Intellectual Property Law Update – November 2001

Intellectual Property Law Update – November 2001

Courtney v Medtel Pty Ltd

[2001] FCA 1365, 25 September 2001


  • The applicant brought proceedings on his own behalf and on behalf of persons in whom a certain model Tempo Pacemaker were surgically implanted alleging that the pacemakers were defective and not reasonably fit for their purpose.


  • The applicant filed a notice to produce requiring the respondents produce all records of communications between the respondents' representatives and members of the class action group.


  • The respondents originally objected to any production of the subject documents on the ground of "without prejudice" privilege, in that the documents were produced in the course of, and solely for the purpose of, negotiating the settlement of a legal dispute. On further consideration, the respondents decided to waive the privilege except insofar as the name and address of the relevant group member and any figure representing a compensation amount were concerned. The respondent's obscured that information before the documents were tendered.


  • It was found that the documents qualified as communications prepared in connection with negotiations concerning settlement of a legal dispute and could not be adduced in evidence in accordance with s131(1) of the Evidence Act.


  • It was held that the applicant was not entitled to require production of the documents for the purpose of inspection. The policy behind the privilege that applies to protect genuine negotiations from being admissible in evidence should also be extended to protect those negotiations from being discoverable to third parties.

    Kabushiki Kaisha Sony Computer Entertainment v Stevens

    [2001] FCA 1379, 28 September 2001

    • The ACCC applied for leave to appear and be heard as amicus curiae.
    • The ACCC's application was supported on the basis that it wished to make submissions on important questions of construction that may arise concerning s116A of the Copyright Act.
    • Sony is the manufacturer and distributor of the Sony "Playstation" computer game console and computer games.
    • Sony claimed that each of the computer games embodying the computer programs is protected by a technological protection measure via an access code contained within a track on each of the CD Roms on which the computer programs are contained.
    • Sony alleged that the respondent had sold devices having no purpose or use other than the circumvention of the technological protection measure.
    • Sony opposed the ACCC participating in the proceedings as amicus curiae on the basis that:
    • the Court does not require assistance from the ACCC to interpret the legislation since the explanatory memorandum is available and the representatives of Sony can explain the workings of the relevant device;
    • it is inappropriate for the Australian Government Solicitor (representing the ACCC) to make submissions to the Court on the interpretation of the legislation as it may create the impression that the Commonwealth is dictating the correct interpretation of the legislation to the Court;
    • an amicus curiae should not appear on the express instructions of a party to the proceedings;
    • the arguments the ACCC intends to make (which were foreshadowed) favour the respondent;
    • the costs, as between the parties, of the ACCC appearing as amicus curiae would be disproportionate.
    • It was held that there is a limited and defined role that the ACCC can play in the proceedings which is consistent with the traditional functions of an amicus curiae. Sackville J considered it quite clear that difficult questions of construction would arise in relation to s116A which have not been the subject of detailed consideration in this country. These questions may prove to be of general public significance so that the ACCC is likely to provide substantial assistance to the Court of a kind that might not otherwise be available, on legal issues of potentially general importance.
    • It was held that the role played by the ACCC as amicus curiae will not extend to adducing evidence, except perhaps with the consent of the parties, nor will it extend beyond the construction of s116A.
    • Sackville J considered it fanciful to suggest that an appearance by the AGS would create an impression of the Commonwealth dictating to the correct legislative interpretation to the Court. He disagreed that the involvement of the ACCC would disproportionately increase the costs of the proceedings, particularly since potentially, the ACCC might not receive an opportunity to make its submissions, eg. if the respondent establishes that he did not act in the manner alleged by Sony.

    Zomba Production Music (Australia) Pty Limited v Roadhouse Productions Pty Limited (in liq)

    [2001] FCA 1526, Sydney, Stone J, 31 October 2001

    • Zomba Production Music (Australia) Pty Ltd ("Zomba") claimed to be the owner of copyright in the musical work "Shangri-La" and in sound recordings of that work.
    • EMI Music Publishing Australia Pty Ltd ("EMI") claimed to be the owner of copyright in the musical work "Freedom World" and in sound recordings of that work.
    • Australasian Mechanical Copyright Owners Society Limited ("AMCOS") had an exclusive licence to:
    • make reproductions, other than advertisements, of all musical works in relation to which Zomba and EMI owned or controlled the right of mechanical reproduction for the purpose of broadcasting in certain countries;
    • broadcast sound recordings that form part of a mood music library recording in relation to which Zomba or EMI owns or controls the right of mechanical reproduction;
    • reproduce musical works or sound recordings that form part of a mood music library recording in relation to which Zomba or EMI owns or controls the right of mechanical reproduction.
    • Zomba, EMI and AMCOS ("the applicants") commenced proceedings against Roadhouse Productions Pty Ltd ("Roadhouse") and Gregory Numa ("Numa") ("the respondents") for copyright infringement.
    • No defence was filed by the respondents therefore the existence and ownership of copyright was not put in issue. Accordingly, the existence and ownership of copyright in the Works and sound recordings thereof was presumed by virtue of section 126 of the Copyright Act 1968 (Cth).
    • Evidence was adduced that the musical works "Freedom World" and "Shangri-La" were included in a television program entitled "Rex Hunt's Fishing Adventures". The relevant episodes were broadcast on the Seven Network in Australia.
    • It was held that broadcasting a sound recording on free-to-air television constitutes making that sound recording available to the public. The acts of broadcasting done by the Seven Network were authorised by the respondents. Stone J held that "The phrase "to the public" implied that the communication will take place to the copyright owner's public, usually in a "commercial" setting. Provided, however, that others are prepared to bear the cost, it is irrelevant that the public themselves would not expect to pay for the communication … Communication to the public includes situations where the communication is available to members of the public in a private or domestic setting and where only some members of the public actually receive the communication. … In my view, there is no doubt that broadcasting a sound recording on free-to-air television constitutes making that sound recording available to the public."
    • The use of the name "Roadhouse Productions" in the list of credits on the relevant episodes was sufficient to attract the presumption under section 131 that Roadhouse was the name of the producer or maker of the film, notwithstanding that "Pty Ltd" had been omitted.
    • Held that Numa had authorised Roadhouse's infringement of copyright on the basis of the following factors: that Numa was the sole director and company secretary of Roadhouse; Numa was described in the credits of the relevant episodes as "Executive Producer" of the program; and Numa represented Roadhouse in its dealings with AMCOS in relation to a licence for music used in Rex Hunt's Fishing Adventures.
    • In the absence of any defence, evidence or submissions from the respondents, the judge did not need to consider whether the defence of "innocent" infringement under section 115(3) was available to the respondents.

    Sony Computer Entertainment Australia Pty Ltd v Dannoun (No 2)

    [2001] FCA 1530. Sydney, Linger J, 29 October 2001

    • The applicants, Sony Computer Entertainment Australia Pty Ltd ("Sony Computer Australia"), a wholly owned subsidiary company of Kabushiki Kaisha Sony Computer Entertainment ("KKSCE"), the manufacturer and a distributor of the Sony "PlayStation" computer game console, brought trade mark infringement proceedings against the respondents.
    • The applicants claimed that the respondents had conducted a business on a substantial scale of making and distributing CD-ROMs bearing counterfeits of Sony's trade marks "PlayStation" and device mark consisting of a stylised vertical letter "P" and a stylised horizontal letter "S" intertwined ("the Sony Trade Marks").
    • Evidence included evidence associated with execution of an "Anton Piller" order
    • .

    • Held that the respondents by the use of counterfeits of one or other or both of the Sony Trade Marks had infringed the Sony Trade Marks.

    Sony Computer Entertainment Australia Pty Ltd v Jacopkevic

    [2001] FCA 1520. Sydney, Lindgren J, 24 October 2001

    • Decision on the applicant's submission that costs should be awarded in their favour on an indemnity basis, rather than on the usual party and party basis.
    • Lindgren J noted that "the circumstances must be "special", must take the case out of the "ordinary" category of case, and must involve behaviour associated with the conduct of the proceeding by the person sought to be made liable which is so unreasonable as to make it unjust that the other party should be limited in its recovery to party and party costs.
    • The judge ordered the respondents to pay the applicants' costs on an indemnity basis, that is, all the costs incurred by the applicants of and incidental to the proceeding except any costs unreasonably incurred and costs unreasonable in amount. One of the circumstances which the judge found relevant to the question of indemnity costs was the use of various aliases by one of the respondents to prevent his being sued.

    Other cases

    Australian Drainage Modules Pty Ltd v Urriola

    [2001] FCA 1506, 18 October 2001

    Decision on costs.

    Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Limited

    [2001] FCA 1624. Sackville J, Sydney, 16 November 2001

    Decision on costs.

    Aussie Red Equipment Pty Ltd v Antsent Pty Ltd

    [2001] FCA 1641, Moore J, 22 November 2001.

    Decision on costs.

    Recent legislation

    Federal Court Amendment Rules 2001 (No. 3). Statutory Rules 2001 No. 322 – amendments commenced on 14 November 2001.