Universal Music Australia Pty Ltd v Miyamoto - [2003] FCA 812 - FCA 2003 case summary — Zoe

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Universal Music Australia Pty Ltd v Miyamoto

[2003] FCA 812

Federal Court of Australia|2003-07-18|Before: Mary J, Lindgren J

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At a glance

Source facts

Court

Federal Court of Australia

Decision date

2003-07-18

Before

Mary J, Lindgren J

Source

Original judgment source is linked above.

Judgment (50 paragraphs)

[1]

As against the First, Second, Third, Fourth, Fifth,

[2]

Sixth and Twelfth Respondents Note: Certain expressions used in these orders are defined for the purposes of these orders in the Schedule of Definitions hereto. the court orders that: 1. All issues of the quantum of pecuniary relief be determined separately from and after the determination of all other issues in this proceeding.

[3]

the court declares that: Copyright declarations The first respondent 2. The first respondent has infringed the copyright of the first, second and third applicants in the following recordings (First Group of Recordings): Artist Recording Title Exhibit Ja Rule Always on Time MB-3 Ashanti featuring Ja Rule Leaving (Always On Time Part II) MB-4 Mary J Blige featuring Common Dance For Me MB-7 Jennifer Lopez featuring Ja Rule Ain't It Funny (Remix) MB-13 Mary J Blige featuring Ja Rule Rainy Dayz MB-8 Nelly Hot in Here MB-9 Nelly featuring Kelly Rowland Dilemma MB-10 Ja Rule Down Ass Bitch MB-5 Jennifer Lopez featuring Nas I'm Gonna Be Alright (Remix) MB-12 Brandy Full Moon MB-14 Tweet Boogie 2nite MB-16 Tweet featuring Missy "Misdemeanour" Elliott Oops (Oh My) MB-15

[9]

Trade Practices Declarations The first respondent 7. The first respondent, in trade or commerce, has engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Bizarre Ride Representations to be made. 8. The first respondent, in trade or commerce, has made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the Bizarre Ride Representations to be made. The first and second respondents 9. The first and/or second respondents, in trade or commerce, have engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Black Label Representations to be made. 10. The first and/or second respondents, in trade or commerce, have made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the Black Label Representations to be made. The third respondent 11. The third respondent, in trade or commerce, has engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Gunz Representations to be made. 12. The third respondent, in trade or commerce, has made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the Gunz Representations to be made. The third, fourth and fifth respondents 13. The third, fourth and/or fifth respondents, in trade or commerce, have engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the Allstars Representations to be made. 14. The third, fourth and/or fifth respondents, in trade or commerce, have made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the Allstars Representations to be made. The sixth respondent 15. The sixth respondent, in trade or commerce, has engaged in conduct which was misleading and/or likely to mislead and deceive, in contravention of s 52 of the Trade Practices Act 1974 (Cth) and s 42 of the Fair Trading Act 1987 (NSW) in causing the First Representations to be made. 16. The sixth respondent, in trade or commerce, has made false representations in contravention of ss 53(a) and (c) of the Trade Practices Act 1974 (Cth) and s 44 of the Fair Trading Act 1987 (NSW) in causing the First Representations to be made. the court orders that: Copyright claims - Permanent injunctions against copying The first respondent 17. The first respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the First Group of Recordings, without the licence of the first, second and third applicants. The first and second respondents 18. The first and second respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Second Group of Recordings, without the licence of the first, second and third applicants. The third respondent 19. The third respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Third Group of Recordings, without the licence of the first and second applicants. The third, fourth and fifth respondents 20. The third, fourth and fifth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Fourth Group of Recordings, without the licence of the first and third applicants. The sixth and twelfth respondents 21. The sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Fifth Group of Recordings, without the licence of the first, second and third applicants.

[16]

Copyright claims - Permanent injunctions regarding Making and Trading In applicants' catalogue 30. The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the first applicant, or any sound recordings contained as at 14 February 2003 within the Universal Music Catalogue, without the licence of the first applicant. 31. The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the second applicant, or any sound recordings contained as at 14 February 2003 within the Sony Music Catalogue, without the licence of the second applicant. 32. The first, second, third, fourth, fifth, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In records, that contain a copy of, the whole or a substantial part of any music CDs released by the third applicant, or any sound recordings contained as at 14 February 2003 within the Warner Music Catalogue, without the licence of the third applicant. Copyright claims - Permanent injunctions regarding websites 33. The first, sixth and twelfth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Trading In the Bizarre Ride Infringing Record, the Black Label Infringing Records and the Alltime Showtime Record without the licence of the first, second and third respondents whether from the website at the URL www.anthemrecords.com.au or from any other website operated by them. Trade Practices claims - Permanent injunctions The first respondent 34. The first respondent, whether by himself, his servants, agents or otherwise, be permanently restrained from making, or causing to be made, or being a party to or directly or indirectly knowingly concerned in the making of: (a) the Bizarre Ride Representations; and (b) any matter which is substantially identical to the Bizarre Ride Representations. The first and second respondents 35. The first and second respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or causing to be made, or being parties to or directly or indirectly knowingly concerned in the making of: (a) the Black Label Representations; and

[22]

the court orders that: Copyright claims - Permanent injunctions against copying The seventh and eighth respondents 3. The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making, or authorising the making of, a copy of, the whole or a substantial part of any of the Sixth Group of Recordings, without the licence of the first, second and third applicants. Copyright claims - Permanent injunctions regarding copying applicants' catalogue 4. The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the first applicant, or any sound recordings contained as at 14 February 2003 within the Universal Music Catalogue, without the licence of the first applicant. 5. The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the second applicant, or any sound recordings contained as at 14 February 2003 within the Sony Music Catalogue, without the licence of the second applicant. 6. The seventh and eighth respondents, whether by their servants, agents or otherwise, be permanently restrained from making or authorising the making of a copy of, the whole or a substantial part of any music CDs released by the third applicant, or any sound recordings contained as at 14 February 2003 within the Warner Music Catalogue, without the licence of the third applicant. Copyright claims - Permanent injunctions against Making and Trading In The seventh and eighth respondents 7. The seventh and eighth respondents, whether by themselves, their servants, agents or otherwise, be permanently restrained from Making and/or Trading In the following records without the licence of the first, second and third applicants: Cat no. Compact disc title exhibit D016716 Bizarre Ride MOT-1 N/A Allstars Showtime GUN-1

[36]

His Honour reserved leave for the applicants to maintain the proceeding as so constituted until they had sufficient information to move the Court for leave to amend by substituting the true names of the four John Doe respondents. Progressively as the names of the individuals referred to as the various "John Does" became known, their true names were substituted, pursuant to orders made by me. 8 Being disc jockeys, the first five respondents have been called "DJ respondents". The remaining seven respondents were joined as parties pursuant to orders of the Court. For reasons that appear in the next paragraph, I will call them the "retailer respondents". 9 In summary, the proceeding arises out of the "remixing" by the DJ respondents of tracks from sound recordings, and the selling or offering for sale by the remaining respondents, of compact discs containing the remixed tracks. The copyright in the sound recordings is vested in persons of whom various applicants are the exclusive licensees in Australia. It seems, however, that some of the applicants may have been included for more abundant precaution. In fact, the principal applicants are the first, second and third applicants, to which I will refer as Universal Music, Sony Music and Warner Music, respectively. 10 By the amended application filed on 14 February 2003, the applicants seek declarations of certain kinds against the DJ respondents and declarations of different kinds against the retailer respondents. As well, they seek injunctive relief and other orders. They also seek an order for costs. 11 It is appropriate to note that many, if not all, of the artists in question are successful international artists with a substantial degree of popularity in Australia and overseas. 12 I will order that the question of damages or an account of profits be dealt with separately on a future occasion. 13 One matter which has troubled me is whether it is appropriate for all ten applicants and twelve respondents to be dealt with in the one proceeding. It is understandable how this has come about - it has come about as part of an anti-piracy campaign conducted by the various music recording and selling enterprises represented by the applicants. 14 Order 6 rule 2 of the Federal Court Rules provides: "Two or more persons may be joined as applicants or respondents in any proceeding - (a) where - (i) if a separate proceeding were brought by or against each of them, as the case may be, some common question of law or fact would arise in all the proceedings; and (ii) all rights to relief claimed in the proceedings (whether they are joint, several or alternative) are in respect of or arise out of the same transaction or series of transactions; or (b) where the court gives leave so to do." 15 Analysis may reveal that in relation to every sound recording which was "remixed", there is one compact disc which was, or there are several compact discs which were, sold by one or more of the retailer respondents, and that every CD has tracks for sound recordings, in respect of the copyright in which various applicants are the exclusive licensees. So, it may be that there is a "connection" between each party and every other party. I have not explored this question. It is obvious, however, that there are many connections. 16 It seems to me convenient and in the interests of both the applicants and the respondents that all the parties and causes of action be embraced within this single proceeding - see my observations later as to costs. To remove any doubt I propose to make an order under O 6 r 2(b) of the Court's Rules giving leave to the applicants to join all twelve respondents in the proceeding. Such leave may be given after joinder and without notice to the parties to be joined: O 6 r 4. The view has been taken that where leave is given after joinder has in fact occurred, the leave takes effect retrospectively as at and from the date when joinder in fact occurred: Cerche v Commissioner of Taxation [2001] FCA 1146.

[45]

COSTS 29 The question of costs is an interesting one. The applicants ask me to make a lump sum order for costs. Michael John Williams, a partner at Gilbert and Tobin, solicitors for the applicants, an experienced intellectual property lawyer, has sworn an affidavit giving some detail of the work which has been undertaken on behalf of the applicants in the proceeding. There is no doubt that a very considerable amount of work has been undertaken. Mr Williams has also given, with supporting reasons, his estimate of the amount of costs which would be recovered by the applicants on a taxation of costs. After allowing for a deduction in respect of the ninth, tenth and eleventh respondents, with whom, as noted earlier, the applicants settled, and also in respect of costs incurred by the applicants in respect of a business "Insane", which did not become a respondent, his estimate of the professional costs and disbursements incurred by the applicants in relation to the remaining respondents is $173,382.56. 30 Mr Williams estimates that on average a reduction of some 40 percent is made on taxation in order to arrive at party and party costs. This would give a figure of $104,029.54. In addition, at the time of swearing his affidavit on 8 July 2003, his estimate of the costs on the further conduct of the application for summary judgment was $10,000, including professional costs and counsel's fees. Subjecting that figure to the 40 percent reduction, one is left with an amount of $6,000 to be added on to the sum of $104,029.54, giving a total of $110,029.54. The applicants seek an order for a rounded off figure of $110,000. They join in asking that the order be made in favour of Universal Music alone. 31 I see no reason to question Mr Williams's affidavit evidence. Moreover, I would wish to make a lump sum order. However, I have a difficulty. What is sought is an order creating joint and several liability, so that each respondent would be liable to pay the whole of the costs - of course, each would have a right of contribution against the others. My difficulty can be indicated by this rhetorical question: Why should one respondent have to bear costs incurred in bringing a proceeding against all the other respondents? 32 Let it be assumed that all the respondents except one do not pay. Is it just that that one should have to bear the total amount of $110,000? Would the costs attributable to bringing a proceeding and proving the case against that one alone be anything remotely approaching $110,000? 33 On the other hand, there are difficulties in the suggestion that the amount each respondent should be required to contribute to costs should be the amount that respondent would have had to pay if a separate proceeding had been brought against that respondent. For example, each of the twelve respondents would have to pay the amount of the filing fee on the proceeding brought against that respondent, whereas, as a result of all having been sued in the one proceeding, the applicants have burdened each respondent with only one twelfth of a single filing fee (on the assumption that all respondents do in fact contribute). No doubt illustrations of such savings of costs could be multiplied: another obvious one is the cost of proving the existence of copyright which has not had to be undertaken more than once. 34 It may prove to have been in the interests of each respondent that the single proceeding was brought. 35 Because this issue has caused me some difficulty I will not make an order for costs this afternoon but the question can be dealt with on 1 August 2003, which is the date proposed for directions for the purpose of the claim for damages or an account of profits.