TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) [2007] FCA 151

TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) [2007] FCA 151

TS&B Retail proved ownership of copyright in the data tables and manufacturing drawings through assignment and/or as employer, and the tables were copyrightable as compilations requiring skill and judgement. The respondents (3Fold and the participating directors) copied and used these works for commercial gain without authorisation. There was no assignment or implied licence to Kmart or 3Fold to reproduce the drawings as contended. 3Fold, and Vanderzaag and D'Mello as accessories, were primary and secondary infringers and liable for damages, but Smith was not personally liable as accessory. Additional damages were justified given the deliberate and continued infringement.

Jurisdiction
Australia
Judgment Date
20 February 2007
Procedural Posture
Copyright and Breach of Confidence Action / Final Judgment After Trial
Outcome
Judgment for the applicant against 3Fold Resources Pty Ltd, Peter Vanderzaag and Francis D'Mello; claim against Gary William Smith dismissed.
Legal Topics
['copyright Infringement' 'breach of Confidence' 'assignment of Intellectual Property' 'compilations of Data as Literary Works' 'employee and Contractor Copyright Ownership' 'damages Assessment in Copyright' 'accessorial Liability of Directors' 'secondary Infringement (authorisation)' 'joint Tortfeasors' 'trade Practices']
['intellectual Property Law' 'contract Law' 'tort Law' 'equity'] ['copyright Infringement' 'breach of Confidence' 'assignment of Intellectual Property' 'compilations of Data as Literary Works' 'employee and Contractor Copyright Ownership' 'damages Assessment in Copyright' 'accessorial Liability of Directors' 'secondary Infringement (authorisation)' 'joint Tortfeasors' 'trade Practices']

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Procedural Posture

Copyright and Breach of Confidence Action / Final Judgment After Trial

Legal Issues

  1. 1 ['Whether copyright subsisted in the manufacturing drawings and data tables and was owned by the applicant;' 'Whether breach of confidence occurred;' 'Whether the respondents infringed copyright and misused confidential information;' 'Whether assignment of IP included claims for past breaches;' 'Whether the applicant was entitled to damages and/or additional damages and how to quantify them;' 'Whether directors were personally liable as accessories or joint tortfeasors;' 'Whether authorisation or implied licence allowed reproduction by 3Fold;' 'Whether works authored by contractors were assigned to applicant;' 'Whether compilations of data can attract copyright as literary works']

Ratio Decidendi

TS&B Retail proved ownership of copyright in the data tables and manufacturing drawings through assignment and/or as employer, and the tables were copyrightable as compilations requiring skill and judgement. The respondents (3Fold and the participating directors) copied and used these works for commercial gain without authorisation. There was no assignment or implied licence to Kmart or 3Fold to reproduce the drawings as contended. 3Fold, and Vanderzaag and D'Mello as accessories, were primary and secondary infringers and liable for damages, but Smith was not personally liable as accessory. Additional damages were justified given the deliberate and continued infringement.

Court Disposition

Judgment for the applicant against 3Fold Resources Pty Ltd, Peter Vanderzaag and Francis D'Mello; claim against Gary William Smith dismissed.

Orders

  • ["Damages of $200,000 awarded to TS&B Retail (general damages) against 3Fold, Vanderzaag, and D'Mello jointly and severally;" "Additional damages of $50,000 awarded against 3Fold, Vanderzaag, and D'Mello;" 'Costs ordered on a solicitor and client basis in favour of TS&B Retail;' 'Claim against Gary William Smith...