Boyapati v Rockefeller Management Corporation (No 2)

• Jurisdiction: Australia Federal only
• Court: Federal Court
• Judgment Date: 09 September 2008
• Neutral Citation: [2008] FCA 1375

FEDERAL COURT OF AUSTRALIA

Boyapati v Rockefeller Management Corporation (No 2) [2008] FCA 1375

COPYRIGHT – copyright material uploaded onto website – infringement and conversion – damages – entitlement to conversion damages – entitlement to additional damages – Copyright Act 1968 (Cth) ss 115(2), 115(4), 116

COSTS – principles relevant to an award of costs – whether Court should depart from ordinary rule – groundless contentions – indemnity costs awarded

COSTS – time for taxation and payment of costs – departure from general rule in O 62 r 3(3) of the Federal Court Rules (Cth) – costs to be taxed and paid forthwith

COSTS – liberty to apply for costs to be fixed in gross sum – O 62 r 4(2)(c) of the Federal Court Rules (Cth)

Copyright Act 1968 (Cth) ss 115, 116

Federal Court of Australia Act 1976(Cth) s 43.

Federal Court Rules (Cth) O 62 r 3(3), O 62 r 4(2)(c)

Sutherland Publishing Company v Caxton Publishing Company Limited [1936] All ER 177 referred to

Autodesk Australia Pty Ltd v Cheung (1990) 94 ALR 472 referred to

TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 158 FCR 444 cited

Prior v Sheldon (2000) 48 IPR 301 cited

Sony Entertainment (Australia) Ltd v Smith (2005) 64 IPR 18 cited

Ravenscroft v Herbert and New English Library [1980] RPC 193 referred to

Ruddock v Vadarlis (No 2) (2001) 115 FCR 229 referred to

Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 referred to

Re Wilcox: Ex parte Venture Industries Pty Ltd (No 2) (1996) 72 FCR 151 referred to

Abbott v Random House Australia Pty Ltd [1999] FCA 1540 referred to

Hamod v New South Wales (2002) 188 ALR 659 referred to

Barrett Property Group Limited v Metricon Homes Pty Ltd (No 2) [2007] FCA 1823 referred to

Xat Ky v Australvic Property Management Pty Ltd (No 2) [2007] FCA 1785 cited

Access for All Alliance (Hervey Bay) Inc v Hervey Bay City Council [2007] FCA 974 cited

Jainshe Southern Pty Ltd v Turnbull Cooktown Pty Ltd (No 2) [2007] FCA 903 cited

Cirillo v Consolidated Press Property Ltd (No 2) [2007] FCA 179 cited

RAY BOYAPATI, ANN BOYAPATI and EDWARD BOYAPATI v ROCKEFELLER MANAGEMENT CORPORATION and DALLAS GIBSON; ROCKEFELLER MANAGEMENT CORPORATION (A CORPORATION IN THE STATE OF ILLINOIS, UNITED STATES OF AMERICA) and DALLAS GIBSON; MEDENTRY (A PARTNERSHIP), ANN BOYAPATI, EDWARD BOYAPATI, RAY BOYAPATI, NIMI BOYAPATI, ACE UMAT (A PARTNERSHIP) and ANZIE PTY LTD (ACN 116 643 308)

VID 1289 of 2004

KENNY J

9 SEPTEMBER 2008

MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1289 of 2004

BETWEEN: AND: BETWEEN:	RAY BOYAPATI First Applicant ANN BOYAPATI Second Applicant EDWARD BOYAPATI Third Applicant ROCKEFELLER MANAGEMENT CORPORATION First Respondent DALLAS GIVSON Second Respondent ROCKEFELLER MANAGEMENT CORPORATION(A CORPORATION IN THE STATE OF ILLINOIS, UNITED STATES OF AMERICA) First Cross-Claimant DALLAS GIBSON Second Cross-Claimant
AND:	MEDENTRY (A PARTNERSHIP) First Cross-Respondent ANN BOYAPATI Second Cross-Respondent EDWARD BOYAPATI Third Cross-Respondent RAY BOYAPATI Fourth Cross-Respondent NIMI BOYAPATI Fifth Cross-Respondent ACE UMAT (A PARTNERSHIP) Sixth Cross-Respondent ANZIE PTY LTD (ACN 116 643 308) Seventh Cross-Respondent
JUDGE:	KENNY J
DATE OF ORDER:	9 SEPTEMBER 2008
WHERE MADE:	MELBOURNE

THE COURT DECLARES THAT:

1. (a) Copyright subsists in the applicants’ 800 questions and answers organised into 10 practice exams headed “MedEntry UMAT Practice Exam [1-10] – 2004” (“works in suit”).

(b) The respondents infringed copyright in the works in suit by, without the licence of the applicants, reproducing the works in suit in a material form and by communicating the works in suit to the public.

(c) The second respondent infringed copyright in the works in suit by authorising the acts referred to in sub-paragraph (b).

(d) By uploading infringing copies of the works in suit onto the Icarus College website and by purporting to be the owner of the copyright in the materials published on that website and by making such infringing copies available to students via the website, the respondents have treated the said infringing copies in a manner that is inconsistent with the deemed ownership thereof by the applicants and have thereby converted them.

AND THE COURT ORDERS THAT:

1. (a) In respect of the said infringements of copyright, the respondents are liable to pay to the applicants damages under subsection 115(2) of the Copyright Act 1968 (Cth) (“the Copyright Act”) and additional damages under subsection 115(4) of the Copyright Act, each to be assessed.

(b) In respect of the said conversions, subject to subsection 116(1C), the respondents are liable to pay to the applicants damages to be assessed under subsection 116(1A) of the Copyright Act.

(c) In respect of the respondents’ liability to pay the applicants damages under subsections 115 (2) and 116(1A) of the Copyright Act, the respondents are liable to pay to the applicants interest up to judgment or a sum in lieu of interest pursuant to section 51A of the Federal Court of Australia Act 1976 (Cth).

(d) The respondents be restrained from, whether by themselves or their servants or agents or howsoever otherwise, infringing copyright in the works in suit.

(e) The respondents pay to the applicants and cross-respondents their costs of the proceeding to date, such costs to be taxed and paid forthwith and 50% of such costs be paid on an indemnity basis.

(f) On or before 16 September 2008, the respondents make discovery of all documents relevant to identifying the number of infringing copies of the works in suit downloaded by students from the Icarus College website or otherwise made available to students via the website or by any other means.

(g) The cross-claims be dismissed.

(h) There be a directions hearing fixed at 9:30 am on 29 September 2008.

(i) The applicants have liberty to apply for an order that the costs in their favour be fixed in a gross sum in accordance with O 62 r 4(2)(c) of the Federal Court Rules (Cth); and the parties otherwise have liberty to apply on reasonable notice.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1289 of 2004

BETWEEN:

RAY BOYAPATI First Applicant ANN BOYAPATI Second Applicant EDWARD BOYAPATI Third Applicant

AND: BETWEEN: AND:

ROCKEFELLER MANAGEMENT CORPORATION First Respondent DALLAS GIBSON Second Respondent ROCKEFELLER MANAGEMENT CORPORATION(A CORPORATION IN THE STATE OF ILLINOIS, UNITED STATES OF AMERICA) First Cross-Claimant DALLAS GIBSON Second Cross-Claimant MEDENTRY (A PARTNERSHIP) First Cross-Respondent ANN BOYAPATI Second Cross-Respondent EDWARD BOYAPATI Third Cross-Respondent RAY BOYAPATI Fourth Cross-Respondent NIMI BOYAPATI Fifth Cross-Respondent ACE UMAT (A PARTNERSHIP) Sixth Cross-Respondent ANZIE PTY LTD (ACN 116 643 308) Seventh Cross-Respondent

JUDGE:	KENNY J
DATE:	9 SEPTEMBER 2008
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

Introduction

1 On 2 July 2008, I delivered reasons for judgment upholding the applicants’ claim for infringement of copyright in 800 questions and answers in practice exams that MedEntry, a business operated by the applicants, sold as part of a preparation course for the Undergraduate Medicine & Health Sciences Admission Test (“UMAT”) and dismissing the cross-claimants’ cross-claim. By their cross-claim, the cross-claimants alleged: (1) copyright infringement in 160 of the questions and answers in the 800 questions and answers the subject of the applicants’ claim; (2) defamation; and (3) passing off and conduct in contravention of ss 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth): see Boyapati v Rockefeller Management Corporation [2008] FCA 995 (“Boyapati (No 1)”).

2 Also on 2 July 2008, I directed the applicants/cross-respondents (“the applicants”) to file and serve a proposed minute of orders and written submissions with respect to: (1) the application of ss 116(1C) and (1D) of the Copyright Act 1968 (Cth) (“the Copyright Act”); (2) the considerations that would support an exercise of discretion in favour of an award of additional damages under s 115(4) of the Copyright Act; and (3) any question of costs that they consider should be dealt with at this stage: see Boyapati (No 1) at [57] and [82]. I gave the respondents/cross-claimants (“the respondents”) an opportunity to file and serve written submissions in response.

The parties’ submissions

3 The applicants filed and served written submissions in accordance with these orders, in which they sought compensatory damages under s 115(2), additional damages under s 115(4), and conversion damages under s 116 of the Copyright Act. They argued:

Any assessment of conversion damages needs to begin with further discovery of verifiable data from the respondents so as to indicate the number of times the infringing Icarus College practice exams were permitted to be downloaded by students for their use. The provision to students of each such exam constituted a conversion for which the applicants seek damages, being the market value of the exam. That value is the price which would have been charged by Medentry to each student for each exam. Section 115(2) damages would then be confined to indirect losses, such as diminution of goodwill and any loss associated with the failure to enhance reputation or goodwill by reason of the...