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## A-ONE ACCESSORY IMPORTS PTY. LTD., NOEL BRUCE ROGERS AND STEPHEN ARTHUR BENNETT v. OFF ROAD IMPORTS PTY. LTD., ROSS BARTLEY KING AND JULIE ROBYN KING No. QG 111 of 1993 FED No. 225/96 Copyright

    COURT
    IN THE FEDERAL COURT OF AUSTRALIA
    QUEENSLAND DISTRICT REGISTRY
    GENERAL DIVISION
    DRUMMOND J
    HRNG
    BRISBANE, 9-10 March 1994
    #DATE 27:3:1996
    #ADD 29:4:1996

      Counsel for the applicant:        P D T Applegarth

      Solicitors for the applicant:     Bennett and Philp

      Counsel for the respondents:      A B Crowe

      Solicitors for the respondents:   Lane and Lane
    ORDER
    THE COURT ANSWERS the following questions:
        1.  Is the first applicant's 1991 catalogue an original work
        capable of protection under the Copyright Act 1968 (Cth)?  Yes

        2.  Who is the author or authors of the catalogue?  The second
        applicants.

        3.  Does the first applicant own the copyright in the catalogue?
        Yes

        4.  If the answers to questions (1) and (3) above are in the
        affirmative and the answer to question (2) is either the first
        applicant or the second applicants, have the first and/or second
        respondents infringed the copyright of the first applicant?  The
        first respondent and Mr. R.B. King, one of the second
        respondents, have infringed the copyright of the first applicant
        by producing the first respondent's 1993 catalogue.

    THE COURT ORDERS THAT:
        The costs of and incidental to the hearing of the questions for
        separate determination be reserved.
    NOTE:  Settlement and entry of orders is dealt with in Order 36 of the Federal
    Court Rules.
    JUDGE1
    DRUMMOND J   The first applicant, in its statement of claim alleges that it is
    the owner of the copyright in a literary work comprising its 1991 motorcycle
    parts catalogue known as "A-One Parts", and that the respondents have
    infringed that copyright by producing the first respondent's 1993 parts
    catalogue.  A major issue for my decision is whether the applicants' 1991
    catalogue is the product of copying of other catalogues, viz., the 1984
    Phoenix Imports and the 1991 Link International catalogues and so cannot be an
    original work the subject of copyright.

    2.  The second applicants, the second respondents and various of the witnesses
    have long been involved in the sale of imported motorcycle parts and, in
    particular, motorcycle chain sprockets:  they know each other, often having
    worked, at different times, with or for each other.  These sprockets are, in
    general, produced not by the makers of the motorcycles on which they are
    intended to be used, but by independent manufacturers outside Australia.
    Their attraction to consumers is that they can be substituted for the original
    manufacturer's sprockets, but are substantially cheaper than the authentic
    parts.  The sale of these substitute parts is a very lucrative area of
    business activity in Australia.

    3.  Capricorn Imports was in the early 1980s a major wholesaler of motorcycle
    sprockets.  Mr. Sakane was associated with it.  Capricorn Imports ceased
    trading in mid-1983, owing substantial amounts of money.  Sakane then
    approached two former employees of Capricorn Imports, Messrs. Rogers and
    Bennett, the second applicants, to invest in a new company.  This company,
    Brylyn No. 2 Pty. Ltd., traded under the name of Phoenix Imports.  Another
    person named Ward was also involved in Phoenix.  It operated as an importer
    and wholesaler in Australia of the parts.  In September 1985 a dispute arose
    between Ward and Sakane on the one hand, and Rogers and Bennett on the other.
    A settlement was agreed in December 1985.  It was this dispute which led to
    the formation of the first applicant.

    4.  A-One Accessory Imports Pty. Ltd. was incorporated in December 1985.
    Rogers and Bennett became directors on 27 March, 1986.  Rogers, who ceased to
    work with Phoenix in early January 1986, says he started work from his home on
    what became A-One's first, i.e., its 1986 catalogue, in January 1986.
    Bennett, who remained in Phoenix's employ until about the time he became a
    director of A-One, assisted Rogers in this work, as did Mr. Tierney, once he
    was in A-One's employ.  Tierney worked for Phoenix from about 1983 until early
    to mid March 1986, when he started work for A-One; he too became a director of
    A-One on 27 March, 1986. A-One appears to have commenced business in about the
    second quarter of 1986, selling some parts and accessories by wholesale.
    Although it was intended that its main business would consist of the importing
    and the sale to retailers of motorcycle sprockets, it was not until about July
    1986 that it was able to procure sprockets from Tachiki Industries, a Japanese
    manufacturer.  While it sells other motorcycle parts and accessories, the sale
    of sprockets and sprocket and chain sets to retailers accounts for
    approximately three quarters of A-One's business.  A-One first marketed
    sprockets only in Queensland and New South Wales.  It has since expanded into
    all States and the Northern Territory.  It supplies approximately 700
    retailers nationally.

    5.  Sakane continued to operate Phoenix until October 1987, when it went into
    liquidation.  He then set up Rancourt Pty. Ltd., which trades as Link
    International.  He says Link purchased equipment and stock from Phoenix.
    A-One also bought part of Phoenix's stock from the liquidators.  Link imports
    motorcycle sprockets and other parts and accessories from MC International,
    Jonthai Industries and Chiaravalli, which it sells by wholesale.

    6.  A-One and Link are in direct competition, being the two leading sprocket
    distributors in the Australian market.

    7.  The first respondent, Off Road Imports Pty. Ltd., was incorporated by Mr.
    King, one of the second respondents, in 1982.  It began importing motorcycle
    sprockets in January 1984.  Chiaravalli, an Italian manufacturer, was its
    supplier from January 1984 to July 1992.  From November 1992 its supplier has
    been PBR, another Italian company.  King says he worked from early December
    1992 to late February 1993 on the production of the Off Road catalogue that is
    the subject of A-One's copyright infringement claim.

    8.  Initially, it was the first applicant's claim to an interlocutory
    injunction that came on for hearing.  After considerable evidence was given,
    the first applicant abandoned this claim and the parties agreed on certain
    questions to be finally determined before the other issues in the litigation.
    The agreed questions are as follows:
        (1)  Whether the first applicant's 1991 catalogue is an original
        work capable of protection under the Copyright Act 1968 (Cth);

        (2)  Who is the author or authors of the catalogue;

        (3)  Does the first applicant own the copyright in the
        catalogue;

        (4)  If the answers to questions (1) and (3) above are in the
        affirmative and the answer to question (2) is "the applicant",
        have the first and/or second respondents infringed the copyright
        of the first applicant.

    9.  Although neither Sakane nor his company, Link International, is a party to
    the litigation, Sakane has taken a prominent part in it, actively supporting
    the respondents' case.  An issue at the hearing was whether A-One's first
    catalogue published in 1986 was copied from the then-current catalogue
    published by Sakane's old company, Phoenix.  It is a major issue because the
    1991 A-One catalogue, the subject of the applicants' infringement proceedings
    against the respondents, was the last of a series of A-One catalogues produced
    by Rogers and Bennett by intermittently updating A-One's 1986 catalogue.  The
    different versions of the A-One catalogue were described as the 1986, the
    1987, the 1990 and the 1991 A-One catalogues (although the 1991 A-One
    catalogue is sometimes referred to in the evidence as the "1992 A-One
    catalogue").  The respondents disputed the applicants' contentions that its
    1986 catalogue was an original work and that this updating work involved
    original work by Rogers and Bennett. The respondents asserted that the latter,
    in producing all A-One's subsequent catalogues, simply amended the 1986 A-One
    catalogue, which they had copied from a Phoenix catalogue, by copying from the
    various Link catalogues prepared by Sakane from 1987 to 1991.  The respondents
    thus contended that the 1991 A-One catalogue was not an "original" work within
    the meaning of that term in s. 32 the Copyright Act 1968 (Cth) ("the Act") and
    because it was therefore not the subject of copyright, there could be no
    question of infringement.  They also contended that neither Bennett nor Rogers
    was the "author" within the meaning of that term in s. 35 of the Act of any of
    the A-One catalogues, for the same reasons. Questions (1) and (2) thus
    overlap.

    10.  Question (3), which was formulated before Bennett and Rogers were joined
    as parties in the action, raised for determination whether A-One could be the
    owner of any copyright that might subsist in A-One's 1991 catalogue, even if
    Rogers and Bennett were the authors of that work, in view of the nature of the
    association between each of them and A-One in the period between its
    incorporation in December 1985 and their becoming directors at the end of
    March 1986:  by then, a lot of the work said by Bennett and Rogers to have
    been involved in compiling the first A-One catalogue had been done.  It was to
    meet the possibility that I might hold that Rogers and Bennett, rather than
    the applicant, owned the copyright in the first A-One catalogue that they were
    joined as parties in the course of the hearing.

    11.  The fourth question is that of infringement:  the issue here is whether,
    if A-One does have copyright in its 1991 catalogue, Off Road produced its 1993
    catalogue by copying that 1991 catalogue. Most of the hearing, however, was
    occupied with the question whether the 1991 A-One catalogue was an "original"
    work.  Hence Sakane's close interest and involvement in the case.

    THE 1986 A-ONE CATALOGUE
    12.  Rogers said he and Bennett started compiling the original A-One catalogue
    in January 1986.  He described an exhaustive exercise that involved, firstly,
    compiling a list of the sprockets which A-One planned to sell:  Rogers said
    that he and Bennett obtained information from a large number of retailers and
    from perusing several hundred readily available microfiches published by
    Japanese motorcycle manufacturers.  Detailed notes were made in the course of
    gathering all this information.  In these ways, Rogers said they got the
    information relating to year models of motorcycles and genuine sprocket part
    numbers relating to each of those year models which they needed for their
    catalogue.  This first step involved many weeks of work.  Rogers said he then
    looked through a number of Japanese trade journals, made enquiries and so
    located Tachiki Industries, which was prepared to manufacture the sprockets
    required by A-One.  Next, he provided the genuine sprocket part numbers to
    Tachiki so it could determine whether those parts were within its existing
    manufacturing range.  If not, either a sample of the part or the dimensions of
    the part was sent to Tachiki to enable it to be manufactured.  There was
    considerable correspondence between A-One and Tachiki before the indexing
    system and master list of sprockets could be finalised.

    13.  Bennett gave a broadly similar account of how the first catalogue was
    prepared, although he was not involved in this task to the same extent as
    Rogers.

    14.  Rogers and Bennett say that the first A-One catalogue was all their own
    work and made without reference to either the 1984 or 1986 Phoenix catalogue.
    Attention at the hearing was concentrated on whether A-One copied the 1984
    Phoenix catalogue (which was updated by the issue of replacement pages in 1985
    and 1986):  the 1986 Phoenix catalogue, in a quite different format from its
    1984 catalogue, was produced by Sakane at about the same time as A-One's 1986
    catalogue.  I accept what Rogers says to the effect that the format of the
    1986 Phoenix catalogue reduced its usefulness because it was compiled by
    reference to motorcycle engine capacities rather than to sprocket types; it
    was not popular with retail outlets. When he prepared the first Link catalogue
    in 1987, Sakane reverted to the format of the 1984 Phoenix catalogue.

    15.  Both Rogers and Bennett claim that neither had access to a copy of the
    1984 Phoenix catalogue at the time the first A-One catalogue was compiled.
    Each gave mutually inconsistent explanations for why he did not take a Phoenix
    catalogue with him when he left Phoenix. They say that while they cannot
    recall when A-One acquired copies of the 1984 and 1986 Phoenix catalogues, it
    was sometime well after the preparation of the first A-One catalogue.  The
    position adopted by Bennett and Rogers is summarised in evidence Bennett gave
    to the effect that, while the first A-One catalogue recorded some information
    from the Phoenix catalogue with which he and Rogers were familiar and which
    they had retained in their respective memories, their catalogue was one which
    they "created from scratch", from the genuine part numbers which they obtained
    in various ways I have mentioned.

    16.  I do not accept their claim.  I think they made extensive use of the 1984
    Phoenix catalogue in compiling the first A-One catalogue.  For reasons later
    appearing, I am not prepared to accept their evidence unless it is supported
    by other independent evidence.  As will also appear, I have formed the same
    view of King's and Sakane's creditworthiness.  The other witnesses, including
    those who are still associated with A-One and Link, I consider to be generally
    reliable.

    17.  The 1986 A-One and the 1984 Phoenix catalogues are very similar to look
    at. The format of both is a five column table.  In his initial evidence,
    before he was aware of Sakane's support for the respondents, and when the only
    issue that had arisen was whether Off Road had copied A-One's 1991 catalogue,
    Rogers said that when he and Bennett started up A-One they wanted it to have
    its own indexing system for the A-One parts range;  he also said that it was
    he who devised the indexing system to identify sprockets that was the basis of
    the 1986 and subsequent A-One catalogues.  He claimed this system was unique
    to A-One.  A typical entry (from the 1991 catalogue) reads as follows:
        10-045-12  23801-045-671  12T  (STD 12T)  Z50  $4.40

    18.  The first column contains the number devised by A-One that identifies a
    sprocket stocked by it.  "10" indicates a front sprocket ("11" indicates a
    rear sprocket).  "045" is the key part of the original manufacturer's
    catalogue number for the authentic part. "12" refers to the number of teeth on
    the sprocket.  In the second column, "23801-045-671" is the part number for
    the authentic spare part (devised in this case by Honda).  Rogers said that he
    decided to take the key element of the original part number ("045") and
    incorporate it in A-One's own reference number.  In the third column, "12T" is
    another reference to the number of teeth on the particular sprocket.  In the
    fourth column, "STD 12T" refers to the number of teeth on the original
    manufacturer's (i.e., Honda's) standard sprocket and "Z50" identifies Honda's
    motorcycle model to which that Honda sprocket is fitted and to which the A-One
    sprocket can also be fitted.  "$4.40" is A-One's price for the sprocket that
    can be substituted for the authentic part. Rogers said the most important part
    of the indexing system is the first column and that A-One's suppliers have
    incorporated these numbers in their own record systems, as have many of
    A-One's retailers.  He said it enables these retailers to identify the A-One
    sprockets that will meet the needs of the retailers' customers, who are,
    between them, the owners of a wide range of motorcycle models.  By using only
    this group of numbers, A-One can order sprockets from its suppliers, who
    invoice A-One by reference to those same numbers, and A-One's retailers can
    similarly order their requirements from A-One by reference only to these same
    numbers.  Each organisation engaged in the sale of sprockets needs some such
    indexing system. The catalogue is described by Rogers as A-One's "bible".

    19.  Despite what Rogers initially said, it became obvious as the evidence
    unfolded that he did not "devise" this layout or what he describes as the
    "indexing system".  The features initially claimed by Rogers to be distinctive
    in A-One's original catalogue, and which are found in Off Roads' allegedly
    infringing catalogue, are also found in Phoenix's 1984 catalogue and in the
    catalogues of other traders involved in the sale of motorcycle sprockets:
    see, for example, the sprocket catalogue issued in March 1979 by London
    Trading, which wholesaled motorbike sprockets in Australia from 1964 to 1990,
    which is typical of its catalogues in use at about that time.  Although there
    is no suggestion that A-One copied anything from London Trading's catalogues,
    its catalogue adopts a classification system that is not materially different
    from A-One's. Moreover, the first column of London Trading's catalogue
    contains the same information in similar form to that in the first column of
    A-One's catalogues, which Rogers, in his first affidavit, said was "the most
    important part of the whole indexing system" devised by A-One. Although a
    little different from A-One's catalogue in the order in which the information
    is displayed, the catalogue of another trader, Western Motorcycle Accessories,
    in use at least in the period November 1983 to July 1985, contains much the
    same information as that contained in A-One's catalogue and precisely the same
    information in the first column of the sprocket catalogue that Rogers claimed
    in his first affidavit was such a significant part of A-One's catalogue.

    20.  The only difference between the 1984 Phoenix catalogue and the 1986 A-One
    catalogue, in terms of layout, is the use of a double broken line instead of
    "do", representing "ditto", in the fourth column. The only significant
    difference in the form in which the information is presented is that, in the
    Phoenix catalogue, in the first column, the numeral "31" designates a front
    sprocket and the numeral "32" designates a rear sprocket, while A-One uses
    instead the numerals "10" and "11".  Rogers denies that he adopted the double
    broken line and these designations for front and rear sprockets to make the
    A-One catalogue appear different to the Phoenix catalogue.  The witness
    Williams, however, says that in a conversation which he had with Rogers at the
    time he left Phoenix in mid 1986 to work for A-One, he asked Rogers how the
    A-One catalogue was going to be different from the Phoenix catalogue.  Rogers
    replied that the designations for the front and rear sprockets would be
    different.

    21.  There is nothing distinctive about the form (as opposed to the detailed
    contents) of the indexing system adopted by A-One in its first catalogue and
    which it has used since then.  It is a system that was adopted by a number of
    traders before (and after) A-One produced its first catalogue because it is an
    obvious and convenient one for assembling, in a readily accessible way, the
    information required if a catalogue of motorcycle parts is to be useful to
    suppliers, retailers and consumers.  Sakane was as unjustified in his claim,
    in his early evidence, that it was he who devised this layout and indexing
    system while he was with Phoenix, as was Rogers in making a similar claim.

    22.  It is understandable that, in his later evidence, Rogers abandoned what
    he had first said about the allegedly significant features of A-One's
    catalogue and then focused on other matters.  In his later evidence, he said
    that the most important part of the first A-One catalogue was the extent of
    the interchangeability which he and Bennett had identified and recorded in
    that catalogue:  a sprocket is interchangeable with another sprocket if one
    sprocket bearing the original manufacturer's identification number and
    intended by the manufacturer to be fitted to a particular model of motorcycle
    produced by that manufacturer can also be fitted to other models of
    motorcycle.  Where two or more are interchangeable, it is necessary to stock
    only one of those sprockets. The reduction in the trader's inventory that
    interchangeabilities permit is of advantage to both traders such as A-One and
    to their retailers.  Counsel for the respondents pointed out that Rogers'
    emphasis on interchangeability only arose late in the proceedings; in Rogers'
    first affidavit, interchangeability was not mentioned at all.  The fact that
    A-One initially relied on a case apparently destructive of Off Road's denial
    of any infringement of A-One's copyright in its 1991 catalogue but which, in
    major part, was revealed as never having any substance, does not enhance the
    credibility of Rogers or Bennett.

    23.  Mr. Tierney was an employee of Phoenix from early 1983 to March 1986,
    when he went to  work for A-One.  Initially, he was employed by A-One as a
    storeman and warehouse manager.  He was a director of A-One from 27 March,
    1986 to 29 December, 1989.  He gave oral evidence only, under subpoena issued
    by Off Road. I regard him as a reliable witness.  He was, I think, independent
    of both sides; no attempt was made by A-One to attack his credit, although it
    was suggested that his recollections were, in some important respects,
    mistaken.  Although he was not dogmatic in his evidence, I accept it as
    establishing that, contrary to the evidence of Rogers and Bennett, in
    producing the first A-One catalogue, they did make fairly extensive use of the
    1984 Phoenix catalogue.  While Tierney says that "we had to start from scratch
    to make" the first A-One catalogue, he also said it was common practice in the
    motorcycle industry for everyone to have everyone else's catalogues.  I accept
    this.  Although they denied using other catalogues in the course of preparing
    the 1986 A-One catalogue, Bennett and Rogers acknowledged that, subsequent to
    preparation of this first catalogue, they did acquire copies of other traders'
    catalogues, including the Phoenix ones.  It is essential for a dealer in
    motorcycle parts to have its competitors' catalogues to be able to deal with
    queries from, for example, a retailer who may want parts from that dealer, but
    who refers to those parts by reference to a competitor's catalogue. Tierney
    said that at the time Bennett, Rogers and he were working on A-One's first
    catalogue, there were lots of other traders' catalogues in A-One's office,
    although he does not recall actually seeing Rogers, who seems to have done
    most of the work, with another's catalogue open in front of him while he was
    actually working on preparing the first A-One catalogue.

    24.  Tierney said that in helping to produce the first A-One catalogue, he
    worked from some typewritten pages, some handwritten pages and photocopies of
    some other printed pages, which Rogers gave him.  He had what I think is a
    clear impression that the photocopies were of pages of the 1984 Phoenix
    catalogue.  He had worked for Phoenix for three years.  He was very familiar
    with that catalogue.  He used it in the course of his employment on a daily
    basis.  He also became familiar with other dealers' catalogues when working at
    Phoenix; he did not think the photocopies were from other dealers' catalogues.
    Tierney also says the photocopied pages had handwritten amendments on them,
    which he thought were in Rogers' handwriting.  These handwritten amendments
    took the form of additions of motorcycle models and sprockets not listed in
    the photocopied pages, and of deletions of sprockets listed in those pages
    which A-One was not going to carry.

    25.  Quite apart from Tierney's evidence, it is, in my opinion, probable that
    Bennett and Rogers would have used the current version of the 1984 Phoenix
    catalogue available to them as the basis upon which they prepared the first
    A-One catalogue.  They had assisted in the preparation of this catalogue when
    they were working for Phoenix and were familiar with it.  It contained a
    convenient list of many of the sprockets they were interested in selling and
    the original manufacturers' parts numbers, together with an extensive list of
    the various models of motorcycle on which each sprocket could be used. It is
    unlikely that Bennett and Rogers would, as they claimed, have begun entirely
    afresh when such an extensive compilation of useful information with which
    they were familiar was available to them.

    26.  I find that Rogers and Bennett had available to them a version of the
    1984 Phoenix catalogue from which they copied extensively in preparing the
    first A-One catalogue.

    27.  Rogers compared the entries in the 1986 A-One catalogue with those in the
    1984 Phoenix catalogue to identify the differences between the two.  Mr. King
    carried out a similar comparison to show the similarities, although he
    compared the first A-One catalogue and the 1984 Phoenix catalogue in which the
    updates issued at the end of April/early May 1986 were incorporated.  Both
    comparisons present essentially the same picture.  They show that there is a
    lot of information common to both catalogues, presented in the same format in
    each, and thus support the proposition that Bennett and Rogers copied a
    substantial part of the 1984 Phoenix catalogue.  They also confirm that the
    1986 A-One catalogue is a more complete one than either version of the 1984
    Phoenix catalogue in that the A-One catalogue covers a wider range of
    sprockets and motorcycle models. The extent to which the A-One catalogue
    contains information additional to either version of the 1984 Phoenix
    catalogue also confirms that Bennett, but particularly I think Rogers, did
    perform a significant amount of original work which they incorporated, along
    with the material copied from the Phoenix catalogue, into the first A-One
    catalogue.

    28.  I accept what Bennett and Rogers have to say about making extensive use
    of the manufacturer's microfiches:  I think they used this information, both
    for checking the information in the Phoenix catalogue from which they were
    working, and for identifying the new information recorded in the A-One
    catalogue concerning those sprockets which were not mentioned in the Phoenix
    catalogue. Tierney corroborates their evidence here.  I also accept Bennett's
    evidence that there were mistakes in the Phoenix catalogue, particularly in
    the notations of motorcycle model numbers, corroborated as it is by Tierney's
    evidence.  I accept that such mistakes were corrected in the first A-One
    catalogue.  Rogers also says the 1986 A-One catalogue eradicated some
    "duplication" of identical sprockets listed in the 1984 Phoenix catalogue.  I
    accept his unchallenged evidence here, including his evidence that some of
    those "duplications" were later picked up by Sakane and do not appear in the
    1986 Phoenix catalogue or in the Link catalogues.  I also accept that Rogers
    and Bennett identified a small but still significant number of
    interchangeabilities which they recorded in the A-One catalogue, but which are
    not identified in any version of the 1984 Phoenix catalogue.  In addition to
    copying extensively from the 1984 Phoenix catalogue in producing the 1986
    A-One catalogue, Rogers and his associates therefore carried out a
    considerable amount of work of their own that involved real skill and judgment
    and a large amount of labour.

    29.  But for the fact that Rogers and Bennett, in producing the first A-One
    catalogue, copied a substantial part of the 1984 Phoenix catalogue, there
    could, I think, be no doubt that the skill, judgment and labour expended by
    them in selecting the information about the sprockets A-One would sell and in
    giving written expression to that work of selection would be sufficient to
    qualify the 1986 A-One catalogue as an original compilation which is subject
    to copyright.

    30.  Copyright subsists in an "original literary work":  s. 32 of the Act.
    The expression "literary work" is defined in s. 10 to include: "a table, or
    compilation, expressed in words, figures or symbols ..."  Trade catalogues are
    capable of constituting original literary works: University of London Press
    Ltd. v University Tutorial Press Ltd. (1916) 2 Ch 601 at 608; Purefoy
    Engineering Co. Ltd. v Sykes Boxall and Co. Ltd. (1955) 72 RPC 89 at 95.

    31.  The cases repeatedly say that whether a compilation has sufficient
    originality to attract copyright protection depends on the degree of skill,
    judgment or labour which has been involved in producing it. See Ladbroke
    (Football) Ltd. v William Hill (Football) Ltd. (1964) 1 W.L.R. 273; Football
    League Ltd. v Littlewoods Pools Ltd. (1959) Ch 637 at 650-1; Blackie and Sons
    Ltd. v The Lothian Book Publishing Company Pty. Ltd. (1921) 29 CLR 396 at
    398-399; Real Estate Institute of New South Wales v Wood (1923) 23 SR(N.S.W.)
    349 at 352.

    32.  So far as compilations that consist entirely of existing material, i.e.,
    material not created by the compiler, are concerned, Ladbroke (Football) Ltd.,
    supra, is authority that originality may be found, and a claim of copyright
    may therefore subsist, by virtue of selection alone.  See 277-278, per Lord
    Reid; 286-287, per Lord Hodson; 289-290, per Lord Devlin; and 292, 293, per
    Lord Pearce.  In Collis v Cater, Stoffell and Fortt Ltd. (1898) 78 LT 613, a
    decision that has "never been doubted" (Ladbroke (Football) Ltd., supra, at
    290) copyright was held to exist in a chemist's catalogue "although it
    contained 'nothing whatever but a simple list' of drugs, etc. with names and
    prices which the plaintiff kept in stock or could obtain to order":  Ladbroke
    (Football) Ltd., supra, at 278. That copyright can exist in such a mundane
    compilation of information readily available to all shows why the skill,
    judgment and labour in selecting what to include in a trade catalogue will be
    as relevant as the often very limited skill, judgment and labour involved in
    putting that selection into written form, in determining whether the
    compilation has sufficient "originality" to attract copyright.

    33.  In considering whether a compilation that wholly consists of or that
    includes existing material is itself an original work, the question is whether
    the compilation, looked at as an entity, is original:  it is not proper to
    dissect the work into its parts, and by determining that the individual parts
    lack originality, to deny originality to the whole work.  This issue is dealt
    with fully in Ladbroke (Football) Ltd., supra.  The reason is that by s. 32 of
    the Act, "copyright is a statutory right which ... would appear to subsist, if
    at all, in the literary or other work as one entity", per Lord Hodson at 285.
    See also Ladbroke (Football) Ltd., supra, at 276-277, 290 and 291.  Copyright
    in a work will be infringed by the unauthorised reproduction of a substantial
    part of the work - see ss. 36(1) and 14(1) of the Act.  In determining whether
    that has occurred, it is sometimes said that the question is whether the part
    taken could by itself be the subject of copyright.  But as Lord Reid said, at
    277, when both the questions whether copyright subsists in a work and, if so,
    whether it has been infringed are in issue:
        "... that is only a shortcut, and the more correct approach is
        first to determine whether the plaintiffs' work as a whole is
        'original' and protected by copyright, and then to inquire
        whether the part taken by the defendant is substantial."

    34.  The correctness of this approach is manifest here:  it is clear that the
    effort expended by Rogers and Bennett in selecting the information to be used
    was directed to the preparation of a self-contained catalogue for use by A-One
    in its business, i.e., an up-to-date, complete listing of information about
    sprockets for a wide range of motorcycles in service in Australia.  Cf.
    Ladbroke (Football) Ltd., supra, at 290 and 293.

    35.  Skill, judgment or labour expended in the process of copying a particular
    work or portion of a particular work, as distinct from selecting material to
    be copied into a compilation, cannot confer originality; but even if the
    effort involved in producing a compilation is mostly devoted to copying
    another work or works, a relatively small alteration or addition
    quantitatively may suffice to convert that which is copied from an earlier
    work into a new and original work in which copyright will subsist.  Whether it
    does or not is a question of degree having regard to the quality, rather than
    the quantity of the addition: Interlego A.G. v Tyco Industries Inc. (1989) 1
    AC 217 at 263.

    36.  The effort expended by Rogers and Bennett in selecting the material that
    is contained in the 1986 A-One catalogue from manufacturers' microfiches and
    other sources is quantitatively substantial when compared with the material in
    the A-One catalogue copied from the Phoenix catalogue.  That additional
    material also has substantial qualitative significance by enhancing the
    accuracy and completeness of the A-One catalogue.  Prima facie, A-One
    therefore has copyright in the whole of its 1986 catalogue.  But if the extent
    to which Rogers and Bennett copied material from the Phoenix catalogue makes
    the A-One catalogue an infringement of the Phoenix work, does this prevent
    A-One having copyright in its catalogue?

    37.  I think the 1986 A-One catalogue is an infringement of the copyright in
    the 1984 Phoenix catalogue.  If the later compiler copies the whole or a
    substantial part of the earlier list, he will have infringed any copyright
    that exists in that earlier list.  Whether a substantial part of the copyright
    material has been copied depends "not merely on the physical amount of the
    reproduction, but on the substantial significance of that which is taken."
    Ladbroke (Football) Ltd., supra, at 283, 288, 293.  That is, it depends on the
    quality of the portions copied.  In this context, "quality" means that if the
    portion copied is a "vital or material" part in relation to the work as a
    whole, the part copied can involve substantial reproduction, even though it is
    only a small part of the whole work in terms of quantity.  See Dixon
    Investments Pty. Ltd. v Hall (1990) 18 IPR 490 at 494-495.     Because they
    compiled the A-One catalogue by reproducing in it extensive portions of the
    1984 Phoenix catalogue, the production of the 1986 A-One catalogue infringed
    the copyright in the 1984 Phoenix catalogue.

    38.  It is unnecessary to reach a conclusion on the ownership of the copyright
    in the 1984 Phoenix catalogue (assuming it does have copyright protection).
    The evidence of Tierney, Young and Williams lends more support to the evidence
    of Sakane that he was responsible for the preparation of this catalogue than
    it does to the evidence of Bennett and Rogers that they had an extensive
    involvement in the production of that catalogue.  Sakane is not a party to
    these proceedings.  However, even if Sakane was, to a very substantial extent,
    the author of the 1984 Phoenix catalogue and even if he performed this work
    only in his capacity as a director of Phoenix and not in the course of his
    employment under a contract of service with Phoenix, it is likely that Phoenix
    or rather Brylyn No. 2 Pty. Ltd., which went into liquidation long ago and has
    probably now been dissolved, would be the beneficial owner of the copyright in
    the catalogue.  Cf. Antocks Lairn Ltd. v I. Bloohn Ltd. (1971) F.SR 490.  It
    may well be that any copyright that may exist in the Phoenix catalogue is
    vested, by force of s. 576 the Corporations Law, in the Australian Securities
    Commission.

    39.  But, in my opinion, the fact that the 1986 A-One catalogue may be an
    infringement of the copyright in the 1984 Phoenix catalogue does not prevent
    A-One having copyright in its own 1986 catalogue.

    40.  I do not read Ladbroke (Football) Ltd., supra, as limiting the
    proposition that, so far as compilations that consist of or include existing
    material are concerned, originality for the purposes of copyright can be found
    in the work of selection, to compilations consisting only of material that is
    not the subject of copyright. In that case, Lord Pearce, in the course of
    dealing with the question whether the defendants had infringed the plaintiff's
    copyright in their football coupon by reproducing a substantial part of it,
    said, at 293:
        "The reproduction of a part which by itself has no
        originality will not normally be a substantial part of the
        copyright and therefore will not be protected.  For that which
        would not attract copyright except by reason of its collocation
        will, when robbed of that collocation, not be a substantial part
        of the copyright and therefore the courts will not hold its
        reproduction to be an infringement.  It is this, I think, which
        is meant by one or two judicial observations that 'there is no
        copyright' in some unoriginal part of a whole that is copyright.
        They afford no justification, in my view, for holding that one
        starts the inquiry as to whether copyright exists by dissecting
        the compilation into component parts instead of starting it by
        regarding the compilation as a whole and seeing whether the
        whole has copyright.  It is when one is debating whether the
        part reproduced is substantial that one considers the pirated
        portion on its own."

    41.  Although Lord Pearce was dealing with the question of infringement where
    the copyright work was composed of non-original and original material, His
    Lordship, in the latter part of this statement, in my opinion, clearly
    accepted that copyright can exist in a compilation even though the compilation
    consists of partly pirated material and partly non-pirated material.  This
    would seem to follow logically from what the House of Lords had to say in
    Ladbroke (Football) Ltd. to the effect that, so far as compilations of
    existing material are concerned, originality sufficient to attract copyright
    in a compilation can be found entirely in the work of selecting the material
    to be included in the compilation, as opposed to the work of reducing those
    selections to written form.

    42.  In Macmillan v Suresh Chunder Deb (1900) 1 Ind LR, 17 C 951, a decision
    universally approved, the work of selecting poems, which included a group the
    subject of copyright (see Macmillan and Co. Ltd. v K. and J. Cooper (1924) 130
    LT 675 at 680 RHC) for compilation into an anthology was held sufficient to
    confer originality and so copyright on the anthology:  see 130 LT at 680 LHC.
    The compiler had the consent of the owners of the copyright in the group of
    copyright poems to include them in his compilation (see 130 LT at 680 RHC).
    Consent is obviously relevant to the question:  does the compilation infringe
    the copyright that may exist in any of the material included in it?  But the
    presence or absence of such consent cannot be relevant to whether the work of
    selecting from existing material, including existing copyright material, to
    make a compilation, is sufficient in the particular case to confer originality
    on the compilation.  Consent cannot turn material in which someone else has
    copyright and which material is selected by the compiler into his original
    material.

    43.  In Redwood Music Ltd. v Chappell and Co. Ltd. (1982) RPC 109, one of the
    issues was whether the owner of copyright in an original musical work could
    claim ownership of copyright in an arrangement of the original work because it
    was an adaptation of the original work made in breach of copyright in the
    original.  Goff J held that the answer depended upon whether the infringing
    arrangement itself constituted an "original" work.  He pointed out that the
    relevant section of the Copyright Act (UK), like s. 32(1) of the Act, provided
    that copyright subsists in every original literary, dramatic, musical or
    artistic work and that this cannot be read as limited to lawful or
    non-plagiarised original works.  So long as the arrangement involved
    sufficient originality to qualify it as an original work within the meaning of
    that term in the Act, it would not therefore matter that the arrangement was,
    in part, an infringing reproduction of an earlier piece.  While the author of
    the arrangement would be liable to the owner of copyright in the earlier piece
    for its infringement, he would himself own copyright in the infringing
    arrangement, given that the arrangement satisfied the test of originality.  As
    Goff J observed at 120, to hold that copyright cannot subsist in a version of
    a work made in infringement of the copyright in the original work would mean
    that the original copyright owner would, in addition to his undoubted
    entitlement to restrain publication of an infringing work, be entitled to reap
    the benefit of the infringer's original work by exploiting it for his own
    benefit, however extensive such original work might be.

    44.  In Warwick Film Productions Ltd. v Eisinger (1969) 1 Ch 508, the question
    was whether the defendant had infringed the copyright in what was called the
    "Hyde book", an account of the trials of Oscar Wilde, by copying extensive
    passages appearing in the Hyde book. Those same passages, however, had been
    copied by the author of the Hyde book from an earlier book.  The plaintiff,
    who had copyright in the Hyde book, failed to prove that it also had copyright
    in the earlier book.  Plowman J held that even though the Hyde book may have
    infringed the copyright in the earlier book because of the copying it
    included, it was itself an original literary work in which copyright
    subsisted, saying, at 524-525:
        "Although Hyde's account of the proceedings of the trials was
        substantially copied from the account in 'Three Times Tried',
        he himself did a good deal of editing.  Certain portions of his
        account printed in square brackets were his own contribution,
        and he added material, omitted material, made verbal
        alterations, rearranged material, transposed material and
        abbreviated material.  ...  Moreover, Hyde frequently put into
        oratio recta speeches which are reported in 'Three Times Tried'
        in oration obliqua.

        Again, I take the view, after reading it, that the (Hyde) book
        as a whole is a literary work entitled to copyright in its own
        right."

    45.  Ladbroke (Football) Ltd., supra, Redwood Music, supra, and Eisinger,
    supra, proceed on the basis that a composite work made up of pirated material
    and original material produced by the compiler can itself be an original work
    possessing copyright, even though it may also infringe the copyright in the
    pirated material included in it.

    46.  In my opinion, a work can be an original work in which copyright will
    subsist, even though it is itself an infringement of the copyright in an
    earlier work because it is, in part, a copy of a substantial part of that
    copyright work.  This will be the position provided the later work includes
    qualitatively significant changes to the copied material.

    47.  The 1986 A-One catalogue is an infringement of the copyright that may
    exist in the 1984 Phoenix catalogue, because of the substantial amount of
    material the A-One catalogue contains which was copied from the Phoenix
    catalogue.  But that A-One catalogue is also in its entirety an original
    compilation in which copyright subsists because of the skill, judgment and
    effort that Rogers and his assistants expended in making the additions to and
    deletions from the information recorded in the Phoenix catalogue to which I
    have referred.  In my opinion, it is also relevant to take into account, in
    assessing the originality of the 1986 A-One catalogue, that Rogers and Bennett
    corrected errors in the Phoenix catalogue, particularly in its recording of
    motorcycle model numbers. While the correction of, e.g., spelling errors in a
    literary script could not be relevant to the question of the originality of
    the corrected script, the object of a sprocket catalogue is to provide an
    accurate compilation of information as to the various sprockets that can be
    used on a wide range of motorcycles.  Work done to enhance the accuracy of an
    existing compilation of that sort, intended to be put to such a use, involves
    skill and labour of the same quality as the effort expended in selecting new
    material for inclusion in the compilation and can therefore be relevant in
    determining whether the corrected compilation is itself an original work.
    Because of this expenditure of effort on deciding upon and then making these
    changes, and on making the corrections to the Phoenix catalogue, the whole
    1986 A-One catalogue is an original work within s. 32 of the Act and is
    therefore copyright.  It is therefore unnecessary, in order to dispose of the
    present case, to decide whether copyright can subsist in a compilation made up
    entirely of extracts pirated from a range of copyright works or to decide
    whether the effort Rogers expended in selecting the extensive portions of the
    Phoenix catalogue for copying into the A-One catalogue, in infringement of the
    copyright in the Phoenix catalogue, can also be relied on by A-One in support
    of the contention that the A-One catalogue is itself protected by copyright.

    THE AUTHORSHIP OF THE 1986 A-ONE CATALOGUE
    48.  The author of an original work is the first owner of copyright in the
    work: s. 35(2) of the Act.  The only contenders for authorship of each of the
    A-One catalogues in this case are the first and second applicants and Tierney.
    While it is not possible to date precisely when in the first half of 1986 the
    first A-One catalogue was complete, it is clear from Mr. Williams' evidence
    that, soon after he commenced work for A-One in June 1986, the catalogue was
    published in multiple copies.  By the beginning of July, he was distributing
    them to dealers. It is likely, having regard particularly to the evidence of
    Tierney, that what Rogers said in cross-examination, to the effect that the
    work of compiling the information for the catalogue was largely complete by
    the latter part of April, is correct.  The correct view of the evidence may be
    that all the essential work that resulted in the publication of A-One's 1986
    catalogue had been done prior to 27 March, 1986 when Bennett and Rogers became
    directors of the company and prior to A-One commencing trading and that the
    legal relationship between each of them and A-One, prior to that date, did not
    amount to a relationship of employer and employee.  A-One would not therefore
    be able to establish its ownership of copyright in the catalogue in reliance
    on s. 35(6).  Even so, I think the inference to be drawn from all the
    circumstances is that, in doing the work of compilation of the catalogue prior
    to 27 March, 1986, Rogers and Bennett intended that the company, whose
    business they were in the process of setting up, was to be the beneficial
    owner of the product of the work they put into compiling the catalogue.  I
    therefore think that Bennett and Rogers made themselves trustees for the
    company, incorporated in December 1985 but only acquired by them in March
    1986, of copyright in their work done prior to 27 March, 1986.  An equitable
    interest of the kind I think was created by Bennett and Rogers here, can be
    created (as distinct from being assigned, something permitted by s. 196)
    without writing.  See generally Copinger and Skone James on Copyright, 13th
    Ed., para. 4-67.  If, however, I am wrong in saying that the first applicant
    owns the copyright in the 1986 A-One catalogue, Rogers and Bennett, as the
    authors of the catalogue, are the joint owners of the copyright in it.

    49.  I doubt that Tierney was sufficiently involved in the creation of the
    A-One catalogue to be its joint author with Rogers and Bennett. He commenced
    to work with Rogers and Bennett in early to mid March 1986 as a storeman and
    warehouse manager on a weekly salary and, at the direction of Bennett and
    Rogers, assisted them in compiling the catalogue.  His evidence was that his
    own input was very much less than that of Rogers'.  I have already explained
    why I consider that Bennett and Rogers did not retain any beneficial interest
    for themselves in the copyright in the 1986 A-One catalogue they produced,
    even if they were not then employees of A-One.  What Tierney did was done
    under direction by way of assisting them in their task of compiling the
    catalogue for the company. Tierney so acted in the course of his duties as an
    employee.  There is no suggestion that he purported to reserve for himself any
    interest in or rights to the work he produced in connection with the
    catalogue. Even if, for the reason contained in Copinger and Skone James,
    supra, at para. 7-5, copyright in any work of which Tierney could be said to
    be joint author with Rogers and Bennett did not vest in A-One as Tierney's
    employer pursuant to s. 35(6) of the Act, the circumstances are such as to
    show, in my opinion, that Tierney acquired no beneficial interest in the
    copyright in anything that he produced, but the entire beneficial interest in
    any such copyright vested in A-One.  See Copinger and Skone James, ibid.

    THE 1987 A-ONE CATALOGUE
    50.  Rogers said that A-One has used essentially the same catalogue since late
    1986 when the first edition of the catalogue was produced.   A-One issued its
    first updated version of its 1986 catalogue in 1987.  The gathering of new
    information is a continuous activity.  Each subsequent edition was only issued
    when a sufficient amount of updated information had been accumulated to
    justify a new issue.  Rogers said that updated information is obtained from
    various sources:  from Tachiki Industries, pursuant to arrangements made on
    A-One's first visit to Tachiki Industries to ensure the exchange of
    information when new motorcycle models are released; by A-One's staff
    gathering information about new models and about possible interchangeabilities
    when visiting A-One dealers (e.g., by measuring hub sizes and sprockets); by
    Rogers reading manufacturers' microfiches as they are published and from
    customer responses.

    51.  Mr. Neilson, who worked with A-One from about July 1986 until about
    November 1990 and who was at one stage a director of the company, has worked
    for Sakane since early 1991.  He said that, while with A-One, he did a lot of
    work compiling updated information for use in future editions of the A-One
    catalogue. Initially, Rogers said that Bennett and himself were mainly
    responsible for the updating process, although Tierney also assisted.  Later,
    Rogers acknowledged that Neilson was extensively involved in updating the
    A-One catalogue.  Neilson confirmed what Rogers had to say about the updating
    information being obtained from manufacturers' microfiches and customers.
    However, he also said that he used the catalogues of all A-One's competitors
    as an additional source of such information. While Rogers admits that A-One
    did keep copies of competitors' catalogues, he denies using them to obtain
    updated information for inclusion in new editions of A-One's catalogues.  I
    accept, however, what Neilson says in preference to Rogers' evidence.

    52.  The work of updating involved the incorporation of information relating
    to new releases of existing models of motorcycle and new models not previously
    included in A-One's existing catalogue; the incorporation of new sprockets not
    offered by the original manufacturer; the deletion of superseded, discontinued
    or low-demand sprockets and motorcycle models; the rectification of mistakes;
    the inclusion of newly identified interchangeabilities; and the addition of
    super-sprockets.  There appear to be five entries in the 1987 catalogue
    referring to super-sprockets.  Rogers does not claim that he was the first
    person to develop super-sprockets:  that appears to have been done by the "Mr.
    T" organisation.  But he said that at some time in 1987, he and Bennett
    decided to introduce a range of super-sprockets into the A-One catalogue.
    A-One had made super-sprockets that had a large number of holes drilled in
    them so that a small number of super-sprockets could be fitted to a wide range
    of motorcycles. They enable a dealer to reduce the number of sprockets it has
    to stock.  Rogers said A-One got its first shipment of super-sprockets in late
    1987/early 1988. They first appeared in the 1987 A-One catalogue.  However,
    Rogers agreed in cross-examination that the great majority of additions to the
    1987 A-One catalogue related to new model motorcycles released after the issue
    of the Phoenix catalogue, a point made by Sakane.  But, Sakane acknowledged
    the obvious, i.e., that it was important to include such information.

    53.  It is clear that most of the differences between the 1986 A-One catalogue
    and its 1987 catalogue are due to the inclusion in the second catalogue of
    information relating to new motorcycle models released after the issue of its
    1986 catalogue.  There is no evidence suggesting that A-One produced this
    information by simply copying material from its competitors' catalogues,
    including the one Phoenix catalogue which was issued soon after the issue of
    A-One's first catalogue:  it is unlikely that this 1986 Phoenix issue would
    have contained much information on the few new models likely to have been
    released only after publication of the 1986 A-One catalogue but before the
    1986 Phoenix catalogue was issued.  Given this and given that Neilson confirms
    what Rogers says about obtaining this sort of updating information from
    manufacturers' microfiches and discussions with customers, I think it likely
    that the updating of A-One's 1986 catalogue, reflected in its 1987 one, was
    due, in large part, to Neilson and to other A-One employees working from the
    microfiche material.

    54.  If it were necessary to reach a conclusion on the point, I would hold
    that A-One had copyright in its 1987 catalogue, as well as having copyright
    separately in its 1986 catalogue, even though the changes made to the second
    catalogue were relatively minor.  A new edition of a compilation of
    information relating to a constantly changing subject matter that provides
    up-to-date information about that subject matter is, I think, an original
    work, so long as there is more than a trivial difference between the new
    edition and its predecessor.  See H. Blacklock and Co. Limited v C. Arthur
    Pearson Limited (1915) 2 Ch 376 at 384 and Interlego A.G. v Tyco Industries
    Inc., supra, at 263. The position may well be different in relation to a new
    edition of a work of higher literary quality than a compilation of readily
    available information, as to which see Lahore, Copyright Law, para. 2.5.115.
    The relatively small amount of new material in the 1987 A-One catalogue
    compared with the 1986 catalogue was more than trivial, since it made the
    later catalogue an up-to-date listing, a feature of special interest not only
    to A-One but also to its retailers.

    THE 1990 A-ONE CATALOGUE
    55.  The 1987 A-One catalogue was updated to produce the 1990 A-One catalogue.
    It is in the same slightly different format to the A-One 1986 and 1987
    catalogues that was also used in the 1991 A-One catalogue.  There is in
    evidence a copy of the 1990 A-One catalogue highlighted by Rogers to show the
    changes to the 1987 catalogue by way of additions, deletions and the inclusion
    of super-sprockets, which changes were made for similar reasons to the changes
    to the 1986 catalogue that are reflected in the 1987 catalogue.

    56.  Link catalogues had been produced by Sakane in 1988 and 1989, before the
    release of the 1990 A-One catalogue.  Sakane asserts that A-One copied these
    Link catalogues.  He says A-One copied Link because Link was the market
    leader; that he was the best in Australia at cataloguing and that Rogers' and
    Bennett's cataloguing work was very poor.  Sakane's evidence is an
    exaggeration.

    57.  The first, i.e., the 1988, Link catalogue was derived from the 1984
    Phoenix catalogue.  It seems that this catalogue was merely a print-out of the
    1984 Phoenix catalogue with a name change.  Sakane agreed that the catalogue
    was well out of date when issued and that he received complaints because of
    that. Neilson said that the 1988 Link catalogue would not have been up-to-date
    at the time when he was involved in updating the A-One catalogue and it would
    have been of little assistance to him in that work.

    58.  The respondents did not urge that A-One had copied from the 1988 Link
    catalogue in producing its 1990 catalogue.  However, on the basis of Sakane's
    evidence, they did contend that most of the updating by A-One to its 1987
    catalogue, to produce its 1990 catalogue, was copied by it from the Link 1989
    catalogue. Comparisons made by Rogers of A-One's 1987 and 1990 catalogues to
    show the extent of updating reflected in the latter catalogue, and a
    comparison by Sakane of the 1989 Link catalogue (but not its 1988 one) with
    the updated information reflected in the 1990 A-One catalogue, indicate that
    approximately 250 of the changes made in the A-One 1990 catalogue to its 1987
    catalogue also appear in the 1989 Link catalogue, while there are a further
    100 or so changes in the 1990 A-One catalogue, compared with the 1987
    catalogue, that do not appear in the 1989 Link catalogue.

    59.  Rogers denied all allegations of "surreptitious and illegal" copying of
    any of the Link catalogues.  The 1989 Link catalogue was produced in about
    September 1989.  Despite some prevarication, Rogers ultimately admitted that
    the A-One 1990 catalogue came out in very late 1990 or early 1991, a
    conclusion supported by Neilson's evidence as to the work he had done in
    preparation for what became that 1990 catalogue before he left A-One in
    November 1990.  Rogers ultimately conceded that he may have had the 1989 Link
    catalogue before the A-One 1990 catalogue was released.  The final position
    that Rogers adopted was that he acknowledged that the updated information he
    identified as included in the A-One 1990 catalogue was, to the extent
    indicated by Sakane in his comparison, copied with Link's consent from the
    1988, but not the 1989 Link catalogue. He said that the information he copied
    from the 1988 Link catalogue was all repeated in the 1989 Link catalogue.
    Sakane did not contradict what Rogers had to say here and the respondents did
    not challenge Rogers on this point, submitting instead that it was irrelevant
    that A-One may have copied information into its 1990 catalogue from any Link
    catalogue with Link's consent:  the issue is not whether A-One has, in this
    way, infringed the copyright in either of the 1988 or 1989 Link catalogues,
    but simply one of originality and that, in respect of the 250 or so entries so
    copied, there could be no originality.

    60.  Rogers said that the copying that was done from the 1988 Link catalogue
    was done under an arrangement between A-One and Link, the object of which was
    to lead to Link acting as an importer only, and A-One acting only as the
    wholesaler within Australia.  He also said that the quite extensive amount of
    updating made by A-One in producing its 1990 catalogue, that was not derived
    by copying from the 1988 Link catalogue, was done in the course of A-One's
    ordinary updating program.  It is clear, from the evidence of Rogers and
    Sakane, that there was an arrangement which involved the exchange of
    catalogues and that Sakane consented to A-One copying information from its
    current catalogue.  This was plainly necessary if the arrangement was to
    operate as planned.  If A-One was to sell Link products, it had to list them
    all in its catalogue.  Copying was the obvious way of enabling it to fulfil
    its arrangement to sell the range of Link products.  This arrangement broke
    down by June 1989, at the latest.  I observe that, although Rogers, in his
    early evidence, referred to this arrangement, he then claimed, quite
    inconsistently with what he later admitted to have been the position so far as
    copying from the 1988 Link catalogue is concerned, that at no stage during
    this arrangement did A-One ever copy any of Link's catalogues current at that
    time.

    61.  I agree with the respondents' submission.  It could not, I think, alter
    the position if A-One had copied the relevant entries from the 1989 rather
    than the 1988 catalogue, which alone it had Link's implied, if not expressed,
    consent to copy from.  But it is not the material copied from Link, whether
    with or without authority, that confers originality on the 1990 A-One
    catalogue.  In addition to copying from Link, A-One, in producing its 1990
    catalogue, gathered together information to update its 1987 catalogue from
    other sources.  In doing this, A-One expended skill, judgment and labour in
    selecting more than a trivial number of items to be included in its 1990
    catalogue, as additions, or to be removed from it, as deletions, from items
    listed in the earlier catalogue, and in identifying new interchangeabilities
    not identified in its earlier catalogue or in either of the 1988 or 1989
    catalogues.  Because of this expenditure of skill, judgment and labour
    separate from the work involved in copying from the Link catalogue, relatively
    limited though it was, the 1990 A-One catalogue was a new compilation which
    A-One put forward as a complete and up-to-date listing of sprockets that it
    was willing to supply.  It was therefore an original compilation for copyright
    purposes.  That it might also be an infringement of Link's copyright in its
    1989 catalogue, if it contained unauthorised copying of a substantial part of
    the Link catalogue, does not alter this conclusion.

    THE 1991 A-ONE CATALOGUE
    62.  The 1990 A-One catalogue was updated to produce the 1991 A-One catalogue.
    Rogers has compared the 1991 A-One catalogue to the 1990 A-One catalogue and
    highlighted all the changes to the earlier catalogue reflected in the later
    one by way of additions, deletions and changes relating to
    interchangeabilities and super-sprockets. Sakane has examined the 1991 A-One
    catalogue and marked all those entries in it identified by Rogers as
    comprising updates to the 1990 A-One catalogue, which Sakane says appear in
    the 1991 Link catalogue.  Sakane again alleges that A-One copied from the 1991
    Link catalogue to produce its 1991 A-One catalogue.

    63.  I find, on the basis of Neilson's evidence, supported by datings
    throughout the catalogue, that the 1991 Link catalogue was issued in August
    1991.  Rogers concedes that the 1991 A-One catalogue was released after the
    1991 Link catalogue.

    64.  A perusal of the 1991 A-One catalogue shows that a large number of the
    new items in it, that did not appear in any of the earlier A-One catalogues,
    comprise new descriptions for every one of the series of sprockets listed in
    the 1990 A-One catalogue.  The 1991 catalogue also differs from the 1990 A-One
    catalogue in other respects.  However, it is the sprocket series descriptions
    that are a striking new feature of the 1991 A-One catalogue.  These
    descriptions all appear in Link catalogues, for the first time in the 1991
    Link catalogue. Sakane is not aware of any catalogue containing similar
    sprocket series descriptions that was circulated in the industry earlier than
    the 1991 Link catalogue.  Rogers denied copying these descriptions from the
    1991 Link catalogue.  He acknowledged that these descriptions comprise
    commercially useful information.  Rogers' evidence as to how he claimed A-One
    devised these descriptions was initially vague and, ultimately, unconvincing.
    He finally said A-One's staff generated this information from their general
    store of knowledge, from measurements they made of sprockets and from
    information that has been contained for years in the other sprocket
    manufacturers' catalogues.  He did not, however, produce any of these
    catalogues or any documentary support for these claims.

    65.  In his affidavit evidence, Rogers had sought to explain this striking
    similarity between A-One's catalogue and the earlier 1991 Link catalogue by
    explicitly asserting that Neilson took with him to Link the information that
    had been gathered before Neilson left A-One's employ in November 1990 to
    produce the forthcoming 1991 A-One catalogue.  Rogers sought to resile from
    this allegation in cross-examination, later saying that it was coincidence
    that this information came out in the A-One catalogue for the first time after
    the issue of the 1991 Link catalogue.  His allegation against Neilson is
    plainly unfounded.  The 1990 A-One catalogue itself was not published until
    after Neilson departed.  It is highly unlikely that in November 1990, when
    Neilson left, A-One had gathered a wide range of material of the kind here in
    question which it could have included in its then unpublished 1990 catalogue
    but which, for some unexplained reason, it held back until its computer, in
    which Rogers said this new information was stored, was allegedly stolen in
    August 1991 (an event Rogers said caused still more delay before A-One could
    issue its 1991 catalogue).

    66.  I reject Sakane's evidence that he was closely involved in the creation
    of the 1991 Link catalogue and that Neilson did not help much with its
    production. I have little confidence in much of what Sakane says.  I have
    already explained some of my concerns.  Despite the precision of his
    explanation in his affidavit for the entries in the various A-One catalogues
    that some unidentified person acting for Link marked in red, when Sakane gave
    evidence, it was plain that he had no idea as to the significance of those
    entries.  Despite Sakane's assertions of never copying from A-One's
    catalogues, I accept the applicant's submissions, supported by the summary
    handed up by counsel in final addresses, that a relatively small but still
    significant number of entries in the various Link catalogues were copied from
    A-One catalogues.  These include sprocket designations devised by A-One, which
    do not contain any reference to the authentic parts identification, numbers
    which were copied by Link because they had become established in the market as
    those by reference to which those particular parts were commonly ordered and
    sold.  That some copying was done by Link over the years is consistent with
    what Neilson said.

    67.  The 1991 Link catalogue is the first Link catalogue which is generally
    acknowledged to be up-to-date and useful.  I accept Neilson's evidence that he
    had "a fairly major role" in putting together the 1991 Link catalogue.
    Neilson says he chose to update the 1989 Link catalogue himself, to produce
    the 1991 Link catalogue; he was not given the task by Sakane.  He says the
    work was shared between himself, Nicole Crohn, another director of Link, and
    an office girl, who put the information the two of them assembled into Link's
    computer. He commenced updating at the end of March/early April 1991.  He says
    it was completed by approximately August 1991. Neilson used the 1989 Link
    catalogue as a base.  His first task was to work out which models were missing
    from that out-of-date Link catalogue.  He then set about obtaining the missing
    information from manufacturers' microfiches and from Link's retailers.
    Neilson says he started looking at interchangeabilities to enable Link to
    reduce its inventory because Link was ordering from a supplier who insisted on
    very large minimum orders.  He also went through Link's inventory and got rid
    of all the sprockets, from the 750 sprockets which Link carried at that time,
    which he did not think it was necessary to carry.  Neilson estimates that he
    was able to reduce Link's inventory by 8-10%, a reduction that made it easier
    to re-order and which saved money for Link.

    68.  Neilson also introduced the descriptions I have referred to for each
    series of sprockets, i.e., the descriptions of the pitch and tab holes.  He
    said this information was required to convince Link's retailers and their
    customers that Link's super-sprockets would fit the motorcycles for which they
    were intended. Neilson agrees that it is common practice to make use of
    competitors' catalogues; he has done it himself.  But Neilson says that in
    producing the 1991 Link catalogue, he had no reason to copy from competitors'
    catalogues because none of them contained the information he needed.  He said
    that while super-sprockets had been sold for some time, none of Link's
    competitors had published comprehensive descriptions of the kind he first
    prepared for the 1991 Link catalogue and, apart from super-sprockets, he was
    only looking at new models released after the 1990 Link catalogue was issued:
    Link's competitors had not yet published any information about those models
    when he set about producing the 1991 Link catalogue.  What were said to be
    Neilson and Crohn's work papers from which the 1991 Link catalogue was
    produced were put in evidence.  A-One did not dispute that they provided
    confirmation of Neilson's evidence.

    69.  I find that Link, largely by Neilson, undertook an extensive exercise to
    update its 1989 catalogue to produce its 1991 catalogue. This involved
    assembling newly available information about recently released motorcycle
    models which had not then been analysed by its competitors, including A-One;
    for this reason, Link made little use of other competitors' catalogues in
    preparing the 1991 Link catalogue.  Neilson also introduced the new and
    comprehensive sprocket series descriptions into the 1991 Link catalogue, the
    first catalogue in which such information appeared.

    70.  The 1991 A-One catalogue was released in late 1991, well after the 1991
    Link catalogue.  I believe that A-One copied all the sprocket series
    descriptions and the information concerning new models from the Link
    catalogue. It is clear that the various dealers made use of each other's
    catalogues and that the 1991 Link catalogue was available to A-One prior to
    production of its 1991 catalogue.  I do not believe that A-One would have
    undertaken work to produce information which it already had in front of it.

    71.  But it was not (and could not be) contended that A-One produced its 1991
    catalogue by copying the 1991 Link catalogue in its entirety. What A-One did
    was take its own 1990 catalogue and update it largely, but not entirely, by
    selecting from the mass of material comprising the 1991 Link catalogue a small
    but commercially important number of entries which A-One then copied, some of
    which were new descriptions for each of the series of sprockets listed in both
    the 1990 A-One and the 1991 Link catalogues and the rest of which were entries
    in the Link catalogue relating to motorcycle models released after they could
    be referred to in the 1990 A-One catalogue.

    72.  I am not concerned here with whether the 1991 A-One catalogue is an
    infringement of the copyright in the 1991 Link catalogue, but with quite a
    different question, viz., whether that A-One catalogue is itself an original
    work and so one which was copyright.  Having regard to the evidence of Rogers'
    comparison of the 1990 and 1991 A-One catalogues and of Sakane's comparison of
    the 1991 Link and 1991 A-One catalogues, the updates made by A-One to its 1991
    catalogue include more than a trivial number of entries devised by A-One and
    not copied from the 1991 Link catalogue.  These relate to recently released
    models not referred to by Link and about 15 entries comprising sprocket series
    descriptions devised by A-One which follow the pattern devised by Neilson and
    included in the 1991 Link catalogue, but which do not appear in that Link
    catalogue.  The 1991 A-One catalogue also identifies about a dozen
    interchangeabilities not picked up in the 1991 Link catalogue.  It includes
    references to about half a dozen sprockets that were also listed in the
    preceding A-One catalogue but which were not included in the Link catalogue.
    In producing the 1991 A-One catalogue, about 10 deletions were made from the
    previous A-One catalogue that do not mirror deletions made by Link from its
    1989 catalogue when it produced its 1991 catalogue.  These changes made by
    A-One, which do not replicate changes made by Link in producing its 1991
    catalogue, in my opinion involve a not insignificant degree of skill, judgment
    and labour on the part of A-One in selecting the information to be recorded in
    its own 1991 catalogue.  Given the skill, judgment and labour that A-One used
    in updating its 1990 catalogue, itself an original work, and both the quantity
    and quality of the changes made by A-One itself (as distinct from what it
    copied from Link), I consider that the 1991 A-One catalogue is itself a new
    and original work in which copyright subsists.  This is so in my opinion,
    notwithstanding that A-One, in part, copied material from the 1991 Link
    catalogue, which comprised such an important part of the Link catalogue as to
    make the 1991 A-One catalogue an infringement of the copyright in the 1991
    Link catalogue.

    THE 1993 OFF ROAD CATALOGUE
    73.  The only question here is whether the Off Road catalogue is an
    infringement of the copyright in the 1991 A-One catalogue.

    74.  The layout and indexing system of the 1991 A-One catalogue and the Off
    Road catalogue are very similar, similarities King says, with some
    justification, are due to these being convenient ways of presenting the
    information in question. He points to other dealers' catalogues having these
    same features.  King says he worked on the compilation of Off Road's catalogue
    from early December 1992 to late February 1993.  It was issued in March 1993.
    In the affidavits he filed, King gave only a brief and quite vague indication
    of how he went about compiling this catalogue.  He there mentioned using both
    overseas manufacturers' and overseas and domestic distributors' catalogues "to
    cross-reference" the material used in the Off Road catalogue; he went to some
    trouble to list points of difference between the 1991 A-One catalogue and the
    Off Road catalogue.  He did not mention, in his affidavit evidence, that any
    A-One catalogue played any part at all in the work he did to produce the Off
    Road catalogue.

    75.  However, by the end of his oral evidence, it had become clear that, in
    order to compile the Off Road catalogue, King had copied very extensively
    indeed from the 1991 A-One catalogue and had made only very limited use of
    other dealers' catalogues.  In the course of the hearing, in response to a
    notice to produce issued by the applicants, King produced his copy of the 1991
    A-One catalogue.  It is extensively noted up with what appear to be decisions
    by King as to which of the entries in the A-One catalogue were to be included
    in, and which were to be excluded from, the Off Road catalogue. There are
    also, at various points through King's copy of the A-One catalogue, notes by
    him which look like instructions to the person typing up the Off Road
    catalogue.  King denied that this A-One catalogue, marked up by him, was what
    he gave his typist from which she was to prepare the first draft of the Off
    Road catalogue.  King agreed, however, that there were few written notations
    on any of the catalogues other than the A-One catalogue.  He first claimed
    that he made the numerous notations on the A-One catalogue "to confirm the
    original part number" because the A-One catalogue was more complete than any
    of the other catalogues.  He next claimed his notations simply recorded
    comparisons he had made between each of the A-One sprockets and those which
    were available from his Italian manufacturer, although he later admitted that
    his notations did indicate items in the A-One catalogue which were to be
    included in, and which were to be excluded from, the Off Road catalogue.

    76.  If King identified a lot of amendments to be made to the information on a
    page of the A-One catalogue, he said he would hand-write the information he
    wanted to include in his catalogue on a new sheet and give that to his typist;
    if there were only a few amendments to an A-One page, he would hand the
    noted-up photocopied A-One page to the typist.  He says he gave his typist a
    total of only about 20 photocopied A-One pages with these notations.  He later
    confirmed that the typist was only given two things to type: his handwritten
    pages and the photocopied A-One page with his changes noted on them.  King
    says that he no longer has the handwritten pages.  He did not bother to keep
    them, once the Off Road catalogue was finished.  He did, however, keep seven
    handwritten pages of information relating to sprockets fitted to European
    motorcycles not listed in the A-One catalogue, which he prepared in the course
    of compiling the Off Road catalogue.  King could give no explanation why the
    notes on these European sprockets survived, but his own extensive notes on
    sprockets included in the A-One catalogue did not.  He denied the applicants'
    suggestion that those seven handwritten pages came into existence because he
    had to compile the information for himself and could not copy it from the
    A-One catalogue, whereas he never prepared any pages of his own relating to
    information contained in the A-One catalogue because he simply copied all of
    it.  King ultimately gave this evidence in cross-examination:
        "So the A-One document operated as a primary source, did it
        not, for the compilation of your new catalogue?---Yes, inasmuch
        as I transferred a lot of information into this catalogue (i.e.,
        into the Off Road catalogue).

        Well, it (i.e., the A-One catalogue) is your primary working
        document, and an entry like the one you have just seen and
        others from the Link list, really serves to show that it was the
        primary working document and where appropriate you would bring
        in entries from say the Link catalogue?---Or make alterations or
        corrections.

        Yes.  The ticking that appears throughout this A-One document,
        exhibit 014, you did that, I take it?---Yes, I did.

        And what was the ticking to indicate?---To indicate that I
        cross-referenced that part number with an original part number
        and found it to be correct.

        And as a consequence it was going to go in your catalogue?---
        Yes, if there were no corrections it would go in there, and if a
        correction was necessary it was noted."

    77.  There are differences between the range of information contained in the
    Off Road catalogue and that contained in the 1991 A-One catalogue.  The latter
    includes reference to a number of sprockets which do not appear in the Off
    Road catalogue due, according to King, to a deliberate decision on his part
    not to include them. There are also references to sprockets in the Off Road
    catalogue that do not appear in the A-One catalogue (although the explanation
    here seems to be that they relate to the new model motorcycles in respect of
    which information was not available when A-One produced its 1991 catalogue).

    78.  However, I have no doubt that King produced the 1993 Off Road catalogue
    by physically copying extensively from the 1991 A-One catalogue.  I do not
    accept his account of how he came to compile his catalogue by making extensive
    reference to the A-One catalogue, but actually copied only a relatively small
    part of it while doing a lot of original research himself.  In my opinion, he
    copied much more extensively from the A-One catalogue than that.  King's
    marked up copy of the A-One catalogue seems to me very obviously to have been
    what his typist worked from in producing the Off Road catalogue.  The absence
    of notations by King on any of the other dealers' catalogues demonstrates that
    it was the A-One catalogue on which King heavily relied.  His inability to
    produce the extensive handwritten notes he claims he made and which he said
    were, apart from the small number of photocopied A-One catalogue pages, what
    his typist worked from, when he was able to produce seven pages of sprocket
    information not included in the A-One catalogue but which he wished to have
    included in the Off Road catalogue, points to there never having been any
    basic material for his typist to work from in producing the bulk of the Off
    Road catalogue, apart from King's own marked up copy of the A-One catalogue.
    Significantly, by comparing the two catalogues, Rogers was able to identify 22
    typographical errors in the A-One catalogue that were slavishly repeated in
    the Off Road catalogue.  (Rogers said he did not attempt to make an exhaustive
    check for such errors.)  King was unable to account for this.  Further, an
    obvious difference between the Off Road and the A-One catalogue is that the
    former includes diagrammatic representations of many of the sprockets which
    appear alongside the descriptive material in the Off Road catalogue.  King, in
    his affidavit, made a point of saying that this was a particularly important
    distinguishing feature between the two catalogues because it made it
    unnecessary for Off Road to include certain descriptive material in its
    catalogue.  However, in relation to a number of sprockets to which both the
    Off Road and the A-One catalogues refer, there is no accompanying diagram in
    the Off Road catalogue.  King admitted that the explanation for the absence of
    these diagrams was that, in each case, King's Italian manufacturer did not
    produce that particular sprocket.  I reject King's unconvincing explanation
    and accept that the inclusion in the Off Road catalogue of references to
    sprockets contained in the A-One catalogue which King's manufacturer could not
    supply to Off Road is, like the appearance in the Off Road catalogue of the
    typographical errors in the A-One catalogue, clear evidence that the Off Road
    catalogue was produced by very extensive copying of the A-One catalogue.

    79.  I have held that A-One has copyright in each of its catalogues, including
    its 1991 catalogue.  The 1986 catalogue was produced as a result of Rogers and
    Bennett copying extensively from the 1984 Phoenix catalogue.  The 1991
    catalogue was produced, in large part, as a result of the work done by Rogers
    and Bennett and others within A-One to update the 1986 catalogue to include
    both new and newly discovered information and, in significant part, it also
    involved the reproduction of material from the 1991 Link catalogue.  No
    attempt was made by King to analyse the source of the information recorded in
    the 1991 A-One catalogue, which was copied by Off Road, to identify which
    particular entries in the A-One catalogue had in turn been copied by A-One
    from material in the 1984 Phoenix catalogue and the 1991 Link catalogue.  In
    my opinion, given the catholicity Off Road displayed in its copying from the
    A-One catalogue and given the nature of the information copied, viz.,
    identification numbers for sprockets and motorcycle models to which they can
    be fitted and similar information, such an analysis would not have assisted
    Off Road.  Lord Pearce's judgment in Ladbroke (Football) Ltd., supra, and the
    judgment in Warwick Film Productions Ltd v Eisinger, supra, is authority that
    where an original work comprises non-original material, whether pirated or
    not, and new material, the non-original material in the work attracts
    copyright protection only because of its collocation with the new material, so
    that, if the only part of such a composite work which is copied is the
    non-original component, once that is robbed of its collocation with the new
    material, it cannot be regarded as forming a substantial part of the entire
    work in which copyright subsists. Taking only such non-original work cannot
    therefore be an infringement of the copyright that exists in the whole work.

    80.  But King did not copy just the non-original elements in the 1991 A-One
    catalogue, i.e., the material that may have been copied by A-One from the
    Phoenix and Link catalogues:  he copied many entire entries, some of which, it
    can be assumed, consisted of material selected by the application of skill,
    judgment and labour by A-One's people, which was combined with material copied
    by A-One from Phoenix and Link.  In so far as King himself may have copied
    material in the 1991 A-One catalogue that was pirated by A-One from Phoenix
    and Link, King only copied that in its collocation with original material.  It
    is clear why he took entire entries in the A-One catalogue, and in large
    numbers. What gives the 1991 A-One catalogue its utility and value is that it
    comprises what King, in effect, acknowledged was the most complete and
    up-to-date compilation available to him that accurately identified many
    sprockets and the motorcycles from the wide range of models available in
    Australia to which each of those sprockets could be fitted.  No one entry or
    group of entries in the A-One catalogue, considered in isolation from the rest
    of the catalogue, has much utility or value.  Wholesalers and retailers of
    motorcycle sprockets are not interested in having information about one or a
    number of parts, rather are they interested in having in one publication
    comprehensive, up-to-date information about a wide range of such parts.  It is
    for this reason that neither the A-One catalogue itself nor individual entries
    in that catalogue can sensibly be separated into two components, viz.,
    original A-One work and work pirated by A-One, when the question is:  has Off
    Road reproduced a part of the A-One catalogue that is a substantial part of
    the latter?  Unlike the position of the alleged infringer in Eisinger, Off
    Road did not attempt to copy only portions of the information relating to
    individual sprockets.  There was no point in doing that. It was only by taking
    the whole of the information, original and pirated, in which it was interested
    that Off Road could get an accurate, up-to-date and complete set of
    information.

    81.  In my opinion, the production by Off Road of its 1993 catalogue
    constitutes a clear infringement of the copyright owned by A-One that subsists
    in its 1991 catalogue.  This is the position even if the A-One catalogue is
    itself an infringement in the copyright in each of the 1984 Phoenix and the
    1991 Link catalogues.  While Mr. King was involved in this infringement, there
    is no evidence that Mrs. King, the other second respondent, participated in
    it.

    82.  I therefore answer the questions raised as follows:
        (1)  Is the first applicant's 1991 catalogue an original work
        capable of protection under the Copyright Act 1968 (Cth)?  Yes

        (2)  Who is the author or authors of the catalogue?  The second
        applicants.

        (3)  Does the first applicant own the copyright in the
        catalogue?  Yes

        (4)  If the answers to questions (1) and (3) above are in the
        affirmative and the answer to question (2) is either the first
        applicant or the second applicants, have the first and/or second
        respondents infringed the copyright of the first applicant?  The
        first respondent and Mr. R.B. King, one of the second
        respondents, have infringed the copyright of the first applicant
        by producing the first respondent's 1993 catalogue.