Copyright Act 1968/Part 5

Layout 2

Part V.—Remedies for Infringements of Copyright.

Division 1.—Preliminary.

Interpretation. 114.—(1.) In this Part, “action” means a proceeding of a civil nature between parties, and includes a counterclaim.

(2.) In the application of this Part in relation to a counterclaim, references to the plaintiff and to the defendant shall be read as references to the defendant and to the plaintiff, respectively.

Division 2.—Actions by Owner of Copyright.

Actions for infringement.. 115.—(1.) Subject to this Act, the owner of a copyright may bring an action for an infringement of the copyright.

(2.) Subject to this Act, the relief that a court may grant in an action for an infringement of copyright includes an injunction (subject to such terms, if any, as the court thinks fit) and either damages or an account of profits.

(3.) Where, in an action for infringement of copyright, it is established that an infringement was committed but it is also established that, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright, the plaintiff is not entitled under this section to any damages against the defendant in respect of the infringement, but is entitled to an account of profits in respect of the infringement whether any other relief is granted under this section or not.

(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;

(ii) any benefit shown to have accrued to the defendant by reason of the infringement; and

(iii) all other relevant matters,

the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.

Rights of owner of copyright in respect of infringing copies. 116.—(1.) Subject to this Act, the owner of the copyright in a work or other subject-matter is entitled in respect of any infringing copy, or of any plate used or intended to be used for making infringing copies, to the rights and remedies, by way of an action for conversion or detention, to which he would be entitled if he were the owner of the copy or plate and had been the owner of the copy or plate since the time when it was made.

(2.) A plaintiff is not entitled by virtue of this section to any damages or to any other pecuniary remedy, other than costs, if it is established that, at the time of the conversion or detention—

(a) the defendant was not aware, and had no reasonable grounds for suspecting, that copyright subsisted in the work or other subject-matter to which the action relates;

(b) where the articles converted or detained were infringing copies―the defendant believed, and had reasonable grounds for believing, that they were not infringing copies; or

(c) where an article converted or detained was a plate used or intended to be used for making articles—the defendant believed, and had reasonable grounds for believing, that the articles so made or intended to be made were not or would not be, as the case may be, infringing copies.

Division 3.—Proceedings where Copyright is subject to Exclusive Licence.

Definitions. 117. In this Division—

“if the licence had been an assignment” means if, instead of the licence, there had been granted (subject to conditions corresponding as nearly as practicable with those subject to which the licence was granted) an assignment of the copyright in respect of its application to the doing, at the places and times authorized by the licence, of the acts so authorized;

“the other party” means—

(a) in relation to the owner of the copyright—the exclusive licensee; and

(b) in relation to the exclusive licensee—the owner of the copyright.

Application. 118. This Division applies to proceedings in relation to a copyright in respect of which an exclusive licence has been granted and is in force at the time of the events to which the proceedings relate.

Rights of exclusive licensee. 119. Subject to the succeeding sections of this Division—

(a) except against the owner of the copyright, the exclusive licensee has the same rights of action as he would have, and is entitled to the same remedies as he would be entitled to, by virtue of section 115 of this Act if the licence had been an assignment, and those rights and remedies are concurrent with the rights and remedies of the owner of the copyright under that section;

(b) except against the owner of the copyright, the exclusive licensee has the same rights of action as he would have, and is entitled to the same remedies as he would be entitled to, by virtue of section 116 of this Act if the licence had been an assignment; and

(c) the owner of the copyright does not have any rights of action that he would not have, and is not entitled to any remedies that he would not be entitled to, by virtue of section 116 of this Act if the licence had been an assignment.

Joinder of owner or exclusive licensee as a party. 120.—(1.) Where—

(a) an action is brought by the owner of the copyright or by the exclusive licensee; and

(b) the action, in so far as it is brought under section 115 of this Act, relates, in whole or in part, to an infringement in respect of which the owner and the licensee have concurrent rights of action under that section,

the owner or licensee, as the case may be, is not entitled, except with the leave of the court, to proceed with the action, in so far as it is brought under that section and relates to that infringement, unless the other party is joined as a plaintiff in the action or added as a defendant.

(2.) This section does not affect the granting of an interlocutory injunction on the application of the owner of the copyright or of the exclusive licensee.

Defences available against the exclusive licensee. 121. In an action brought by the exclusive licensee by virtue of this Division, a defence under this Act that would have been available to a defendant in the action if the action had been brought by the owner of copyright is available to that defendant as against the exclusive licensee.

Assessment of damages where exclusive licence granted. 122. Where an action to which section 120 of this Act applies is brought and the owner of the copyright and the exclusive licensee are not both plaintiffs in the action, the court, in assessing damages in respect of an infringement of a kind referred to in that section, shall—

(a) if the plaintiff is the exclusive licensee-take into account any liabilities, in respect of royalties or otherwise, to which the licence is subject; and

(b) whether the plaintiff is the owner of the copyright or the exclusive licensee take into account any pecuniary remedy already awarded to the other party under section 115 of this Act in respect of that infringement, or any right of action exercisable by the other party under that section in respect of that infringement, as the case requires.

Apportionment of profits between owner and exclusive licensee. 123. Where—

(a) an action, in so far as it is brought under section 115 of this Act, relates, in whole or in part, to an infringement in respect of which the owner of the copyright and the exclusive licensee have concurrent rights of action under that section; and

(b) in that action, whether the owner of the copyright and the exclusive licensee are both parties or not, an account of profits is directed to be taken in respect of that infringement,

then, subject to any agreement of which the court is aware by which the application of those profits is determined as between the owner of the copyright and the exclusive licensee, the court shall apportion the profits between them in such manner as the court considers just and shall give such directions as the court considers appropriate for giving effect to that apportionment.

Separate actions in relation to the same infringement. 124. In an action brought by the owner of the copyright or by the exclusive licensee—

(a) a judgment or order for the payment of damages in respect of an infringement of copyright shall not be given or made under section 115 of this Act if a final judgment or order has been given or made in favour of the other party directing an account of profits under that section in respect of the same infringement; and

(b) a judgment or order for an account of profits in respect of an infringement. of copyright shall not be given or made under that section if a final judgment or order has been given or made in favour of the other party awarding damages or directing an account of profits under that section in respect of the same infringement.

Liability for costs. 125. Where, in an action to which section 120 of this Act applies, whether brought by the owner of the copyright or by the exclusive licensee, the other party is not joined as a plaintiff (either at the commencement of the action or at a later time), but is added as a defendant, the other party is not liable for any costs in the action unless he enters an appearance and takes part in the proceedings.

Division 4.—Proof of Facts in Copyright Proceedings.

Presumptions as to subsistence and ownership of copyright. 126. In an action brought by virtue of this Part—

(a) copyright shall be presumed to subsist in the work or other subject-matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject-matter; and

(b) where the subsistence of the copyright is established—the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership.

Presumptions in relation to authorship of work. 127.—(1.) Where a name purporting to be that of the author of a literary, dramatic, musical or artistic work appeared on copies of the work as published or a name purporting to be that of the author of an artistic work appeared on the work when it was made, the person whose name so appeared, if it was his true name or a name by which he was commonly known, shall, in an action brought by virtue of this Part, be presumed, unless the contrary is established, to be the author of the work and to have made the work in circumstances to which sub-sections (4.), (5.) and (6.) of section 35 of this Act do not apply.

(2.) Where a work is alleged to be a work of joint authorship, the last preceding sub-section applies in relation to each person alleged to be one of the authors of the work as if references in that sub-section to the author were references to one of the authors.

(3.) Where, in an action brought by virtue of this Part in relation to a photograph—

(a) it is established that, at the time when the photograph was taken, a person was the owner of the material on which the photograph was taken or, if the ownership of that material as at that time is not established, that a person was the owner of the apparatus by which the photograph was taken; or

(b) neither the ownership as at the time when the photograph was taken of the material on which it was taken nor the ownership as at that time of the apparatus by which it was taken is established but it is established that, at the time of the death of a person, the photograph was owned by the person or, if the ownership of the photograph as at that time is not established, was in the possession or custody of the person,

the person shall be presumed, unless the contrary is established, to have been the person who took the photograph.

Presumptions in relation to publisher of work. 128. Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, the last preceding section does not apply, but it is established―

(a) that the work was first published in Australia and was so published during the period of fifty years that ended immediately before the commencement of the calendar year in which the action was brought; and

(b) that a name purporting to be that of the publisher appeared on copies of the work as first published,

then, unless the contrary is established, copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication.

Presumptions where author has died. 129.—(1.) Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, it is established that the author is dead—

(a) the work shall be presumed to be an original work unless the contrary is established; and

(b) if it is alleged by the plaintiff that a publication specified in the allegation was the first publication of the work, and that it took place in a country and on a date so specified—that publication shall be presumed, unless the contrary is established, to have been the first publication of the work, and to have taken place in that country and on that date.

(2.) Where—

(a) a literary, dramatic, musical or artistic work has been published;

(b) the publication was anonymous or is alleged by the plaintiff to have been pseudonymous; and

(c) it is not established that the work has ever been published under the true name of the author, or under a name by which he was commonly known, or that the identity of the author is generally known or can be ascertained by reasonable inquiry,

paragraphs (a) and (b) of the last preceding sub-section apply, in an action brought by virtue of this Part in relation to the work, in like manner as those paragraphs apply where it is established that the author is dead.

Evidence in relation to recordings. 130. In an action brought by virtue of this Part in relation to copyright in a sound recording, if records embodying the recording or a part of the recording have been supplied (whether by sale or otherwise) to the public and, at the time when records embodying the recording or part of the recording were first so supplied, the records or their containers bore a label or other mark containing a statement—

(a) that a person specified on the label or mark was the maker of the recording;

(b) that the recording was first published in a year specified on the label or mark; or

(c) that the recording was first published in a country specified on the label or mark,

that label or mark is sufficient evidence of the facts so stated except in so far as the contrary is established.

Presumption in relation to maker of film. 131. Where the name of a person appeared on copies of a cinematograph film as made available to the public in such a way as to imply that the person was the maker of the film and, in the case of a person other than a body corporate, that name was his true name or a name by which he was commonly known, that person shall, in an action brought by virtue of this Part, be presumed, unless the contrary is established, to be the maker of the film and to have made the film in circumstances to which sub-section (3.) of section 98 of this Act does not apply.

Division 5.—Offences and Summary Proceedings.

Offences. 132.—(1.) A person shall not, at a time when copyright subsists in a work—

(a) make an article for sale or hire;

(b) sell or let for hire, or by way of trade offer or expose for sale or hire, an article;

(c) by way of trade exhibit an article in public; or

(d) import an article into Australia for the purpose of—

(i) selling, letting for hire, or by way of trade offering or exposing for sale or hire, the article;

(ii) distributing the article for the purpose of trade, or for any other purpose to an extent that will affect prejudicially the owner of the copyright in the work; or

(iii) by way of trade exhibiting the article in public, if he knows the article to be an infringing copy of the work.

(2.) A person shall not, at a time when copyright subsists in a work, distribute—

(a) for the purpose of trade; or

(b) for any other purpose to an extent that affects prejudicially the owner of the copyright,

an article that he knows to be an infringing copy of the work.

(3.) A person shall not, at a time when copyright subsists in a work, make or have in his possession a plate knowing that it is to be used for making infringing copies of the work.

(4.) The last three preceding sub-sections apply in relation to copyright subsisting in any subject-matter by virtue of Part IV. in like manner as they apply in relation to copyright subsisting in a work by virtue of Part III.

(5.) A person shall not cause a literary, dramatic or musical work to be performed in public, knowing that copyright subsists in the work and that the performance constitutes an infringement of the copyright.

(6.) This section applies only in respect of acts done in Australia.

Penalties. 133.—(1.) A contravention by a person of sub-section (1.) or sub-section (2.) of the last preceding section is an offence punishable upon summary conviction―

(a) if it is his first conviction of an offence by reason of a contravention of that section by a fine not exceeding Ten dollars for each article to which the offence relates; and

(b) in any other case—by a fine not exceeding Ten dollars for each article to which the offence relates or by imprisonment for a period not exceeding two months.

(2.) A fine imposed by virtue of the last preceding sub-section shall not exceed Two hundred dollars in respect of articles comprised in the same operation or transaction.

(3.) A contravention by a person of sub-section (3.) or sub-section (5.) of the last preceding section is an offence punishable upon summary conviction―

(a) if it is his first conviction of an offence by reason of a contravention of that section by a fine not exceeding Two hundred dollars; and

(b) in any other case—by a fine not exceeding Two hundred dollars or by imprisonment for a period not exceeding two months.

(4.) The court before which a person is charged with an offence by reason of a contravention of the last preceding section may, whether he is convicted of the offence or not, order that any article in his possession that appears to the court to be an infringing copy, or to be a plate used or intended to be used for making infringing copies, be destroyed or delivered up to the owner of the copyright concerned or otherwise dealt with in such manner as the court thinks fit.

Division 5.—Miscellaneous.

Limitation of actions in respect of infringement of copyright. 134. An action shall not be brought for an infringement of copyright or in respect of the conversion or detention of an infringing copy, or of a plate used or intended to be used for making infringing copies, after the expiration of six years from the time when the infringement took place or the infringing copy or plate was made, as the case may be.

Restriction of importation of printed copies of works. 135.—(1.) In this section—

(a) a reference to Australia does not include a reference to the Territories of the Commonwealth not forming part of the Commonwealth; and

(b) a reference to importation into Australia does not include a reference to importation from such a Territory.

(2.) The owner of the copyright in a published literary, dramatic or musical work may give notice in writing to the Comptroller-General of Customs (in this section referred to as “the Comptroller-General”) stating―

(a) that he is the owner of the copyright in the work; and

(b) that he objects to the importation into Australia, during a period specified in the notice, of copies of the work to which this section applies.

(3.) A notice under the last preceding sub-section is of no effect unless the period specified in the notice does not exceed five years and does not extend beyond the end of the period for which the copyright in the work to which the notice relates is to subsist.

(4.) This section applies, in relation to a work, to any printed copy of the work made outside Australia and the Territories of the Commonwealth not forming part of the Commonwealth the making of which would, if it had been made in Australia by the person who imported it into Australia, have constituted an infringement of the copyright in the work.

(5.) Where a notice has been given under this section in respect of a work and has not been withdrawn, the importation of copies of the work to which this section applies into Australia for the purpose of—

(a) selling, letting for hire, or by way of trade offering or exposing for sale or hire, the copies;

(b) distributing the copies—

(i) for the purpose of trade; or

(ii) for any other purpose to an extent that will affect prejudicially the owner of the copyright in the work; or

(c) by way of trade exhibiting the copies in public,

is prohibited and any such copies, if imported into Australia for any such purpose, may be seized as forfeited to the Commonwealth.

(6.) Subject to the regulations, the Comptroller-General, or on appeal from him the Minister of State for Customs and Excise, may permit copies of a work that are liable to be or have been seized as forfeited under this section to be delivered to the owner or importer upon security being given to the satisfaction of the Comptroller-General that the copies will be forthwith exported from Australia.

(7.) The provisions of the Customs Act 1901–1968 apply to the seizure and forfeiture under this section of copies of a work to which this section applies as if the copies were prohibited imports for the purposes of that Act.

(8.) The regulations may make provision for or in relation to—

(a) the forms of notices under this section;

(b) the times at which, and the manner in which, notices are to be given;

(c) the giving of information and evidence to the Comptroller-General;

(d) the payment of fees and the giving of security to the Comptroller-General in respect of any liability or expense that may be incurred by him as a result of the seizure of any copy of a work to which a notice under this section relates; and

(e) indemnifying the Comptroller-General against any such liability or expense.

(9.) The regulations may contain provisions similar to the provisions of this section in relation to the importation into a Territory of the Commonwealth not forming part of the Commonwealth (other than importation from Australia or from another such Territory) of printed copies of published literary, dramatic or musical works.