Additional damages for copyright infringement
Under Australian law, victims of copyright infringement may be entitled to an account of profits or compensatory damages under s.115 (2) of the Copyright Act 1951 (Cth) (Copyright Act). Additional damages may also be available under section 115(4) of the Copyright Act. That section provides: (4)Where, in an action under this section: (a)an infringement of copyright is established; and (b)the court is satisfied that it is proper to do so, having regard to: (i)the flagrancy of the infringement; and (ia)the need to deter similar infringements of copyright; and (ib)the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright; and (ii)whether the infringement involved the conversion of a work or other subject‐matter from hardcopy or analog form into a digital or other electronic machine‐readable form; and (iii)any benefit shown to have accrued to the defendant by reason of the infringement; and (iv)all other relevant matters; the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances. The purpose of additional damages is to deter copyright infringement. The amount of additional damages awarded will depend on the facts of the case, such as the nature and extent of the infringement, the level of harm suffered by the copyright owner, and any aggravating or mitigating factors. It is worth noting that the award of additional damages is discretionary and not automatic, and that the copyright owner must prove their entitlement to such damages. Additionally, courts may consider other factors such as the infringer’s conduct, their level of knowledge of the infringement, and any steps taken to remedy the infringement when determining whether to award additional damages. Top Plus Pty Ltd v Mix Entertainment Pty Ltd [2022] FEDCFAMC2G 981 This case concerned Top Plus Pty Ltd who were applying for summary judgment against the first respondent, Mix Entertainment Pty Ltd, and the second respondent, Mr Yiren Wang, for infringement under ss 115 and 116 of the Copyright Act1968 (Cth) of copyright in certain cinematograph films owned by the second applicant, Universal Music Limited, and exclusively licensed to the first applicant, Top Plus Pty Ltd. The cinematograph films were karaoke music videos (KMVs). They comprised approximately 6,214 Chinese (both Mandarin and Cantonese) and English KMVs, and new releases of KMVs added from time to time, owned and controlled by Universal Music, released in Hong Kong and Australia, and/or supplied commercially in Australia in VCD/DVD format or electronic form (collectively, the KMV Films). Mix Entertainment had previously been accused of alleged unlicensed use of copyright in the KMV Films in infringement of applicants’ rights. That earlier dispute was resolved in 2012 prior to the commencement of suit by entry into a written non‐exclusive licence agreement between Top Plus and Mix Entertainment, signed by Mr Wang in his capacity as sole director of Mix Entertainment on 30 April 2012 (2012 Agreement). Pursuant to the 2012 Agreement, Top Plus permitted Mix Entertainment to offer the licensed content — the KMV Films — for viewing and singing by customers in up to 13 rooms at Mix Entertainment’s karaoke outlet ‘Mix Karaoke’ for the period of the licence. The 2012 Agreement expired on 31 December 2012. Compensatory damages which applied the licence fee test were awarded in the sum of $179,616.70. Principles governing an award of additional damages under s.115(4) of the Copyright Act 1951 (Cth) Reference was made to a summary of the principles relating to an award of additional damages at [717] – [721] of Microsoft Corporation v CPL Notting Hill Pty Ltd (No 7) [2022] FedFamC2G 590. In short, the principles are: First, it is not necessary that any amount of additional damages be proportionate to any award of compensatory damages. Secondly, an award of additional damages involves an element of penalty. Thirdly, part of the [function] of an award of additional damages is to mark the Court’s disapproval or opprobrium of the infringing conduct. Fourthly, the matters set out in sub‐s 115(4)(b) of the Copyright Act are not preconditions to an award of such damages. Fifthly, conduct that may properly be seen as flagrant (per s 115(4)(b), Copyright Act) includes conduct which involves a deliberate and calculated infringement, a calculated disregard of an applicant’s rights, or a cynical pursuit of benefit In addition: If additional damages are appropriate, the amount of damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again. It should also be noted that, whilst additional damages encompass, they are not the same as aggravated or exemplary damages at common law. Specific deterrence has a role to play, including general deterrence. It is not always the case, however, that additional damages must be given, nor that they be such as to be given in an award and an amount as claimed by an applicant. Additional damages may be seen as encompassing broad concepts not always readily amenable to precise measurement or quantification. This includes having regard to capturing aspects of loss that have not been able to be ascertained because of the imperfect nature of litigation and evidence gathering in reflecting all aspects of wrongdoing and the total damaging effect of infringing or contravening conduct. It also entails giving a dollar figure to otherwise intangible considerations of punishment, giving effect to judicial disapproval and sanction and future‐looking considerations of specific and general deterrence. A key consideration when deciding to exercise the discretion afforded to the Court under s 115(4) of the Copyright Act is whether the infringement was flagrant. As noted by Beach J in Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217; 120 IPR 137 at [244] (citations omitted): [244]…in this context flagrancy means more than copying. It also means more than mere mistakes or carelessness. It connotes reprehensible conduct or scandalous conduct which may be demonstrated by deliberate and calculated acts of infringement. But it is not necessary to demonstrate a consciousness of copyright infringement. A consciousness of wrongdoing may be sufficient. In Truong Giang Corporation v Quach [2015] FCA 1097; (2015) 114 IPR 498 , discussing the relevant principles in the trade mark context, applicable also to the copyright context, per s 115(4)(b)(ib), Copyright Act) Wigney J said at [138]–[139]: [138]Sixth, post‐infringement conduct within s 126(2)(c) of the [Trade Mark Act 1995 (Cth) (TM Act)] is unlikely to include the respondent’s conduct of
Damages for Republication of Defamatory Statement by Third Party
Milne v Ell [2017] NSWSC 555 Home This case serves as a reminder of how liability for defamatory statements can extend to the republication of the statement by third parties, even where the republication has not been expressly authorised (but impliedly authorised). In summary, an original publisher will be liable for the repetition of his or her original defamatory publication, including in altered form where the republication adheres to the sense and substance of the original publication and: he or she expressly or impliedly requested or authorised the repetition of the original publication; he or she intended that the repetition should take place; the repetition is the natural and probable consequence of the original publication; or there is a duty or obligation on the recipient of the original publication to repeat the original publication. The defendant, Mr Ell, originally brought an action for defamation against the plaintiff, Ms Milne and Mr Ell was awarded $15,000 in damages plus costs in 2014. Shortly after the 2014 judgement, Mr Ell was contacted by a journalist to whom Mr Ell said (referring to Ms Milne) “She’s not a fit and proper person to be a councillor…” (Statement). This and other statements were subsequently published by the journalist in a printed article appearing in NSW and QLD as well as online. Ms Milne succeeded in obtaining an award of damages for defamation against Mr Ell arising from the Statement, and its subsequent republication by the journalist. In summary, it was held: Requirement of specificity of pleading imputations: The words “She’s not a fit and proper person to be a councillor…” referring to Ms Milne were sufficient by themselves to give rise to a defamatory imputation (i.e. they constituted an act or condition asserted of or attributed to a person). It was unnecessary for the pleading in the statement of claim to be more specific in the circumstances. Defence of honest opinion / fair comment: The imputation was one which related to a matter of public interest (because it related to whether or not a public officer was a fit and proper person to hold the position). On the question of whether or not the Statement was an expression of opinion rather than fact, the Court is required to examine the context, including whether the imputation is a “bare comment”, denuded of the facts upon which it is based or notorious facts presumed to be known by the reader, or without any of the other elements necessary to substantiate the defence. In the circumstances a reasonable recipient would understand the Statement as a statement of fact and not the offering of an opinion based upon stated facts. Accordingly, because the Statement was not an opinion and was not based upon stated facts, the defence of honest opinion / fair comment did not apply. Republication: The republication of the Statement made to the journalist was the natural and probable result of uttering the words in the Statement to the person (who was known to Mr Ell to be a journalist) and Mr Ell was therefore liable for its republication. In the circumstances of a press conference, or interview by the press, express authority or a request to publish is not necessary. Damages: In determining the amount of damages to be awarded in any defamation proceedings, the court is to ensure that there is an appropriate and rational relationship between the harm sustained by the plaintiff and the amount of damages awarded. The purposes of an award of damages have been described as including: the consolation to the personal distress and hurt caused by the publication; reparation for the harm done to the personal and business reputation of the person defamed; and vindication of the reputation of the person defamed. If there had been no republication in this case then the damages would have been nominal (if any). In terms of the republication, the relevant publication issue had sales of approximately 36,000 newspapers and a readership of approximately 135,000. The online publication also caused additional damage and, in some respects, notwithstanding its withdrawal from the website, it may still be causing damage. The judge also accepted the “grapevine” effect of the publication of the article in print and the broadcasting of the website so that the damage was not confined to those that read the article or opened and/or downloaded the website article. Taking into account the fact that a public apology had been published by the publishers of the article (thereby vindicating Ms Milne to an extent), damages of $45,000 were awarded to Ms Milne plus costs. C