Addison Wesley Longman Australia Pty Limited v Kopystop Pty Limited

3 The second applicant is the publisher of the textbook entitled, Teaching Mathematics in Primary Schools by Robyn Zevenbergen, Robert Wright and Shelley Dole ('Mathematics Text'). By agreement made on 20 June 2002 those authors granted to the second applicant the sole right and licence to produce, publish and sell the work and to sub-licence it to third parties. Mr Patrick Gallagher, Managing Director of the second applicant, affirmed in his affidavit of 16 November 2004 that the second applicant has not granted any licence in relation to the Mathematics Text to any of the respondents. 4 The evidentiary basis of the applicants' claim was outlined in affidavits made by four employees of Trademark Investigation Services, Themis Papas, Sam Dakanalis, Huong Nguyen and Sarah Hutchison. Mr Papas described how he had visited the premises of the first respondent on 6 October 2004. He spoke to an assistant who identified himself as Mr Sarkis Manoukian and asked him if the Mathematics Text could be copied. He was quoted a copying charge of $173 to copy the book. Mr Papas asked whether the copying be cheaper if he wanted to get additional copies to sell to other students. He was told that it would be cheaper and said that he was advised to keep the first copy in loose leaf format, 'like this one I have made for another customer', so that copies could be easily made. Mr Papas said he was unable to determine the nature of the bundle that Mr Manoukian showed him as an example other than to say that it was a bundle of photocopies held together with a large clip. 5 At 5.00 pm on the afternoon of 8 October 2004, having previously ascertained by telephone call that the photocopying he had ordered would be ready, Mr Papas returned to the first respondent's premises. He said that while he was finalising the sale and paying for the photocopying, Mr Manoukian volunteered that if he wanted more copies of the Mathematics Text they would cost only 10 cents per page because 'I have scanned it on to the computer for you'. Mr Papas again visited Kopystop's premises on 2 November 2004. He asked if the Mathematics Text was still on the computer and, being told it was his lucky day, he was able to order three additional copies for a total of $119. 6 Mr Sam Dakanalis visited Kopystop's premises on 10 November 2004. In response to his enquiry he was told he would be able to obtain a copy of the Mathematics Text. He ordered three copies at a cost of $119. At the same time he showed Mr Manoukian a published copy of the Corporate Finance Text and asked if it could be copied. He was told it could be copied for 50 cents per page 'because of the work involved in scanning pages into the system'. He was told that after the first copy other copies would be cheaper. He ordered one copy of the Corporate Finance text for $175 and returned to the premises on 12 November 2004 and paid for and collected one photocopy of the Corporate Finance Text and three bound copies of the Mathematics Text. 7 Ms Nguyen gave evidence of a telephone call she had made to the first respondent's premises asking to speak to one of the owners about a printing and photocopying job she needed. She spoke to a man who identified himself as Zaven, presumably the third respondent. Zaven told her that he was one of the owners of the business and said that Arthur (presumably the second respondent) was also an owner. She was also told that Mary (presumably the fourth respondent) was responsible for accounting. Zaven told Ms Nguyen that he was generally at the premises but it would be better to make an appointment to be sure of finding him there. 8 Sarah Hutchinson gave evidence of a phone call that she had made to the first respondent's premises. She had said she was a student trying to complete an end of year assignment in a corporate finance subject. She asked, 'Do you have any corporate finance text books or lecture notes that I can buy to do the assignment?'. The person who answered the call, but who did not give his name, said 'We don't sell any textbooks'. He said that they did sell lecture notes that were provided by the University but only to enrolled students and added, 'It has to be this way because of copyright laws and I don't want to do anything to end my lucrative work with the University.' He also told her that she would need to go to a bookshop to buy textbooks. 9 The considerations governing the grant of an Anton Piller order in this Court are concisely set out by Branson J in Microsoft Corporation v Goodview Electronics Pty Limited (1999) 49 IPR 159 [9]-[14]. Her Honour refers, as do most judgments in this area, to the oft quoted comments of Ormrod LJ in the seminal case, Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55 at 62, where his Lordship listed the preconditions for the grant of an Anton Piller order: 'First, there must be an extremely strong prima facie case. Secondly, the damage, potential or actual, must be very serious for the applicant. Thirdly, there must be clear evidence that the defendants have in their possession incriminating documents or things, and that there is a real possibility that they may destroy such material before any application inter partes can be made.' 10 I accept that the evidence set out above demonstrates that the applicants have a strong prima facie case of breach of copyright. The evidence suggests not only that the first respondent has been prepared to provide multiple infringing copies of the applicants' textbooks but also indicates that within the business there is a level of awareness of the rights of copyright owners. 11 However, I am less convinced that the requirement of serious damage for the applicants has been made out. I accept that widespread unauthorised copying of textbooks has the potential to cause significant damage to book publishers. Mr Peter Banki, solicitor for the applicants, gave affidavit evidence about the value of copyright in educational texts published by members of the Australian Publishers Association Limited ('APA'). The evidence before me however, relates only to the unauthorised copying of two textbooks, the copyright of which lies in separate parties. The APA is not a party to this application nor is this a representative action brought on behalf of publishers. This reservation is sufficient in itself to cause me to refuse the order sought. 12 My greater concern however is with the third requirement mentioned by Ormrod LJ. The intrusive and draconian nature of an Anton Piller order requires that I am satisfied that the order is necessary to preserve evidence that would be destroyed or otherwise be unavailable to the applicants. It is clearly not sufficient to presume (even if such presumption were justified) that the majority of people would, if given the opportunity, destroy incriminating evidence. If this were sufficient Anton Piller orders would be given almost as a matter of course in copyright cases. In my view some positive evidence is required that gives rise to a concern particular to the respondent in question. In Lock International Plc v Beswick [1989] 1 WLR 1268 at 1281 Hoffman LJ commented that the fact that there was overwhelming evidence that a person had behaved wrongly in his commercial relationships did not justify an Anton Piller order. His Lordship continued, 'In many cases it will therefore be sufficient to make an order for delivery up of the plaintiff's documents to his solicitor or, in cases in which the documents belong to the defendant but may provide evidence against him, an order that he preserve the documents pending further order, or allow the plaintiff's solicitor to make copies. The more intrusive orders allowing searches of premises or vehicles require a careful balancing of, on the one hand, the plaintiff's right to recover his property or to preserve important evidence against, on the other had, violation of the privacy of a defendant who has had not opportunity to put his side of the case. It is not merely that the defendant may be innocent. The making of an intrusive order ex parte even against a guilty defendant is contrary to normal principles of justice and can only be done when there is a paramount need to prevent a denial of justice to the plaintiff.' 13 On the evidence before me I am not satisfied that an Anton Piller order is necessary to prevent a denial of justice to the applicant. I therefore dismiss the application. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone.