Sydney Organising Committee for the Olympic Games v Clarke, Pam [1998] FCA 792

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 58 of 1997

BETWEEN: SYDNEY ORGANISING COMMITTEE FOR THE OLYMPIC GAMES

Applicant

AND: PAM CLARKE

Respondent

JUDGE(S): BRANSON J.

DATE: 25 JUNE 1998

PLACE: SYDNEY

REASONS FOR JUDGMENT (EX TEMPORE) HER HONOUR: The applicant in this matter is the Sydney Organising Committee for the Olympic Games. It brought proceedings initially against Animal Liberation Tasmania Incorporated and two individuals alleging breach of its copyright in the Sydney 2000 Olympic Games logo and seeking various relief. It has subsequently discontinued the proceedings against the Animal Liberation Tasmania Incorporated, which is no longer a registered incorporated association, and also against the third respondent. The proceedings have thus continued only against Mrs Clarke. Section 36 of the Copyright Act 1968 (Cth) ("the Act") provides that, subject to the Act, the copyright in an artistic work is infringed by a person who, not being the owner of the copyright and without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright. Section 31 of the Act deals with the nature of copyright in an original work and provides that, in the case of an artistic work, copyright involves the reproduction of the work in a material form. Section 14 of the Act provides, in effect, that a work is reproduced for the purposes of the Act if a substantial part of the work is reproduced. The applicant asserts that it is the owner of the copyright in the Sydney 2000 Olympic Games logo ("the logo"). The first issue which arises is whether copyright subsists in that work. Copyright subsists in the logo if it is established that the logo is an original artistic work, that the logo has been published, that the first publication took place in Australia, and that the author was a qualified person at the time of the first publication. On the unchallenged evidence of Mr Flett, the Creative Director of the company FHAD Pty Ltd, the logo was designed by four employees of FHAD Pty Limited under Mr Flett's overall supervision. I find that the logo is an original artistic work. I also find on the basis of Mr Flett's evidence that the logo has been published and was first published in September 1996 when unveiled at Darling Harbour in Sydney, New South Wales. At that time Mr Flett was a resident of Australia. On the basis that the other three designers were in Australia during the design process, namely between August 1995 and February 1996, and that there is no challenge to their status as Australian residents, I find that they were all Australian residents at the time of the first publication. I note, indeed, that Mrs Clarke admits by her defence that each of the four employees was an Australian citizen and resident at the time of the creation of the logo and at the time of the first publication. I find that copyright subsists in the logo. The next question is whether the applicant is the owner of that copyright. Section 35(6) of the Act provides that, subject to Part VII (which has no present relevance) and Part X of the Act, where an artistic work is made by the author in pursuance of the terms of his or her employment by another person under a contract of service, that other person is the owner of the copyright. That is, subject to Parts VII and X, the owner of the copyright in the logo would be FHADPty Limited. However, Part X of the Act includes section 196 which provides that copyright is personal property and, subject to the section, transmissible by assignment. Section 196(3) requires an assignment to be in writing and signed by or on behalf of the assignor. Copies of two written assignments of the copyright in the logo, or in the logo when designed, by FHADPty Limited to the applicant are in evidence and they are signed on behalf of FHAD Pty Limited. I find that the applicant is the owner of the copyright in the logo. I thus find that Mrs Clarke is not the owner of the copyright in the logo. The next question is whether Mrs Clarke has done in Australia, or authorised the doing in Australia, of any act comprised in the copyright. Mrs Clarke admits, indeed she asserts, that she has, on behalf of Animal Liberation Tasmania Incorporated, produced or caused to be produced t-shirts which have on them a design which she describes as depicting a hen in a cage with five eggs below, badges bearing the same design and a banner showing the same design. Examples of the t-shirts and of the badge are in front of me and I have inspected them and compared them with the logo. Mrs Clarke also asserts that she has, on behalf of Animal Liberation Tasmania Incorporated, distributed to some of that association's supporters t-shirts and badges bearing the design referred to above, and accepted in return donations to the association's funds. Having compared the design described by Mrs Clarke, and which is in evidence before me on t-shirts and on badges, with the logo, I find that the designs and the logo are substantially similar. I find that the design, described by Mrs Clarke as being a design of a hen in a cage with five eggs, is a reproduction of a substantial part of the logo. I thus find that Mrs Clarke has infringed the copyright in the logo by producing or causing to be produced the t-shirts, the badges and the banner to which I have referred. I also find that Mrs Clarke has infringed the copyright in the logo by selling, and by way of trade exhibiting, the t-shirts and the badges which I have described. I find on the evidence before me that the activities of those involved with Animal Liberation Tasmania Incorporated to create an impression that the t-shirts and badges were not sold but given away while donations were accepted was merely a sham, designed to disguise the reality of sale. The law cannot be evaded by such artificial contrivances. The conduct of Mrs Clarke with respect to the t-shirts and badges was conduct in Australia. It is not suggested by Mrs Clarke that she was licensed by the applicant to do any act comprised in the copyright in the logo, and I find that there has been no assignment of the copyright in the logo to Mrs Clarke. I find that Mrs Clarke has infringed the applicant's copyright in the logo. The applicant does not claim any form of pecuniary relief against Mrs Clarke. However, it does seek an order that there be no repeat infringements of copyright by her. Mrs Clarke has not given to the Court any undertaking that she will not continue to infringe the copyright of the applicant in its logo. I think it appropriate to make an injunctive order against her. Mrs Clarke has not shown any proper reason why she should not be required to hand up to the applicant those items which she holds which bear the infringing design of the applicant's logo. The orders of the Court will be as follows. First, there will be an injunction restraining the second respondent whether by herself or any other person from reproducing or authorising, procuring or causing the reproduction of the work referred to in paragraph 4 of the statement of claim in this matter. There will also be an injunction restraining the second respondent, whether by herself or any other person, from selling, offering or exposing for sale, or by way of trade exhibiting in public, any article the making of which constitutes an infringement of the copyright in that work. There will be a declaration that the conduct of the second respondent referred to in the statement of claim constitutes infringement of the applicant's copyright in the work. Further there will be an order for the delivery up by Mrs Clarke of all infringing copies of the work in her possession or power. There will be an order that the second respondent pay the applicant's costs of these proceedings, so far as such costs have been incurred with respect to the second respondent. There will be a note that the matter is not for costing purposes to be deemed suitable for senior counsel. I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Branson.