Federal
Court of Australia
] [Help] CATCHWORDS
COPYRIGHT - subsistence - whether pawnbroker's pledge ticket is a compilation in which copyright subsists - infringement - whether similar ticket is a "copy".
INTERLOCUTORY INJUNCTION - balance of convenience.
Ladbroke (Football) Limited v William Hill (Football) Limited [1964] 1 WLR 273.
Victoria Park Racing
and Recreation Grounds Company Limited v
Taylor (1937) 58
CLR 479
ANDREW CASH & CO INVESTMENTS P/L v JOHN PORTER, AVRO COMPUTER SYSTEMS PTY LIMITED and LINTIC PTY LIMITED
No. NG 777 of 1996
CORAM: FOSTER J
DATE: 14 OCTOBER 1996
PLACE: SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 777 of 1996
)
GENERAL DIVISION )
BETWEEN: ANDREW CASH & CO INVESTMENTS P/L
Applicant
AND: JOHN PORTER
First Respondent
AVRO COMPUTER SYSTEMS PTY LIMITED
Second Respondent
LINTIC PTY LIMITED
Third Respondent
JUDGE MAKING ORDERS: FOSTER J
DATE: 14 OCTOBER 1996
PLACE: SYDNEY
MINUTE OF ORDERS
THE COURT ORDERS THAT:
1. The third respondent be restrained until further order, from using in the conduct of its business known as the Cardiff Loan Office and the Valley Loan Office pawn tickets which are the same as or substantially similar to the pawn ticket an example of which is Annexure L to the affidavit of Reginald James Winston Doyle sworn 19 September 1996 and filed in these proceedings ("the pawn ticket").
2. The third respondent be restrained, until further order, from placing any orders for or otherwise authorising Norman Morris Printers or any other person or entity to print further copies of the pawn ticket.
3. The costs of this application be costs in the cause.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 777 of 1996
)
GENERAL DIVISION )
BETWEEN: ANDREW CASH & CO INVESTMENTS P/L
Applicant
AND: JOHN PORTER
First Respondent
AVRO COMPUTER SYSTEMS PTY LIMITED
Second Respondent
LINTIC PTY LIMITED
Third Respondent
CORAM: FOSTER J
DATE: 14 OCTOBER 1996
PLACE: SYDNEY
REASONS FOR JUDGMENT
(Extempore)
HIS HONOUR: This is an application for an interlocutory injunction brought by the applicant, Andrew Cash & Co Investments Pty Limited against the third respondent, Lintic Pty Limited. The third respondent was joined in these proceedings by leave granted this morning, and is a company controlled, for practical purposes, by the first respondent. The applicant initially proceeded against the first respondent, however, now that there has been a joinder of the third respondent relief is no longer sought against the first respondent.
These proceedings were commenced last week on the basis that leave for short service of an application and supporting affidavit was granted. The proceedings came before the Court on 9 October 1996. At that point of time the applicant was proceeding against another company, then the second respondent in the proceedings, Avro Computer Systems Pty Limited. On the return day, however, leave was granted for proceedings to be discontinued against that respondent, with the result that the proceedings remained on foot only against the first respondent who, as I have said, as a result of an order made this morning is no longer proceeded against, his company in effect having been substituted as a respondent.
On 9 October an order was made that, because of the alteration in parties, the matter further proceed by way of pleadings. A direction was given that the applicant serve an amended application together with a statement of claim further defining the nature of the proceedings brought against the first respondent. That statement of claim, had it been filed, would have required further amendment so that it became directed against the current third respondent. However, that is of no significance.
Some argument was put to me on behalf of the third respondent that there could be some difficulty in these proceedings for interlocutory relief through the absence of the statement of claim, there having been a failure to comply with the direction given on 9 October on the part of the applicant. I am satisfied, however, after discussion of this matter with counsel, that if there be any disadvantage it is not sufficient to prevent me proceeding with the hearing. Indeed, I have been invited to do so by counsel for the third respondent. He asks that I take into account, in the exercise of discretion, the absence of a pleading which would more closely define the case sought to be brought against the third respondent. I am, however, quite satisfied that, in the course of the submissions that have been made and the discussion that has taken place between bench and bar during the course of this hearing, the issues have been quite satisfactorily defined for the purpose of today's proceedings.
The original proceedings were brought by the applicant for the purpose, apparently, of protecting an alleged copyright in a system which involved the computerisation of the records of pawn broking businesses. The applicant's principal, Mr Doyle, by his affidavit establishes that over a long period of time in the occupation of pawnbroker he became aware of the desirability of pawnbrokers' records being placed on computer, so that various pieces of information could be readily obtained by a pawnbroker when giving consideration as to whether or not to accept a pawn and grant a loan, and also in relation to the proper recording of all aspects of the pawn transaction. His interest in the computerisation of these records pre-dated any statutory requirement that such records be placed on computer. I am advised that in fact pawnbrokers' records will now be statutorily required to be placed on computer, and that those records will have to contain various entries that are required by relevant legislation and regulation. I do not think it is necessary in these reasons, however, to go into the precise requirements of the statute and the regulations.
The claim in respect of the system as a whole was a claim in copyright. As I understand it, it was primarily against the second respondent who, by order of the Court made by consent, was dismissed from the proceedings on the last occasion the matter was before the Court. The present claim quite clearly is not brought in respect of any copyright claim in respect of the whole system of computerisation with its attendant software and the like. It is brought in respect of one particular document, that is a document described in argument, accurately in my view, as a pledge ticket. This is a document which the law requires to be produced in quadruplicate: one copy is provided to the borrower, one stays with the pawned article, one becomes part of the records of a pawnbroker and the last copy goes to the police. It is quite clearly a very significant document in relation to a pawnbroker's business. It must contain, when completed, details which the law requires to be recorded in respect of pawn transactions. This document was in fact the final document produced as a result of the system originated by Mr Doyle on behalf of the applicant.
The claim against the third respondent is now a truncated claim, but it is quite a precise one. It is brought to protect copyright in that particular document. The complaint is made that that copyright has been infringed by the third respondent by its production and use of a document which, it is asserted by the applicant, constitutes an infringement of its own document.
The evidence in the affidavits that have been placed before me cover a wide field, but for the purpose of this application can be viewed fairly narrowly. It is clear from the affidavit of Mr Porter that in 1995 he became interested in the question of the computerisation of pawnbroker's records. He himself was the principal in a company involved in that occupation and apparently had become aware, as had Mr Doyle, that the future of that business was very much involved in its embracing of computerisation as an essential tool in the conduct of the business.
As part of inquiries Mr Porter made with a view to setting up a computer system, he came into contact with Mr Doyle who was, at that point of time, actively marketing the system which he had himself evolved and which, as I have said, had as its end product a form of pledge ticket which I have already described. There is some dispute between the parties as to what occurred on an occasion in October of 1995 when a meeting took place at Mr Doyle's premises, where there was at least a demonstration of sorts of the operation of Mr Doyle's computer system. It is, however, not necessary to form any firm view as to what version should be accepted as to what occurred, because it is quite clear from the affidavit of Mr Porter himself that he was, on that occasion, shown a copy of the pledge ticket produced by Mr Doyle's system. He then, quite obviously with Mr Doyle's permission, took a copy of that ticket together with other relevant material away with him for the purpose of giving consideration as to whether he would enter into business arrangements with Mr Doyle or not.
Mr Porter did not enter into such business arrangements. Instead he made arrangements with another organisation experienced in the production of computer systems. This organisation was under the control of Mr Worboys, who is apparently an expert in that area. It was quite apparent, of course, that any computerised system would have to result in the production, through an appropriate printing machine, of a pledge ticket in quadruplicate to be used as an integral part of the computerised system. That pledge ticket had to contain certain matters required by law. Mr Porter acknowledges that he showed the copy pledge ticket he had received from Mr Doyle to Mr Worboys, and that discussions took place as to the production of a ticket which would contain further information. In the event a ticket was produced, and it is that ticket which is said to be an infringement of copyright.
In the first place it has been argued that there can be no copyright in the pledge ticket produced by Mr Doyle. It is said that there is no originality in that ticket and that it does not reveal any relevant expenditure of work or skilful arrangement of materials or judicious selection of things to be included. Those requirements to which I have just made reference come from the judgment in the case of Ladbroke (Football) Limited v William Hill (Football) Limited [1964] 1 WLR 273.
The copyright in the ticket is claimed by the applicant on the basis
that the ticket is, relevantly, a compilation. As to copyright in a
compilation, it was said by Dixon J, as he then was, in
Victoria
Park Racing
and Recreation Grounds Company Limited v Taylor
(1937) 58 CLR 479 at
511:
"... some original result must be produced. This does not mean that new or inventive ideas must be contributed. The work need show no literary or other skill or judgment. But it must originate with the author and be more than a copy of other material."
Mr Doyle has given evidence in his affidavit of the work that went into the production of the document. It, of course, does not show any literary skill. It is, however, in my view, very arguably a compilation within the meaning of that term as discussed by Dixon J in that passage.
Quite clearly Mr Doyle went to considerable pains to produce a document which would, in his view, answer the requirements of being a proper pledge ticket. That is, it had to contain the material required by law. It had to contain it in a way which was reasonably assimilable. It had to contain it in a reasonably small space. He has given evidence of making many attempts to produce the ticket that he regarded as adequate. He discarded many such attempts and he finally produced a ticket which he regarded as one that answered the needs of his business, the needs of his customers and the requirements of the law.
Copies of the relevant ticket are to be found in the affidavit but as a matter of convenience I have been provided, as exhibit A, with the ticket that Mr Doyle produced, together with the ticket produced by the third respondent which is claimed to be an infringement. The question of infringement is necessarily a matter of fact and degree, as has frequently been said in the authorities. I have looked at, and am looking at as I give voice to this judgment, the two tickets. Although there are differences in the ticket of the third respondent it, in my view, plainly shows itself to be a copy of the ticket of the applicant. I do not regard the changes that have been made to it as preventing it from being, in substance, a copy and as such an infringing copy.
In these circumstances and looking at the matter purely at an interlocutory level I must consider whether, pending a final determination of these proceedings, an order of an interlocutory kind restraining the third respondent from utilising his ticket should or should not be made.
It is apparent that in the not too distant future all pawnbrokers will be producing, as an integral part of their business, pledge tickets which will be printed by computer. The thing to be said in favour of the applicant is that he has already established such a ticket to be used in the system that he seeks to market. There is no question of his having to repeat the not inconsiderable work that went into the production of the ticket. He is able to utilise it here and now. There is evidence placed before me that since other systems have come onto the market, particularly the one which is using what I have held to be an infringing copy of his ticket, there has been some falling off in his business. It is put on his behalf that if no order is made of an injunctive kind at this stage, then, as at the time the matter comes for final hearing, and on the basis that he is successful at that hearing, an inquiry as to damages will be an extremely time consuming and somewhat chancy affair. I think there is a lot of weight in that submission.
As against that it has been put that the third respondent will undoubtedly suffer inconvenience if it is prevented from using the pledge ticket that it currently uses, that it will either have to resort to the old system of manual production of tickets pending the disposal of these proceedings, or it will have to go to the trouble of having designed for it and put into operation a ticket which is not a copy or substantial copy of the applicant's ticket.
I have borne these submissions in mind in seeking to do what is after all no more than a balancing act that courts have to do in situations such as this. I have come to the conclusion that in all the circumstances it is appropriate that I grant interlocutory injunctive relief.
I order that the third respondent be restrained, until further order, from using in the conduct of its business known as the Cardiff Loan Office and the Valley Loan Office pawn tickets which are the same as or substantially similar to the pawn ticket an example of which is Annexure L to the affidavit of Reginald James Winston Doyle sworn 19 September 1996 and filed in these proceedings ("the pawn ticket"). I further order that the third respondent be restrained, until further order, from placing any orders for or otherwise authorising Norman Morris Printers or any other person or entity to print further copies of the pawn ticket.
I order that the costs of this application be costs in the cause. In making such an order I note that there has been some default on the part of the applicant in relation to the pleading in the matter, although I should hasten to add that I have no clear view that I would have made an order in the applicant's favour other than the order that I have in mind.
The orders I made are in the context of the usual undertaking as to damages having been given to the Court by counsel for the applicant.
I certify that this and the preceding ten (10) pages are a true copy of the reasons for judgment herein of the Honourable Justice M. L. Foster.
Associate:
Date: 14 OCTOBER 1996
A P P E A R A N C E S
COUNSEL FOR THE APPLICANT: J. IRELAND QC
INSTRUCTED BY: WEBSTER O'HALLORAN & ASSOCIATES
COUNSEL FOR THE RESPONDENT: J.E. ROBSON
INSTRUCTED BY: McNEIL JAMES
DATE OF HEARING: 14 OCTOBER 1996
DATE OF JUDGMENT: 14 OCTOBER 1996