Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd

• Jurisdiction: Australia Federal only
• Judge: Gummow ACJ,Kirby,Crennan JJ,Hayne J,Callinan J
• Judgment Date: 06 December 2006
• Neutral Citation: 2006-1206 HCA A,[2006] HCA 55
• Court: High Court
• Docket Number: S54/2006
• Date: 06 December 2006

[2006] HCA 55

HIGH COURT OF AUSTRALIA

Gummow ACJ, Kirby, Hayne, Callinan and Crennan JJ

S54/2006

Concrete Pty Limited

Appellant

and

Parramatta Design & Developments Pty Limited & Anor

Respondents

Representation

B W Rayment QC with A J Sullivan QC and D T Kell for the appellant (instructed by Costa & Associates)

C R Birch SC with J-J T Loofs for the respondents (instructed by Hal Lawyers)

Copyright Act 1968 (Cth) ss 10(1), 202(1), 202(2).

Conveyancing Act 1919 (NSW) s 66G.

Environmental Planning and Assessment Act 1979 (NSW) ss 4(1), 78A-81, 95.

Local Government Act 1993 (NSW) s 68.

Real Property Act 1900 (NSW).

Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd

Intellectual Property — Copyright — Infringement — Architect's drawings — Two companies formed a joint venture and purchased a development site — Director and shareholder of one of the companies in the joint venture also sole director and shareholder of architectural firm engaged as architect to prepare drawings for a development application — Consent received from local council for development in accordance with the drawings — Joint venturer's dispute — Site sold by trustees for sale — Purchaser of site on notice that architect sought to deny the purchaser's use of the drawings — Whether purchaser of site had an implied licence to use the drawings.

Courts and judicial system — Apprehension of bias — Exchange between bench and counsel — Questioning of witness by trial judge — Whether trial miscarried on the ground of apprehended bias.

Words and phrases: ‘apprehended bias’, ‘implied licence’, ‘joint venture’

ORDER

1. Appeal allowed with costs.

2. Set aside the orders made by the Full Court of the Federal Court of Australia on 29 July 2005 and 22 August 2005 and in their place order that the appeal to that Court be dismissed with costs.

3. Remit to the Federal Court of Australia for determination the inquiry into the quantum of damages referred to in Order 3 made by Conti J on 13 October 2004.

4. Grant leave out of time to the respondents to file a notice of cross-appeal in the form of Annexure A to the affidavit of Gordon Scurr sworn on 29 June 2006.

5. The cross-appeal be treated as having been instituted and heard instanter and be dismissed with costs.

1 Gummow ACJ. The Full Court of the Federal Court (Branson, Kiefel and Finkelstein JJ) 1 dealt first with what appears to have been argued as the main issue before the Full Court. This concerned the freedom of Concrete Pty Limited (‘Concrete’) to use the architectural plans and drawings in question without infringing copyright subsisting in them as original artistic works, within the meaning of ss 31 and 32 of the Copyright Act 1968 (Cth) (‘the Act’). Having decided that issue adversely to Concrete and disagreeing with the outcome at the trial, the Full Court went on to consider the challenge to the conduct of the trial which had been put on a quite different footing, namely, the alleged apparent bias of the primary judge. The Full Court upheld that challenge.

2 In proceeding in this way, the Full Court itself fell into error. The present respondents, Parramatta Design & Developments Pty Limited (‘Parramatta’) and Mr Fares, were permitted to present their arguments to the Full Court on inconsistent bases. If the bias submissions were to succeed, the remedy would be a retrial. If the copyright submissions were to succeed, the Full Court would itself provide the orders which should have been made and there would be no occasion to order a retrial.

3 The Full Court so disposed of the appeal as to accept the bias submissions but without consequential relief. If allowed to stand uncorrected, this outcome would have the adverse consequences for the administration of justice to which Kirby and Crennan JJ refer in their reasons for judgment in passages with which I agree. The application by Parramatta and Mr Fares for leave to file out of time a cross-appeal in this Court should be granted, but the cross-appeal dismissed.

4 As to the particular aspects of the conduct of the trial said to make out the complaint of apprehended bias, I agree with Callinan J and with Kirby and Crennan JJ that no such complaint is made out. In particular, the conclusion stated for the Privy Council in Almeida v Opportunity Equity Partners Ltd2 by Lord Walker of Gestingthorpe applies in the present case. His Lordship said 3:

‘[T]he judge's interventions were motivated, not by partiality, but by the wish to understand the evidence (which was often obscure and inconsequential) and to push on the trial process.’

5 There remains the copyright issue. Here I agree generally with what is said by Callinan J and by Kirby and Crennan JJ in their reasons for judgment and would add the following.

6 Concrete sued Parramatta and Mr Fares for unjustifiable threats made actionable by s 202 of the Act. In its defence and cross-claim, Parramatta pleaded the subsistence of its copyright in the plans and drawings in question, entry by its related company, Landmark Building Developments Pty Ltd (‘Landmark’), into a joint venture to develop an apartment complex on the site at Nelson Bay, the breakdown of the joint venture, the sale of the site to Concrete, the absence of any implied licence in the joint venture thereafter to use the plans and drawings, and the inability of Concrete by contract to receive a better title or licence to those plans or drawings than that vested in the joint venture parties.

7 Two points should be noted as to the way in which the litigation was framed. First, there was no joinder by Parramatta of Landmark or of the other joint venturer, Toyama Pty Ltd (‘Toyama’) or its principals, Ms Haviland and Mr Rix. Secondly, Parramatta did not plead that any implied licence in favour of the joint venturers had been revocable by Parramatta and that Parramatta had effectively revoked that licence. Further, as Kirby and Crennan JJ point out in their reasons, the trial was not run on a basis of entitlement to revoke any implied licence; rather, the contention was that no such implied licence existed for want of satisfaction of a condition necessary for its existence.

8 Presented in terms of the Act, the copyright issues in this Court are: (a) whether Concrete is liable to restraint against the doing in Australia, or the authorising of the doing in Australia, of any act comprised in the copyright in the plans and drawings, ‘without the licence of the owner of the copyright’ within the meaning of ss 13(1) and 36 of the Act; and (b) whether, to the contrary of (a), Concrete has been the object of unjustifiable threats of proceedings for copyright infringement and itself has an action for groundless threats under s 202 of the Act.

9 The Act contains a definition of ‘exclusive licence’ (s 10(1)) which requires such a licence to be in writing and signed by the owner or prospective owner of the copyright; special rights are given to exclusive licensees (ss 117–125). No such licence is asserted by Concrete.

10 However, any act of Concrete with respect to the plans and drawings will be treated under the Act as done with the licence of Parramatta if the doing of the act ‘was authorized by a licence binding [Parramatta as] the owner of the copyright’ (s 15). Section 15 is an important provision for this case. It accommodates instances of what ordinarily would be called a sub-licence 4. The

section also encompasses cases where the existence and scope of an effective licence is found in a consent binding the copyright owner other than by reason solely of the principles of contractual consideration and privity.

11 The facts and holding of the Privy Council in Mellor v Australian Broadcasting Commission5 would present such a case. There the appellants were publishers of band music and were owners of the sole right of performing in public within Australia a large number of musical works arranged for performance by brass and military bands. They published pamphlets containing price lists of their sheet music and words stating that the music was free for public performance anywhere. The licence or consent thereby given included broadcasting by the Australian Broadcasting Commission of band performances, with any necessary consequences of such broadcasting, including the use of wirelesses by listeners. The Commission had engaged bands, which had purchased the appellants' sheet music, to play some of the copyright works of the appellants and had caused the performances to be broadcast 6.

12 It is here that the nature and scope of the joint venture in which Parramatta, Landmark and Toyama participated becomes critical. No written agreement was made recording the terms of the joint venture. Title to the development site was registered for a tenancy in common as to two-thirds for Landmark and one-third for Toyama. The land subsequently was sold in the circumstances explained in the other reasons for judgment. Title to the copyright of Parramatta was not conveyed by Parramatta to Landmark and the other members of the joint venture. However, the plans were made available for the purposes of the joint venture, in particular to procure the grant of the development application, an essential step to achieve the development of the site. Landmark had a substantial financial interest in that development and its proceeds, and Mr Fares, sole director and shareholder in Parramatta, was a principal of Landmark.

13 Contrary to the case asserted by Parramatta, the purposes of the joint venture extended, upon breakdown of relations between the parties, to such use

of the plans and drawings as was necessary and convenient to turn to account the development site and the current development approval.

14 As a matter of contract, Parramatta and Landmark were obliged to cooperate in the doing of acts necessary for the...