Holder, Raymond Henry Paul v Searle, Bradley William [1998] FCA 1776

FEDERAL COURT OF AUSTRALIA INTELLECTUAL PROPERTY - copyright – remedies for Infringement – conviction – knowingly concerned in possession of copyright material – penalty where circumstances of defendant warrant leniency – costs order where substantial parts of prosecution not proved Copyright Act 1968 (Cth) ss133 and 139 Crimes Act 1914 (Cth) s5 Pontello v Giannotis (1989) 16 IPR 174 considered

RAYMOND HENRY PAUL HOLDER V BRADLEY WILLIAM SEARLE QG 189 of 1996 SPENDER J 15 DECEMBER 1998

BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY QG 189 of 1996

BETWEEN: RAYMOND HENRY PAUL HOLDER

Applicant

AND: BRADLEY WILLIAM SEARLE

Respondent

JUDGE(S): SPENDER J

DATE OF ORDER: 15/12/98

WHERE MADE: BRISBANE

THE COURT ORDERS THAT: 1. The defendant be convicted in proceedings QG 189 of 1996. 2. The defendant be released without penalty being recorded upon the defendant entering into a recognisance in the sum of $5,000.00 to be of good behaviour for a period of two years from today. The recognisance to be given before a Registrar of the Court. 3. The defendant have one-third of the costs of proceedings QG 187 of 1996, QG 188 of 1996 and QG 189 of 1996 to be paid by the prosecution, to be taxed if not agreed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY QG 189 of 1996

BETWEEN: RAYMOND HENRY PAUL HOLDER

Applicant

AND: BRADLEY WILLIAM SEARLE

Respondent

JUDGE(S): SPENDER J

DATE: 15/12/98

PLACE: BRISBANE

REASONS FOR JUDGMENT I am concerned presently with questions of penalty and costs in respect of three prosecutions brought for offences under the Copyright Act 1968. At the commencement of the hearing there were applications by the prosecutor to amend each of the information and summonses and there were later applications to amend the summonses for failure to provide proper particulars. There were extensive objections to the affidavit evidence of the prosecutor, many of which were successful. On the third day of the hearing the prosecutor conceded that in the light of the rulings on evidence that I had made, the prosecution was not able to establish the elements of the charge dealing with importation, which were proceedings QG 187 of 1996 and the charge dealing with sale, QG 188 of 1996. I dismissed those charges and the questions of costs in respect of those matters was reserved. On 23 October 1998 I convicted Mr Searle of the offence, in proceedings QG 189, that he was knowingly concerned in the possession by a company, B.W. Searle Pty Ltd, of a total of nine video laser discs, four of which were of a film "Bye Bye Love", and five of which were in respect of a film "Speechless". The information of which Mr Searle was convicted alleged an offence contrary to s 139(2A) of the Copyright Act of 1996 combined with the operation of s 5 of the Crimes Act 1914, which provides that: "Any person who aids, abets, counsels or procures, or by any act or omission is in any way, directly or indirectly, knowingly concerned in or party to the commission of any offence against any law of the Commonwealth, whether past, before or after commencement of this Act, shall be deemed to have committed that offence and shall be punished accordingly." The last part of s 5 brings the operation of s 133(1)(b) into play. That section at the relevant time provided (although it has since been repealed) as follows: "A contravention by a person of subsection ... 2A of section 132 is an offence punishable on summary conviction by: … (b) if it is the first conviction of the person of an offence by reason of a contravention of that section and the article or each article to which the contravention relates is an infringing copy of a cinematograph film: