The ubiquitous nature of the internet and the ease that images and text are able to be copied via a website browser may lead to the conclusion that the work of competitors can be freely copied. This was the erroneous view of the Respondents in the case of Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 (Motorcycle Aftermarket Spares). In this case Dundas Lawyers was successful in obtaining interim and permanent injunctions and an award of additional damages for flagrant breach of copyright pursuant to section 115(4) of the Copyright Act 1968 (Cth) (Act).
What is copyright infringement?
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Only the copyright owner has the exclusive right to reproduce literary or artistic works in which copyright subsists.[1] Generally the reproduction of such material without the consent of the owner amounts to a breach of copyright.[2] Although it is amongst the most common and is the focus of this article, direct reproduction is not the only form of copyright infringement. Sections 36 to 39B of the Act describe further conduct which can amount to infringement that can be broadly described as “secondary infringement”.
Are photographs and text used on websites subject to copyright?
Before any claim of copyright infringement can be successful the relevant material must be protected by copyright, this is referred to as “subsistence of copyright”. There is no need to apply for or register copyright in Australia, it either subsists in material or it does not.
Original photographs and text constitute artistic and literary works respectively for the purposes of the Act and consequently are items in which copyright can subsist.
Who can commence proceeding for copyright infringement?
Under section 115(1) of the Act it is the owner of a copyright that has standing to bring an action for infringement. Subject to any assignment thereof, the copyright is owned by person who created the relevant material, that is, in the case of photographs, the photographer and in the case of written text, the original author.
Outside of the owner, an exclusive licensee also has a right of action for infringement of copyright against all but the owner pursuant to section 119 of the Act.
Background to Motorcycle Aftermarket Spares
In the case of Motorcycle Aftermarket Spares the Applicant was the proprietor of a popular eBay store selling motorcycle spare parts. They had created a sizable database of original photographs and written descriptions (Trade Text) of the products they sold via an eBay store.[3] The copyright in the photographs and Trade Text was owned by the Applicant.[4]
In September 2013 the Applicant discovered that a competitor (Respondent), was using over 200 of its photographs and Trade Text descriptions on its own eBay store. The Applicant reported the Competitor’s store to eBay and also personally informed them that they were infringing their copyright on 4 November 2013.[5]
On 19 November 2013 the Applicant checked the Competitor’s store only to find that its photographs and Trade Text were still being used. On 21 November, acting on behalf of the Applicant, Dundas Lawyers sent the Respondent a ‘cease and desist letter’ asserting that the Applicant owned the copyright in the photographs and Trade Text and that the reproductions were a breach of copyright. A response on behalf of the Respondent was received on 28 November 2013 denying the allegations and stating an intention to defend any action commenced against them.[6]
Notwithstanding the Respondents denials, its store was taken down on 29 November 2013 and immediately relaunched under a new name, Motorcycle Parts Online Australia (MPOA).[7] Despite being put on notice of the previous warnings, by 6 January 2014, the Respondent now trading as MPOA had returned to using a significant number of the Applicants photographs and Trade Text.[8]
Having had enough, on 4 March 2014 the Applicant commenced proceedings in the Federal Court of Australia by way of Application seeking:
- interim and permanent injunctions to restrain the respondent from infringing their copyright;
- nominal damages for the infringement; and
- additional damages based on the conduct of the respondent.
The Court made the orders for interim injunctive relief on 9 April 2014 and a permanent injunction on 7 November 2014, with damages assessed at a later hearing on 23 December 2014.[9]
The Applicant was awarded nominal damages of $7,500.00 for the infringements and, in light of the conduct of the respondent in continuing their actions after repeated contact from the Applicant, additional damages pursuant to section 115(4) of the Act of $65,000.00 plus legal costs.[10]
Whilst the decision was not surprising, the case is a lesson that the Courts take a dim view of those that flagrantly breach the copyright of their competitors. The matter also provides a warning to those that refuse to acknowledge the hard work of others – photographs and Trade Text cannot be freely copied!
Links and further references
Legislation
Cases
Corby v Allen & Unwin Pty Limited [2013] FCA 370
Dynamic Supplies Pty Ltd v Tonnex International Pty Ltd (No 3) [2014] FCA 909
Flags 2000 Pty Ltd v Smith [2003] FCA 1067
Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 2) [2008] FCA 746
Leica Geosystems Pty Ltd v Koudstaal (No 3) [2014] FCA 1129
Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433
Seafolly Pty Limited v Fewstone Pty Ltd [2014] FCA 321
Seafolly v Madden [2012] FCA 1346
Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd [2014] FCA 595
TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) [2007] FCA 151
Further information
If you need advice on enforcing your rights in copyright or defending allegations on infringement, contact us for a confidential and obligation-free discussion:
Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au
Disclaimer
This article contains general commentary only. You should not rely on the commentary as legal advice. Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.
[1] Copyright Act 1968 (Cth) s 31.
[2] Copyright Act 1968 (Cth) s 36.
[3] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [11]-[13].
[4] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [11].
[5] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [14].
[6] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [15].
[7] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [16].
[8] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [16].
[9] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [2].
[10] Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433 at [30]-[32].
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