Avel Pty Ltd v Multicoin Amusements Pty Ltd

Avel Pty Ltd v Multicoin Amusements Pty Ltd - [1990] HCA 58 - HCA 1990 case summary — Zoe

[15]

Putting to one side the above correspondence, there is nothing in the evidence which established whether or not Multicoin applied to Williams for its licence to import into this country and sell the used machines or whether Williams had expressly or impliedly licensed such import and sale. The main basis in the evidence for speculation that it is unlikely that Williams granted or would have granted such a licence is that it is arguable that the distribution agreement applied to both new and used machines. If Williams considered that that was so, it would seem unlikely that it could have granted or would grant a licence to Multicoin since it is unlikely that it would be prepared to breach its contractual obligations and, even if it were prepared to do so, it might be subjected to restraining proceedings at the suit of the distributor. In that context, the correspondence between the distributor and Williams (or its attorney) was, in our view, admissible. The letters from the distributor were admissible as admissions of the fact that Williams had refused to join in the proceedings against Multicoin for the reason "that it had no objection to the exportation of second-hand machines out of the United States" and had rejected the distributor's request to execute a deed to overcome the absence of any reference to copyright in the distribution agreement. The letter from Williams to the distributor was admissible in that it represented an assertion by Williams to the distributor to the effect that the distribution agreement had no application at all to the used machines which Multicoin was proposing to import and in that it put the distributor on notice that Williams would "not interfere with the free trade in used games". In all these respects, the correspondence was not hearsay. It represented of itself material fact. Williams' assertion to the distributor that the distribution agreement applied only to new machines effectively removed the only real basis in the evidence for speculating that it would have refused to license the import or sale of the used machines in order to avoid breach of the agreement on its part or proceedings by the distributor to enforce it. Its rejection of the distributor's efforts to get it to interfere with the free trade in used games was itself a fact relevant to speculation about the likelihood that it had granted or might grant a licence to Multicoin to import and sell the used machines in Australia.

[17]

There is one further matter which should be mentioned, if only to be put to one side. As has been said, the distributor's claim that copyright existed in relation to the machines was restricted to the artwork and computer programs of the particular models. The evidence would seem to be silent about whether Williams also had patent rights in relation to the machines. The inference to be drawn from the letter from Williams' attorney to the distributor was that Williams' initial sale of the particular used machines which Multicoin proposed to import had been an unconditional one. Indeed, that letter makes plain that the sale was, so far as Williams was concerned, on the clear understanding that the purchaser, and any purchaser from it, was free to do what it wished with the used machines. That being so, if the machines were patented, it would seem to be settled law that Williams gave to the purchaser (and any purchaser from it) an implied licence to import the used machines into Australia for resale and to resell them here (see, e.g., Interstate Parcel Express Co. Pty. Ltd. v. Time-Life International (Nederlands) B.V. [1] ; and note that the goods (books) in that case were clearly not patented). One can only speculate about whether Williams did or did not have patent rights in the machines. If it did have such patent rights, however, it would seem that the inference should be drawn that, if Multicoin had gone ahead with the proposed import and resale of the used machines, it would have done so with the implied licence of Williams. Accordingly, the failure to negate the existence of such patent rights might well, in the context of the evidence, be seen as supporting the conclusion that the distributor had failed to discharge the onus of showing that the proposed import and resale of the used machines would, if they had taken place, have been without the licence of Williams. This aspect of the matter was not, however, raised by Multicoin in argument and we have not relied upon it in concluding that the appeal should be dismissed.

[118]

The distributor also relied on s. 29(1)(a) of the Act. That paragraph provides that, "for the purposes of this Act", a literary or artistic work is deemed to have been published "if, but only if, reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public". No doubt it is arguable that s. 29(1)(a) is a definition which is applicable to the term "publish" in s. 31(1). If it is, the right to publish is a right to sell or distribute the work to the public at any time. Such an interpretation of "publish" in s. 31(1), however, would render s. 38 of the Act superfluous. Section 36 makes the doing or authorizing of any act comprised in the copyright of a work an infringement unless the person doing or authorizing the act is the owner of the copyright or is acting with his or her licence. Hence, if the terms of s. 29(1)(a) apply to s. 31(1), or if "publish" in the latter section is otherwise construed to mean publish at any time, then the mere sale or distribution to the public of an infringing article would constitute an infringement of the copyright under s. 36. Yet s. 38 of the Act provides that the sale or distribution of an article will constitute an infringement of copyright only where, to the knowledge of the seller or distributor, the making of the article constituted an infringement or, in the case of an imported article, would have constituted an infringement if the article had been made in Australia. In Infabrics Ltd. v. Jaytex Ltd. [13] , the House of Lords held that the United Kingdom equivalent of s. 29(1)(a) did not provide a definition of publication and that the term "publishing" in the United Kingdom equivalent of s. 31(1)(b)(ii) meant making public what had not previously been made public. Commentators on this decision have pointed out that there are differences between s. 29(1) of the Act and the comparable U.K. provision: see Lahore, Copyright Law, pp. 3563-3564; Ricketson, Law of Intellectual Property (1984), pp. 221-222. They have argued that it is doubtful whether the term "publish" in s. 31(1) can be interpreted to mean publish for the first time. Notwithstanding the differences in the legislation, however, I think that the reasoning which led Lord Wilberforce in Infabrics Ltd. to conclude that "publishing" meant publish for the first time is equally applicable to the term "publish" in s. 31(1) and therefore that term means publish for the first time. Such an interpretation is in accordance with the law as it stood before the passing of the 1968 Act, and enables s. 38 to operate independently of the direct infringement provision of s. 36.

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Before

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Judgment (151 paragraphs)

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