Robinson v Sands and McDougall Pty Ltd [1916] HCA 51

Co. Lev. son & Derham; Fink, Best & Hall. ar Solicitor for the Commonwealth, Gordon H. Castle, Crown Solicitor

SANDS & McDOUGALL PROPRIETARY } Drrenpanih LIMITED : : : " ih

H.C. or A. Copyright - Infringement - Original literary work - Map - Exemption from liability 1916. to pay damages - Knowledge of existence of copyright - Name of author on map:

• Copyright Act 1912 (No. 20 of 1912), Schedule - Covyright Act 1911 (1 &: i

SYDNEY, Geo. Vc. 46), secs. 1, 2, 5, 6, 7, 8 31, 35. Aug. 29, 30, sede ; a a Bey 'The word " original" in sec. 1 (1) of the Copyright Act 1911 means Mensourne, Pied," "not imitated."

Sept. 14. Held, therefore, thet a map which is produced by a cartographer applying his faculties to the best sources of information within his reach, and which is in no sense a copy but presents points of difference from previous map according to the use to which he purposes to apply it, is an original literary

work within the meaning of sec. 1 (1), and entitled to copyright.

If a name purporting to be that of the plaintiff as author appears upon a published map the defendant in an action for infringement, although not 'otherwise aware that copyright subsists in the map, is not relieved from

liability in damages and accounts by sec. 8 of the Act. é

EARING of action. 'The plaintiff, Herbert Edward eclie? obineon, a a resident of

'he action was heard before Barton J., and the material facts arguments appear in his judgment hereunder.

ARTON J. read the following judgment : - This is an action in hich the plaintiff sued the defendants for infringement of his pyright ina map first published by him. He claims an in- junction, delivery up of all infringing publications in the defen- ' possession, an inquiry as to damages, and an account of ofits, Of course, he cannot have both the inquiry and the ount. The defence puts the plaintiff to proof of his copy- right, denies the alleged infringement, and pleads that at the ate a the publication by them the defendants were nob aware copyright subsisted in the plaintiff's map. The Commonwealth Copyright Act No. 20 of 1912 adopts, ith some alterations not material to this* case, and with hinery provisions adapting it to Australia, the Act of the ed Kingdom 1 & 2 Geo. V. c. 46, known as the Copyright

ec. 1 (1) - " Subject to the provisions of this Act, copyright I subsist throughout the parts of His Majesty's dominions to wh this Act extends . . . in every original literary

a7 Rogrnson . Sanps & MecDoveatt PrRoprig- vary Lrp.

LOIG. lished work, the work was first published within such parts

nee His Majesty's dominions as aforesaid." aie By sec. 35, "literary work includes maps, charts, plans, tables

MeDoveatt and compilations. accel Sec. 1 (2) - " For the purposes of this Act, ' copyright' me:

vary Lev. q the sole right to produce or reproduce the work or any sub- stantial part thereof in any material form whatsoever," &e.

Sec. 1 (3) - "For the purposes of this Act, publication, in relati mn to any work, means the issue of copies of the work to # public."

Sec. 2 (1) - " Copyright in a work shall be deemed to infringed by any person who, without the consent of the own of the copyright, does anything the sole right to do which is by this Act conferred on the owner of the copyright: Provided th ' the following acts shall not constitute an infringement of copy- right :- -

(1) Any fair dealing with any work for the purposes of private study, research, criticism, review, or newspaper summary : M4

(1v.) The publication in a collection, mainly composed of non-copyright matter, bond fide intended for the use of d schools, and so described in the title and in any advertise- ments issued by the publisher, of short passages from published literary works not themselves published for the use of schools in which copyright subsists."

See. 5 (1) - " Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein."

See. 6 (1) - * Where copyright in any work has been infringed, - the owner of the,copyright shall, except as otherwise provide by this Act, be entitled to all such remedies by way of injunction - or interdict, damages, accounts, and otherwise, as are or may be conferred by law for the infringement of a right."

See. 6 (3) - Where the defendant puts in issue the existence of the copyright, then - ; ,

"(a) if a name purporting to be that of the author is printed or otherwise indicated thereon in the usu manner, the person whose name is so printed or

indicated shall, unless the contrary is proved, be pre- sumed to be the author of the work ;

"(b) if . . . a name purporting to be that of the publisher or proprietor . . . is printed or otherwise indicated thereon in the usual manner, the person whose name is so printed or indicated shall, unless the contrary is proved, be presumed to be the owner of the copyright in the work for the purposes of proceedings in respect of the infringement of copyright therein."

Sec. 7 - " All infringing copies of any work in which copyright

ibsists, or of any substantial part thereof, and all plates used

or intended to be used for the production of such infringing

yright, who accordingly may take proceedings for the covery of the possession thereof or in respect of the conversion reof."

take it that such proceedings have properly been included in the claim now before the Court. Sec.8 - "Where . . . the defendant in his defence alleges

rk, the plaintiff shall not be entitled to any remedy other an an injunction or interdict . . . if the defendant proves at the date of the infringement he was not aware and had

work," Sec. 31 - " No person shall be entitled to copyright or any inilar right in any literary, dramatic, musical, or artistie work sit: otherwise than under and in accordance with the Ting

'k must be "original" in the sense of sec. 1 (1); secondly, at it must have been first published in Australia; thirdly, that a person who without the consent of the owner of the copyright eproduces the work or any substantial part of it in any material form infringes the copyright ; fourthly, that a name appearing on the work, as published, as the name of the author or publisher s primd facie proof of the authorship or ownership as the case

ww Rosrnson v. Sanps & McDoveat, Proprte- trary Lrp.

may be; and, fifthly, that a defendant relying on sec. 8 has burden of proof that he was not aware of and had no reasonabl ground for suspecting the existence of copyright, and if he fa he is liable to all the ordinary consequences of the infringement of the right.

An interesting argument was raised for the defence as to the meaning of the word "original" in see. 1 (1). I will deal witl this presently.

The plaintiff is a draughtsman who has been compilin; publishing and selling maps in Sydney since 1882, and has issued a large number of them.

The defendant Company, which is admitted to be correctly sued as named in these proceedings, carries on business in Mel i bourne and elsewhere as a general publisher. Its princi place of business is in Melbourne. 'lhus the parties are residents of different States. The plaintiff's map was first published i Sydney in December 1918. It was prepared and intended fer - use in schools and, of course, for purposes of general utility. It compilation was begun in 1911. The plaintiff and his witnesse: described the whole course of preparation. Numerous sources of - information were consulted, such as Mills's Geography, the tex! book for the medium classes of New South Wales Public Schools and other text-books. Separate maps of authority as well a: number of atlases were the subject of discrimination and selectio1 for the purpose of determining the places and features to shown on a map which was to be distinctive from its predecessors. - Officers of the Education Department were applied to for - information, which they furnished. The projection and scale h: Pp both to be selected and adapted so as to allow of the giving the best selection of information within the plaintiff's powe on a map of the intended size, namely 35in. by 40in. The work involved considerable exercise of the cartographic faculty an art. Authorities such as Chambers's Gazetteer, the Shippin Register, the World's Year Book, and the Journals of the Roya Geographical Society, were consulted for the attainment of © accuracy as well as for the winnowing out of such material as - might impair the object of securing clearness while retaining - educational value. When the map was sufficiently advanced for

purpose it was submitted to the Education Department, and it elicited suggestions, most of which were adopted. 'The plain- tiff himself not only did a great deal of the artistic, but all the itelleetual work involved. The manual work not done by him- self was carried out by his staff under his instructions; it was upon his judgment the names and features were chosen or rejected, the result being a map differing in many respects from previously produced, importing much useful, and rejecting useless or pty, slightly. useful, information, regard being

sure map as published Ratlinea in large letters the vords " by H. E. C. Robinson" following its title. The plaintiff's withorship was therefore to be presumed : sec. 6 (3) (a). It was produced by photo-lithography. The word " copyright" does not appear on it.

It appears that on the outbreak of war the defendants, fore- eeing the public demand for a sheet-map showing the various s of war of that time, determined to produce such a map on paper at a popular price - a shilling or thereabouts. The matter s in the hands of Mr. Western, the retail manager of the fendant Company, who had held that position for twelve years. wing that time he had not had any experience in the produe- of maps, but was versed in the buying and selling of them, ips of Europe included. Desiring to produce a good sheet for own Company he sent the head salesman out with instructions 'obtain a copy of a map from which the cheaper production ild be made. The salesman came back with a copy of the intiff's map. It was selling at £1 10s. a copy to the public, 1 £1 2s. 6d. to the trade; but the Education Department, ch bought many copies, paid 15s. each for them. The

that he also observed that nothing about copyright appeared it. Upon his instructions the defendants' first map was pnblished within a few days. At that time, he says, he was not vare that there was any copyright in the plaintiff's map, and no other information than the map itself on that subject; had he any until his Company received a letter from the ntiff dated 17th August 1914, complaining that the war map

published by the defendants was a piracy of his map of Euro published in the previous year, and stating that he would dema "the proceeds" (not the " profits") of the sale of the defenda Company's map and damages for the infringement of his cop right. At that time, the defendant Company had in fact pul lished and were selling two maps; the first of which wi published on the 7th August and the other a little | The plaintiff published on the 10th August a war map mad by himself. In its preparation he used the information his possession, including his own school map. The latter ae tinued to be sold, and the war map was in competition with the defendants' maps. Afterwards, as will be seen, they pu lished a third. After the receipt of the letter just mentione Mr. Western says, no copies of either of the Company's firs - mentioned maps were produced or sold by the Company them- selves, but copies were in the hands of persons in the trade wh had bought them before its receipt. 'The defendant Compan replied to that letter on 22nd August 1914 by a denial that their map of the seat of war was a piracy of the plaintiff's map. They had finished another, almost identical with their previ maps, but containing an inset map, on the 18th August. The Company sold copies of this to the public till about the mid of September, when they were sold out. All of the defendan

Ballarat, Geelong, and elsewhere. Both by the oval evidence an by comparison of the plaintiff's map with the alleged infrin; ments it is established beyond doubt that the defendant Com- pany's productions were in far the greater part copied from the plaintiff's. In fact the defendant Company's manager said cross-examination "the work consisted of transferring the whole of plaintiff's work (on the area covered) and adding what we did. We took the whole and added." Before this was said the proof of copying was so strong that the admission could do but - little to confirm it. The defendant Company purchased various: maps about the time they contemplated issuing those that are now challenged. They compared them with the plaintiff's map, which was the first they had bought. he plaintiff's map was_ found to suit them best. Their maps were on a 30in, by 40in. -

war on to the smaller sheet, adopting the same scale, but, of course, leaving out portions of the plaintiff's map. This accounts or the omission from the defendant Company's maps of many

npression in some cases and altered direction in other cases of mes which, nevertheless, are found like most of the other names to appear in the same lettering as those on the plaintiff's map. But it is beyond all possible question that there was wholesale xy: in one portion the defendants' map was an improvement on plaintiff's. When the latter was published the Balkan Wars in progress, and it was difficult in Australia to say what e the new boundaries or what they would be at the close of tilities. The plaintiff inserted the old boundaries. They not then correct, but it was scarcely possible to give them ectly for the reasons stated. On the other hand, in August )14, when the infringements were published, the boundaries as ained at the close of the second war were known here, and lefendant Company's manager procured a map of the Balkans the basis of which the new and correct boundaries were incorporated in Sands & McDougall's maps. ~ Teome now to the argument founded upon the occurrence in 1 (1) of the word " original" as applied to the various works which copyright is to subsist. Originality was not expressly mired by the English Act of 1842. It was argued that under Act of 1911 a map, to be " original," must be so novel and 'king in the method of its presentation of geographical facts to differ substantially from any presentation previously d, so that besides authorship in the sense of the previous an added quality of originality must be apparent to the eye.

eviously existing; the scheme or plan must be visibly so nov el s to imply that some novel principle was conceived and followed. In many of the old cases the word "original" was used as plying to new productions. As an instance, in Matthewson v. e (1), decided by Lord Erskine in 1806, the infringing

, for they found they could get the portion showing the seat H.C. or A.

names which appear on the plaintiff's map, and accounts also for McDovcarn

yw Rosinson v. Sanps & McDoveatt Proprie- rary Lrp.

work was described as "not original compilation, but a mer copy, with colourable variations." Here it is clear that the wo "original" was not used in the sense which Mr. Schutt would - ascribe to it as conveyed by the new Act. For, in the sense for which he contends, a compilation could scarcely be "original" although compilations often are and have been the subject of copyright. That Act includes compilations amongst "literary works," and they may be the subjects of copyright if they are original as compilations. In Graves' Case (1) it was contended that a photograph of an engraving was not an original pro- duction within the meaning of that word in the Artistie Copy- right Act of 1862. "The distinction between an original painting | and its copy is well understood," said Blackburn J. (2), " but i is difficult to say what can be meant by an original photograph. All photographs are copies of some object, such as a painting ora ; statue. And it seems to me that a photograph taken from a picture is an original photograph, in so far that to copy it is an infringement of this Statute." No doubt a photograph copied from the original photograph could not claim copyright, but that stands on a different footing from the original photograph. In _ Dicks y. Yates (3) the defendant had published a novel with the title of "Splendid Misery." 'The plaintiff had previously pub- lished a novel with the same title, but long before that there had been another novel of the same name. The injunction for which the plaintiff asked was refused by the Court of Appeal, Jessel M.R. and Lush LJ. pointing out, if not indeed resting their judg- ments on, the lack of originality in the title for which the plaintiff claimed copyright. The former asked (4): " How can the title 'Splendid Misery' be said to be original, when the very same words for the very same purpose were used nearly eighty years ago?" 'The Master of the Rolls further said (5) that "no - authority binding on us has been produced to show that there can be copyright in such a title as this," and Jumes LJ. concurred in that view. But it seems to me that the meaning that was there - attached to the word "original " was that which Webster's Un- abridged Dictionary gives as a secondary meaning, namely, "not. (1) LR. 4 QB., 715. (4) 18 Ch, D., at p. 89.

(2) LR. 4Q.B., at p. 723. (5) 18 Ch. D., at p. 90. (3) 18 Ch. D., 76. '

pied, not imitated." See also the Oxford Dictionary, vol. viL., 203, B. 4. It is in this sense that I think that the term is used in the Act of 1911.

It is true that practically everything conveyed in the plaintiff's map was in existence before its publication in sources from which everything presented in the map had been derived. No man can ent a map, the office of which is to present things ascertained, d in a sense it is difficult, if not impossible, to say that any fresh is original. But it would be a long step to say that there- no map could be the subject of copyright. Nor is it neces- ry to produce something which will be striking to the eye. But if a cartographer, applying his faculties to the best sources information within his reach, produces a map which is in no se a copy but presents points of difference from previous maps, ecording to the use to which he purposes to apply it, such a map an, I think, clearly be the subject of copyright, and I think tiff's map has the copyright which he claims for it. It is original in the requisite sense.

true that in that case Lord Halsbury pointed out that the " original," or any word of the same import, was not to be din the Statute then in force as a condition precedent. The tute did not make originality of thought or idea necessary to the it. But neither, I think, does the Act of 1911, if the production is not a copy, if it is original as a compilation. Speaking of the law, Lord Halsbury said (2) that copyright "is given by the tute to the first producer of a book, whether that book be wise foolish, accurate or inaccurate, of literary merit or of no merit ver." And so under the new Statute a stupid or inaccurate or one devoid of literary merit may still be the subject of ht because it may be an original work in the sense in ich the new Statute uses the word. In reading the report of uter v. Lane it is important to distinguish between the s of the word "original." For instance, Lord Rosebery's was original as the expression of his thoughts and ss, and in that sense the reporter's work' was not original, eause he used only Lord Rosebery's thoughts and ideas.

H. C. or A. 1916. Rosryson v. Sanps & McDoveaty Proprig- tary Lrp.

Otherwise the production would not have deserved the n: of a report. But, as a report, which could not be original thought and idea, the subject of copyright was original. Its author used his skill and labour to produce in writing ] ut which previously existed only as spoken words, and I think hi report would have been as fully entitled to copyright under thi new law as it was under the old. I do not think the new has overruled the deéision of the House of Lords. A work which is new in the sense that it is not a mere copy of some previous | publication is original in that sense, and may be the subject of copyright now as of old. Novelty or originality in any of! sense is not, I -think, essential. As the learned editor o

index to Bradshaw's Guide for 1914 was, as an index to a nev work, entitled to copyright, and that the publication and sale of th matter copied from the index was an infringement, and this not- withstanding the word " original " as used in the new Act. I true that learned counsel for the defendant do not appear to have' mentioned the argument on which Mr. Schutt insists.~ But they attacked the Guide as not being the subject matter of copy- - right inasmuch as that right could not subsist in what they calles the reprinting of bundles of time-tables, even with the additi of mileage and cross references; and the case they relied on that argument, namely, Leslie v. J. Young & Sons (2), was deci before the Act of 1911. It seems to have been taken for grant that the law had not been altered by the importation of the w "original," and Joyce J. said (3): - * Under the present Copy: right Act, copyright subsists in every original 'literary woi which term includes compilations; so that I suppose the list of

(1) (1915) 2 Ch., 376. (2) (1894) A.C., 335. (3) (1915) 2 Ch., at p. 381.

nes which forms or is contained in the index to Bradshaw

ion"; so that it is clear that his Lordship thought that » work was as much entitled to copyright after 1911 as it uld have been if published before that year. He said 'urther (1) : - " At all events it appears to me that the defendants k a substantial portion of the list of names contained in the dex to the plaintiffs' publication, thus without any exertion of their own getting the benefit of the labour and expense expended in compiling the list which formed the index to Bradshaw. This t id not for their own personal use, but for the purpose of reproduction by publication at a profit." I think it is clear that re is copyright in the map of the plaintiff, and that the maps defendants are infringements of his right. Jn the case of me v. Statist Oo. (2) Bailhache J. was unquestionably of opinion I have expressed as to the meaning of "original erary work,"

_Tcome to the defence that the defendants were not aware of the stence of the copyright. I have already quoted sec. 8, under ich, in order to escape consequences other than an injunction, defendant must prove that at the date of the infringement he yas not aware, and had no reasonable ground for suspecting, that ht subsisted in the work. I have stated the evidence on s point, save that I should add that the plaintiff's previous ips had all been marked "copyright." He says, and I believe that the word was omitted from the new map by oversight. 1en it was completed, registration had ceased to be necessary. defendant Company's manager, however, did not know the uintiff's previous practice when he published the infringing ps; he did not know it until he received the letter of 17th t, so that he could not found any inference on the differ- in this respect between that and the plaintiff's earlier maps. he saw the plaintiff's name on the map and the word " by " ch preceded it, and the map therefore not only bore evidence sec. 6 (3) (a) that the plaintiff was primd fucie the author work, but it conveyed an intimation of its authorship to y ordinary observer. He saw and disregarded the intimation.

) (1915) 2 Ch., at p. 383. (2) (1914) 1 K.B., 622, at p. 627.

H.C. or A. Tt is not enough for him to swear that he was " not aware" that

ae copyright existed, since from the face of the map he could hardly Roxrxson help suspecting its existence. 'The defence in question was really _

pee & Bot supported by evidence at all, and as a matter of fact I find CHS against it. See per Bailhache J. in Byrne v. Statist Co. (1). ROPRIE

rary Lrp. __In the result I think the plaintiff has substantiated his claim, - and I grant the first, second, and third of his prayers, namely, an injunction, delivery up of all copies of infringing maps, and an account of profits. 'lhe plaintiff will have his costs, including - the costs of the summons for directions which were reserved to the hearing. Further consideration and costs reserved. Liberty

Solicitor for the plaintiff, P. J. O'Donnell. Solicitors for the defendants, Mulleson, Stewart, Stawell &

APPLICANT, H.C. or A. 1916. Trade Mark - Registration - Similarity to registered mark - Likelihood of deception -

~ Condition - Trade Marks Act 1905-1912 (No. 20 of 1905 - No. 19 of 1912), MELBOURNE, gece, 16, 25, 28, 114. Sept. 19, 20.

pees A trade mark of which registration was sought consisted substantially of

eee a black swan, with the name " Burley" in white letters upon it, on a white

Rich JJ. ground of the shape of the continent of Australia. The application was