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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.