Giovanni Zeccola & Ors v Universal City Studios Inc [1982] FCA 271

ORDERS JUDGES MAKING ORDERS: WHERE MADE: DATE OF ORDERS:

GIOVANNI ZECCOLA, LILIANA_ ZECCOLA, SUPERSTAR INTERNATIONAL FILMS PTY. LTD., FRANCO BENITO ADOLFO ZECCOLA, VINCENZO ZECCOLA, GREGORY PHILLIP LYNCH, G.L. FILM ENTERPRISES PTY. LIMITED

LOCKHART, FITZGERALD AND JENKINSON JJ. AT MELBOURNE

2. The appellants pay the costs of the respondent of the appeal.

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) ) VICTORIA DISTRICT REGISTRY ) NO. VG117 OF 1982 ) - GENERAL DIVISION )

BETWEEN: GIOVANNI ZECCOLA, LILIANA ZECCOLA, SUPERSTAR INTER- NATIONAL FILMS PTY. LiD., FRANCO BENITO ADOLFO

• ZECCOLA, VINCINZO ZECCOLA,

LTD. Bppellants AND: UNIVERSAL CITY STUDIOS INC. Respondent CORAM: LOCKHART, FITZGERALD AND JENKINSON JJ. AT MELBOURNE 26 NOVEMBER 1982 REASONS FOR JUDGMENT . LOCKHART J. The judgment I am about to deliver is the joint

judgment of Mr. Justice Fitzgerald and myself. This is an appeal from a judgment of the Supreme Court of Victoria delivered on 4 August 1982 which granted interlocutory injunctions restraining the appellants until the final hearing of the action or further

order from infringing the respondent's copyraght in a novel,

screen-play and film each entitled "Jaws" and from infringing the respondent's registered trademark in the word "Jaws".

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« tended to blur the distinction between final and interlocutory proceedings and the problem was exacerbated py the different copyrights asserted by the respondent as the basis of its claim. Many questions have been raised, some of which were dealt with by the learned primary Judge, which may be of importance at the trial but do not fall for present decision and indeed are best

left open at this juncture for later determination.

It is well-established that where the judgment appealed from involves the exercise of discretion by the trial Judge this Court will not interfere unless an error of the kind mentioned in

various cases, uncluding House v. R. (1936) 55 C.L.R. 499, is

The primary Judge held that the respondent had made out a strong prima facie case against the appellants for the granting of anterlocutory relief and that the balance of

convenience clearly favoured the granting of such relief. Both findings are challenged in this appeal.

The approach to be adopted by Australian courts on determining whether a prima facie case has been made out in an

application for an interlocutory injunction where, as happened in

the preseni case, both sides gave evidence, appears from the

judgment of the High Court in Beecham Group Limited v. Bristol

Laboratories Pty. Limited (1968) 118 C.L.R. 618. See also

Transport Workers Union of Australia v. Leon Laidecly Pty. Limited

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" (1980) 28 A.L.R. 589, a decision of a Full Court of this Court.

The primary Judge applied the test referred to by the

Full Court of Victoria in Magna Alloys and Research Pty. Limited

v. Coffey [1981] V-R. 23, a test which was accepted by counsel for the appellants as correct and which in ovr view is

substantially the same as the tests propounded in Beecham's Case.

The hearing before the Supreme Court occupied several days, many affidavits were read and most of the deponents were cross-examined. His Honour said that the application, although for interlocutory injunctions, rapidly developed into a proceeding more akin to the final hearing of the action. However, his Honour approached the case throughout on the footing

that he was not finally resolving the rights of the parties but merely determining whether a prima facie case had been made and,

if ut had, whether the balance of convenience favoured the

We will not trouble to recite all the findings of fact and law made by the primary Judge in an extensive judgment. 1t

1s sufficient 1£ we refer to them in summary form as follows.

The novel "Jaws" was written by Peter Benchley, a United States citizen. It was first published in 1974 in the United States of America. The "Jaws" screen-play was completed in the

same year. The film "Javs" was made in the Unated States of

", America in 1975 and was first shown to the public there in July of that year. Since then it has becn exhibited in most countrics of the world, including Italy, where it was called "La Squalo"

The film "Jaws" has been a huge success and has made a

lot of money for the respondent. Apart from exhibitions in motion picture theatres it has been shown under contract on television in the United States of America and many other countries. Most of those contracts are still on foot. The sale of video cassettes and discs has also been widespread and is still proceeding. In 1977 the respondent arranged for the making of a sequel to "Jaws" which was called "Jaws I1". "Jaws I1" concerns much the same subject matter and characters as "Jaws". "Jaws II" was first exhibited to the public in June 1978 and has also been a great success. Both films have been prominently

featured as Universal films and some $20 million has been

expended in promoting the films throughout the world.

Another film "Jaws 3-D" is presently being made by the respondent and the respondent has also obtained registration in Australia of the word "Jaws" and of a drawing depicting the head and open jaws of the shark as trade marks in respect of, amongst

The film "Great White" was made by Italian film makers

in early 1980. A full page advertisement in "Weekly Variety", an

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*. American periodical, dated 7 May 1980 stated that the film was to be called "The Last Jaws". When the film was first shown in Italy later in 1980 its name was "La Ultimo Squaio" which translated into English is "The Last Shark". The appearance of the advertisement in "Weekly Variety" excited the interest of the respondent. Steps were taken in Italy to prevent the showing of

the film "Great White" and litigation ensued which is still

The primary Judge dealt at length with the various issues between the parties. The appellants do not dispute that the respondent has acquired and is entitled to sue in Australia to enforce any copyright which exists here in the novel, screen-play or film "Jaws" but asserts that no such copyraght exists. Counsel for the appellants made various submissions ampugning the judgment from which they have appealed. Some of these submissions were disposed of in the course of discussion between counsel and the Bench and need not be referred to further. Other submissions were put in various ways but in essence were the same as each other. We confine ourselves to the principal submissions made on behalf of the appellants.

Counsel for the appellants submitted that the primary Judge erred in holding that the novel "Jaws" was an original work for the purposes of the Copyright Act 1968 ("the Act"). It was submitted that there was no evidence or at least no sufficiently

reliable evidence to support his Honour's conclusion. The

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', hearing was conducted, as applications for interlocutory

anjunctions usually ane, on evidence by affidavit supplemcnica where necessary by cross~examination. We see no purpose in analysing in detail the evidence before his Honour touching this question, but it is sufficient to say that there was evidence of the originality of the novel "Jaws".

The hearing of the application for interlocutory injunctive relief is, of necessity, an attempt by the Court to do justice to the parties on an interlocutory basis until the Court and the parties are ian a position to deal with the case finally. Evidence of the kind relied on by his Honour is often the only available evidence in all the circumstances. Commonsense and the desire to do justice to all parties frequently call for the reception of such evidence and reliance being placed upon it. Indeed, in the present case, the essence of the attack made by the appellants on this aspect of the case was that Mr. Benchley himself should have given evidence relating to the originality of the novel. Mr. Benchley however is a United States' citizen and the very difficulties and expense involved in obtaining such evidence, possibly involving his coming to Australia for cross-examination, point to the wisdom on the hearing of applications for interlocutory injunct1rons of reliance being placed upon evidence based on information and belief or evidence other than from primary sources. This case 1s no exception.

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Then it was submitted by counsel for the appellants that the primary Judge comurtled a fundamental error in his approach to the question whether the appellants had infringed the copyright of the respondent in the film "Jaws". It was submitted that copyright in a film subsists only in those parts of the film capable of being the subject matter of copyright, that is, having the requisite character of originality, and that it is necessary to excise other parts from the whole. It was said that it is only the residue that can be the subject of copyright and thereby

Counsel for the appellants submitted that both films, "Jaws" and "Great White" are genre films based upon the idea of a savage monster menacing a community. Each is a film about a killer shark terrorizing human beings and it was said that

neither film was entitled to protection as there is no copyright

The difficulties involved in severing films into parts which are capable of characterization as original works and other

parts that are not 1s obvious. Indeed, it is the subject of only

lamited exploration by. the jaws of this country and the United Kingdom. We were referred to certain decisions of United States' 'courts where this question has been considered from time to time and we have found those cases helpful in resolving the questions before us. In general, there 15 no copyright 1n the central idea

or theme of a story or play however original it may be;

• copyright subsists in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme. If these are totally different the taking of the idea or theme does not constitute an infringement of

Of necessity certain events, incidents or characters are found in many books and plays. Originality, when dealing with ancidents and charecters familiar in life or faction, lies in the association, grouping and arrangement of those incidents and characters in such a manner that presents a new concept or a novel arrangement of those events and characters. We accept that where a story is written based on vérious incidents which an themselves are commonplace a claim for copyright must be confined closely to the story which has been composed by the author. Another author who materially varies the incidents and characters and materially changes the story is not an infringer of the copyright. If a literary or dramatic work is not wholly original there 1s no copyright in the unoriginal part so as to prevent its use. Additional factors may fall for consideration where the

.. ,. alleged infringement is by cinematograph film... noe,

The primary Judge closely analysed the two films "Jaws"

and 'Great White". Notwithstanding that the subject matter of the film "Jaws" was not particularly striking his Honour held the view, 1n essence, that the combination of the principal

situations, singular events and basic characters was sufficient

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'to constitute an original work that was susceptible of protection under the law of copyright in this countiy. In our opinion his Honour's finding has not been shovn to be in error. It must be

remembered that all his Honour did was make his findings on the basis that a prima facie case was established. He did not make any final or defanitive finding con this, or indeed any other

It was submitted that his Honour erred in holding that the question whether the respondent's copyright was infringed by

the making and showing of the film "Great White" came down to a

question of whether "Great White" was a supsiainiial adaptation or reproduction of the book or screen-play "Jaws" or a substantial copy of the film "Jaws". Counsel. for the appellants submatted that the film "Great White" could not be said to constitute an infringement of any copyright of the respondents in the film

"Jaws" unless it was an exact or facsimile copy of the film

The argument was based on various matters including

, certain sections of. the Act. |Sectzon 1Q - which defines the word copy - and ss. 86 and 101 are some of the sections: referred to, No authority was cited for this proposition but counsel adopted as part of his argument a passage from Lahore's "Intellectual Property in Australia". We do not find it necessary to answer

this question. It raises important and difficult questions

which, if they are relevant on the final hearing, may be debated

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At its narrowest the major issue is whether or not the appellants' film "Great White" substantially reproduced the novel "Jaws" or the screen-play based upon that novel from which the respondent's film "Jaws" was made. In the resolution of that question it is appropriate to have regard to the operation of s.

21 of the Act which deems cinematographic films to be

reproductions of literary or dramatic works in certain . circumstances. If the primary 1ssue is so stated any problems of statutory anterpretation arising out of the definition of "adaptation" ain the Act, or as to what constitutes an infringement of one cinematographic film by another, can be avoided without risk of limiting the substance of the relief

sought which is to restrain the exhibition of the appellants'

The primary Judge correctly realised that two questions

were involved in the resolution of what is the major issue;

namely, the degree of objective similarity between the

ec * appellants' film and the respondent's, novel. .and screen-play and,

given sufficient objective similarity, -whether. copying was .

established. In relation to the question of copying, the

' appellants sought to show that the unspiration for the film

"Great White" came partly from the imagination of its producer,

Dr. Tucci, and partly from a book by one Ramon Bravo called

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His Honour was provided with a copy of the novel and screen-play "Jaws" but did not have time to read them in the circumstances attending the claim for interlocutory relicf. However the proceedings before him were conducted on the basis that the screen-play closely followed the novel and that the £11m "Jaws" closely followed the screen-play. Thus the exercise of comparison between the novel and the screen-play "Jaws" on the ene hand and the film "Great White" on the other hand wes regarded as appropriately undertaken by a comparison of the two films. Further, all his Honour had of the book "Carnada" was a

translation in condensed form. His Honour, with some degree of

fortitude, viewed both films, one after the other. \

The comparative exercise which his Honour undertook was central to his decision. He considered that there was such a marked degree of similarity between the two films that there was an inescapable inference of copying and that the respondent had an excellent chance of success at the trial. The strength of his views in relation to the similarity between the two films influenced the attitude which he took to much of the evidence, ancluding expert. -evidence, .and,to -the appellant's .denial, of

copying, most of which was held to be inadmissible. .- *

Much criticism was levelled by the appellants at the approach which his Honour took to such evidence and at the

inference of copying which he drew. Whilst our own viewing of

the films did not instill in us the same degree of conviction

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"that his Honour felt, we are not persuaded that his Honour was

Further it seems to us that 1t was not only open to his Honour to place the emphasis which he did upon his view of the similaritites between the tno films but was the appropriate course for him tc take in the particular circumstances in which he was placed with an application for interlocutory relief. Similarly it was appropriate for him to adopt the attitude which

he did to the evidence upon which he placed no reliance whether

or not such evidence is admissible or may be accepted at the

His Honour's findings in respect of these matters to

which we have referred have not been shown to be incorrect.

Similarly we are of the view that the attempt by the appellants

, to dissect the films and to exclude from consideration stock

scenes and banal events were of little value to the proceedings before his Honour in the circumstances as he found them. He

faced a broader question which was not to be resolved by the

drayving.of fine distinctions. , EPS SS, Sa ), in my opinion.

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; (Compare Copinger & Skone James on Copyright (12th edition), paragraph 800. 'The definition of "copy", in section 135(10) of the English Copyright Act 1956 is materially different from the definition of "copy" in section 10(1) of the Copyright Act 1968). Relying on the concessions to which I have referred, I have viewed the two films and have concluded, notwithstanding evidence to the contrary, that it is very probable that the making of the film "Great White" will be held at trial to have constituted a reproduction in material form of the novel and of the screen-play. The similarities between the two films stated in his Honour's

reasons for judgment, considered in the light of the concessions,

It was submitted for the appellants that those of the similarities which were found 1n occurrences patterned according to the commonplace in animal or human behaviour or character, or in drama or cinematographic art, or in a particular genre of either of those two fields of activity, should be disregerded in determining whether copyright had been infringed. It is unnecessary to express an opinion upon the correctness of the submission in its application to copyright in a film conceived as analagous to copyright in a novel or a dramatic work, but I have assumed for the purpose of disposing of this appeal that the appellants' construction of section 86(a) is correct, because I incline to the opinion that it is correct and because the appellants by their counsel maintain it. Accordingly it is the copyright in the novel and the scenario and script deriving from sections 31(1)(a)(i) and 21(1) which 1s here in question. See section 113. Cinematographic reproducticn of such vorks is in my opinion necessarily more completely reproduction within section 21(1)

the more faithfully the cccurreaces narrated or otherwise given

verbal representation in the works are portrayed by the visual images and sound of the cinematograph film, which section 10(1) defines; and in my opinion the greater the number of those occurrences so portrayed the more completely is such a work reproduced. If it should happen that some or all of those occurrences are commonplace within one or more of the conceptual frames of reference specified in the appellants' submission, that circumstance cannot, in my opinion, diminish the significance for the purposes of section 31(1)(a)(i) of a similarity discerned between an occurrence communicated in the literary or the dramatic

It was a ground of the appeal that the learned judge had been in error in treating certain evidence of expert opinion as inadmissible. This ground is based on that part of his Honour's reasons for judgment which is contained in the last paragraph on page 718 of the appeal book. It is not altogether clear to me what his Honour comprehended by the expression "the question of copying". It does seem that he regarded that as a question purely of fect. If it was a question of fact there arises a question as to which there still, I think, remains some doubt in the courts: whether an expert may directly and in terms express his opinion on the question. If there were involved, as I strongly suspect, in that question a legal element, then it is almost certain that his Honour was correct in declaring expert opinion on the question inadmissible. There is, I think, nothing in the passage to which I refer from his Honour's judgment to suggest that his Honour excluded from consideration evidence by experts pointing out similarities and disimilarities. I do not consider in all the circumstances that error vitiating the

Concerning the other grounds of appeal, I do not desire

to add anything to what has been said on behalf of the other two

members of the court. I agree that the appeal should be dismissed

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