be transferred or assigned in any way without prior consent. Response below, which, doesn’t appear to be a breach, unless the staff are from another production company:

Regarding a US run there isn’t much to report. We are still working on that and would hope to have some more concrete and confirmed information by mid this year. We are not assigning any third party the rights. Neil [Gooding] and I will be running the show from Australia with staff on the ground engaged by us.

4. Preservation of Work’s Integrity

I was sent an archive copy of the show two weeks ago and there is without a doubt new bits added in that were not signed off on. I’m not sure if this would constitute a breach or technically if this means they could just fix it for the next time they present the show after a notification.

6. Credit

Our names did not / do not appear wherever or whenever the title of the work appears. Websites, Twitter and Facebook for example:

http://thankyouforbeingafriend.com.au

https://www.facebook.com/ThankYouForBeingAFriend

https://twitter.com/BeingAFriendAus

7.3 [Payments, Royalties, Accounting]

We have not received statements on a quarterly basis.

However, they also haven’t done any shows since Feb 14th, 2014. But all the same, still did not receive the March 2014 statement or any post then.

184    Mr Rockefeller agreed that he spoke with Mr Dawson shortly before sending this email to him.

185    On 17 March 2015, Mr Rockefeller sent an email to Mr Duncan-Watt stating that he had sought advice from a lawyer and setting out that part of the email set out above which appears after Mr Rockefeller’s name, that is, the part which identifies “potential breaches”.

186    Also on 17 March 2015, Mr Rockefeller received advice from Mr Dawson. Mr Dawson’s advice was in the following terms:

Thanks for sending this through.

I’ve had a read through the document and your comments below.

My comments on the licence follow:

(a)    Licence Grant – There are a few points to consider here:

•    It is not clear to me whether the Originating Producers’ (‘OPs’) rights are exclusive or non-exclusive. Clause 2 which contains the licence grant doesn’t specify and clauses 14 and 20 seem to contemplate other productions within the Territory. What was the parties’ intention in relation to exclusivity?

•    The licence grant is for the World. There are no carve-outs or holdbacks for the United States.

•    The licence automatically terminates if the production hasn’t been presented by the OPs prior to 31 December 2014. Presumably it was presented prior to this date?

•    The licence grant is for 5 years from first presentation.

•    The OPs are required to present a minimum of 10 performances in a calendar year. Presumably this has occurred?

(b)    Termination – Clause 11 provides for terminate [sic] if the OPs breach and don’t rectify the breach within 7 days of notice requiring them to do so. Have you issued any such notice?

(c)    First Right of Refusal– Clause 14 contains provisions granting the OPs the ‘first right of refusal to produce, or invest, in any future productions of the Work in the Territory’. It’s not clear to me how this works in the context of the rights granted to the OPs. It is also not clear to me whether or not this would extend to your proposed new work in the US.

(d)    Originating Producer’s Royalty – Clause 20 provides that the OPs will receive a royalty of 2% of the gross weekly box office of all future productions of the Work. Again, it’s not clear to me whether this would extend to your proposed new work in the US or how this ties in with the licence grant.

In my view, the position is that:

(i)    There are no provisions that prevent the OPs taking the production themselves to the US.

(ii)    It is not clear to me that you have a clear right to terminate the Agreement. Termination must be handled carefully because a failure to terminate correctly can give rise to a claim against you for wrongful termination.

(iii)    It is not clear to me whether or not the OPs have any rights in or to box office for your proposed new work in the US (see clause 20). Is the new work entirely different to Thank You For Being a Friend?

In summary then, the only clear path to preventing the OPs from taking Thank You For Being a Friend to the US is to terminate the licence agreement. In order to do this, we’d need to identify a clear breach of the licence agreement, give formal notice of the breach (taking into account the notice requirements of clause 23) and give the OPs 7 days to rectify the breach.

Please let me know if you’d like to discuss further.

187    On 18 March 2015, Mr Rockefeller responded to Mr Dawson’s email. This stated (emphasis in original):

Thank you for this, I’ll mull it over a bit more.

To answer your questions:

•    I haven’t issued any notice, and am deciding on advice if it is worthwhile doing so (if we have clear breaches)

•    I agree with you that termination would have to be clear breaches and as they are between seasons (next one in Sept) it would be hard to creatively fault the show for failing to fix things within 7 days i.e. changes they’ve made to the work.

•    The New Work is entirely new from this work - no scripts, scenarios are similar other than [those] derived from the original source material, they will even be different puppet designs.

188    Mr Rockefeller forwarded Mr Dawson’s email of 17 March 2015 to Mr Duncan-Watt on 20 March 2015. This also included the text of Mr Rockefeller’s 18 March 2015 email response to Mr Dawson (set out above).

189    Mr Rockefeller was cross-examined at length about these emails and his conversation with Mr Dawson on 16 March 2016. His evidence as to what he instructed Mr Dawson was to the effect that, first, Mr Gooding and Mr Henderson had been “behaving appallingly” and he wanted to bring things back into line and, secondly, he wanted to make sure that his new show would not come into conflict with the licensing arrangement that had been granted to Mr Gooding and Mr Henderson.

190    I conclude that Mr Rockefeller obtained the advice from Mr Dawson for three purposes: first, to see whether he could prevent Mr Gooding and Mr Henderson from taking Thank You For Being A Friend to the US; secondly, to find out whether the Licence Agreement could be terminated; and, thirdly, to see whether Mr Gooding and Mr Henderson might have some rights in relation to his proposed new work. I reach this conclusion primarily from the structure of the advice given in the email of 17 March 2015 which answers those three questions, read in light of the email sent by Mr Rockefeller on 16 March 2015 after Mr Rockefeller and Mr Dawson had spoken. Mr Rockefeller’s email of 16 March 2015 to Mr Dawson stated that Mr Rockefeller had “detailed any potential breaches and any responses received”. It is inherently unlikely that Mr Dawson would have given advice in respect of these issues if he was not asked about them.

191    In his advice, Mr Dawson set out his conclusions in the three numbered paragraphs (i)-(iii) and then repeated: “In summary then, the only clear path to preventing the OPs [Originating Producers] from taking Thank You For Being a Friend to the US is to terminate the licence agreement”. Mr Dawson also emphasised that any termination must be handled carefully because “failure to terminate correctly can give rise to a claim against you for wrongful termination”. In cross-examination, Mr Rockefeller gave the following evidence:

Q:    So is it your evidence that Mr Dawson just simply voluntarily provided this advice without being requested to do so on that particular topic?

A:     Mr Dawson usually gives incredibly thorough advice across the licence.

192    The explanation given by Mr Rockefeller is unconvincing. The fact that he gave such evidence in the face of the content of the emails and the overwhelming probabilities reflects poorly on his credibility. Mr Dawson was not called to give evidence.

193    I am satisfied that, at this point in time, Mr Rockefeller had decided to put on a Golden Girls puppet parody show in New York. He had not actually got Mr Duncan-Watt to commence writing the new show and could not have known how the script would differ from the script for Thank You For Being A Friend. He wanted to prevent Thank You For Being A Friend from coming to the US if he possibly could. He knew that Mr Gooding and Mr Henderson were working toward a late 2015 production – see: [153] and [182] above. Mr Rockefeller held a concern that he would be in breach of the 25 November 2013 Licence Agreement by putting on a Golden Girls puppet parody. It was for these reasons that he was seeking legal advice. This is also consistent with Mr Rockefeller’s draft press sent to Mr Duncan-Watt on 23 March 2015, referred to next.

B.22    Mr Rockefeller continues to pursue the new Golden Girls puppet parody with Mr Duncan-Watt: March to May 2015

194    On 23 March 2015, Mr Rockefeller sent Mr Duncan-Watt an email with a draft press release. In the covering email, Mr Rockefeller said:

This is how we will deal with the Matt/Neil problem in April/May (post Matthew [Henderson]’s US visit).

Think of a good quote for yourself of the previous show (example included).

It will be checked by lawyers for all wording in the release before it goes to them for comment and then release.

No time rush on this, it won’t be going out until April / May.

195    The draft press release included (emphasis in original):

Jonathan Worsley and Thomas Duncan-Watt the creators of the hit parody puppet show “Thank You For Being a Friend” are proud to announce that they are currently working on a brand new show with the Jim Henson Puppetry Workshop as part of Jonathan Rockefeller’s “Puppet Parodies” Series.