Baldwins Law Senior Associate Thomas Huthwaite and Solicitor Susan Hur discuss the High Court decision in Australasian Performing Right Association Ltd v 3228 Business Ltd, where APRA welcomed the additional damages for flagrant copyright infringement.
In the past, copyright infringers may have thought that there was little risk to waiting for a lawsuit before considering a licence. However, the High Court has now signalled that significant additional damages can, and will, be awarded in cases that warrant increased penalty: Australasian Performing Right Association Ltd v 3228 Business Ltd  NZHC 3088.
Rocksalt Bar and Restaurant was recently sued for continuing to play copyright music without permission, despite several warnings. The songs played by the bar as background tracks included “Stuck in a Moment You Can’t Get Out of”, “So Beautiful”, and “Into the Dark”. The Australasian Performing Right Association (“APRA”), responsible for collecting royalties on behalf of music artists, sued Rocksalt for copyright infringement.
On 27 November 2018, Justice Palmer in the High Court held in favour of APRA, awarding both compensatory damages for lost annual licence fees (NZ$4,605.61), plus additional damages for the flagrancy of the breach (NZ$18,000).
In evidence, APRA showed that it had numerous interactions with Rocksalt from November 2016, including letters educating Rocksalt that permission was required from APRA before songs could be played in public. APRA offered a Hospitality Licence to Rocksalt, in five letters from 2017 to 2018, and even offered to backdate the licence. Rocksalt refused and continued to infringe. Its contempt towards the copyright regime continued with its active avoidance of the service of documents and lack of appearance in court.
Justice Matthew Palmer accordingly granted a permanent injunction restraining Rocksalt from performing or authorising performance of any APRA songs. His Honour noted:
Copyright is an important means of recognising the rights of songwriters. APRA is a not-for-profit royalty-collecting society for songwriters, which holds copyright for the performance or broadcast of virtually all currently-played musical works.
In addition to the injunction, Rocksalt and its director were ordered to pay a total of NZ$22,605, comprising compensatory damages of NZ$4,605 for the required annual licence fees, plus additional damages of NZ$18,000 for the flagrancy of the breach, the importance of the music as attracting customers to Rocksalt, and its contempt towards the copyright regime. This case sends a strong message that copyright infringement, and the copyright licensing regime, should be taken seriously.
Please contact the authors if you have any queries about this article or any concerns about copyright infringement.
On a related note, Baldwins Head of Dispute Resolution Paul Johns will present on the topic, Trade Marks and Border Protection Procedures in New Zealand and Australia at the Trade Marks and Commercial IP Protection Seminar on Tuesday, 11 June in Auckland.
Solicitor Susan Hur helps clients maintain and enforce their intellectual property rights and facilitates the resolution of disputes. Susan is a barrister and solicitor specialising in all areas of intellectual property litigation and dispute resolution. She has expertise in dealing with issues relating to trade marks, copyright, domain names, patents, design registrations, trade secrets and consumer law. Before joining Baldwins, Susan completed a Bachelor of Laws and Arts, majoring in Politics and International Relations at the University of Auckland. While studying, she worked for various institutions, including a trade-investment promotion organisation, a media platform on start-ups and ventures, and a prominent research university overseas with a focus on East Asian law and political economy. After her admission as a Barrister and Solicitor of New Zealand and New South Wales, Susan worked for a general practice where she advised clients in all areas of law. She particularly enjoyed making court appearances and the level of detail required for preparation of commercial agreements to protect clients’ interests. Contact Susan at firstname.lastname@example.org or connect via LinkedIn.
Senior Associate Thomas Huthwaite helps clients to maintain and enforce their intellectual property rights and to resolve disputes relating to those rights. Thomas is a barrister and solicitor specialising in all areas of intellectual property, from protection and maintenance through to enforcement. His focus is on dispute resolution, whether by way of negotiation, mediation, or official resolution channels. Named ‘one to watch’ by the Legal 500 Asia-Pacific, Thomas has represented clients at all levels of the New Zealand Courts, and the New Zealand and Australian Intellectual Property Offices, as well as before the WIPO Arbitration and Mediation Center, and the New Zealand Dispute Resolution Service. Before joining Baldwins in late 2010, Thomas was a researcher of human memory error and eyewitness testimony for the Innocence Project New Zealand and the Victoria University School of Psychology. In late 2012, he was seconded as a copyright and media policy consultant at the Ministry for Culture and Heritage. Thomas is locally known due to his enthusiasm and support for local artists and artisans – from those involved in food and beverage goods and services, to those in the art, film and music industries. He is passionate about helping creative people and businesses. Contact Thomas at email@example.com or connect via LinkedIn.