Copyright Litigation


There isn’t one court venue for dealing with copyright disputes or intellectual property related disputes.

Allegations of copyright infringement which issue will often be coupled with allegations of  misleading and deceptive conduct under the Trade Practices Act and/or an action for breach of confidence.

Most of the Intellectual Property statutes in Australia vest jurisdiction in the Federal Court of Australia to hear disputes, being an area in which the Commonwealth has constitutional power.

Generally litigation will be commenced and prosecuted in the Federal Court in relation to civil proceedings for copyright infringement.  Once the Federal Court has jurisdiction to deal with intellectual property components of a dispute, it is  also empowered, as part of its accrued or associated jurisdiction, to deal with elements of a dispute which might involve the common law, equity or the interpretation of state laws.

Jurisdiction has also been extended to the Federal Magistrates Court, a lower court in the Federal Court hierarchy which may be more appropriate for the hearing of simpler copyright disputes. The Federal Magistrates Court has represented a simpler and more accessible forum for the hearing of copyright disputes, however it is scheduled to be disbanded sometime in 2011.

Most civil copyright matters are now heard and dealt with in the Federal Magistrates Court.  The Federal Court of Australia has some discretion to transfer certain Intellectual Property matters to the Federal Magistrates Court.

The Federal Magistrates Court has also been invested with jurisdiction to hear actions for copyright infringement in respect of certain matters relating to the rights of performers and authors and unauthorised use of performances (s248, s131D, 135AS, 195AZGH(5) and S248MA.

The Federal Court is specifically vested with jurisdiction to entertain infringement proceedings under Act by virtue of S131C, 133A(3), 195AZGH(4) and s248M.

As stated within the discussion on copyright infringement, there are now criminal sanctions in place with respect to copyright offences with increased scope and powers for copyright holders to prosecute and enforce their claims. There has also been increased  funding pledged to federal enforcement authorities to police copyright crimes.

Prosecutions for offences committed under s132AC-132AS, 135ASA-135ASJ and 248P-248QH can be launched in the Federal Court or any court which is empowered to hear a matter.  The Federal Court however does not have jurisdiction to deal with offences other then summary and strict liability offences and is therefore not competent to hear and determine prosecutions for indictable offences.

The Copyright Tribunal caters for disputes and enquiries concerning royalties payable in relation to the recording of musical  works, compulsory licences and proposed licensing regimes.


Complicated procedures,  rules and evidence apply to litigation in respect of intellectual property disputes, which are beyond the scope of this discussion.

As discussed in the section dealing with remedies and enforcement, there are a broad range of orders and remedies which can be granted by a court including preliminary discovery orders and civil search and seizure orders such as the Anton Pillar order. An Anton Pillar Order is one example of a type of preliminary order granted prior to the hearing of the substantive issue.  There are also interim injunctions which can be obtained to restrain infringing conduct and to prevent a defendant removing assets or evidence from Australia to frustrate proceedings, known as a Mareva Injunction.  In addition to all of the other remedies available for copyright infringement there is also provision for damages for flagrant infringement under S116(1) of the Act.

Within the Federal Court system there is a case management system where Judges with expertise in intellectual property matters are given a docket and allocated an intellectual property dispute from it’s commencement until it’s conclusion.  Any Applications sought by an Applicant for any interlocutory orders will be made before the same Judge upon what is known as a Notice of Motion.  The case management system is intended to keep matters on track and expedite the hearing of matters so that they don’t become unduly protracted.  However, it can still take up to 12 months for an uncomplicated matter to be resolved from the time an action is commenced.

A case commences with the filing of initiating process by the Applicant.  Pleadings follow, the purpose of which is to facilitate pre-trial disclosure of the issues between the parties to the dispute.  Pleadings are intended to narrow and define the issues to be determined in the substantive proceedings,  including but not limited to evidentiary issues.  Pleadings should contain the material facts upon which a party seeks to rely to prove their case rather than the evidence they will rely upon. There have been proposals for reform which suggest that ‘informal case summaries‘ should be substituted for pleadings in order to streamline cases.

Discovery is another important step in the procedural process.  Where a party wishes to obtain access to certain documents, they may seek an order for discovery requesting the opposing party to produce certain documents.  There are now specific practice notes to cater for the discovery of electronic material and  eDiscovery. There are proposals to limit the categories of discovery in the interests of improving case management.

The filing of Evidence and Statements of Witnesses or Affidavits represent a further step in copyright litigation.   Prior to the commencement of a hearing parties are required to exchange witness statements including any statements of witnesses upon which they intend to rely to prove their case.  There are rules relating to the giving of expert evidence who must abide by a code of conduct.  There is an emerging tendency for courts to seek out alternative procedures to narrow evidentiary  issues  where they concern matters which turn on the conflicting testimony of experts,  such as pre-trial expert conferences, prior to a contested hearing.

As a general proposition, legal costs will be granted in favour of the successful party with the unsuccessful party paying a proportion of the other party’s legal costs and out of pocket expenses.  Generally these ‘party party’ costs won’t amount to more than 60% of the expenses incurred by the successful party.  If however the Court decides to grant costs on an indemnity basis the successful party will recover an amount much closer to the actual amount of costs which they have incurred.  Offers to settle a matter may be a factor which can affect the granting of costs.  Offers made pursuant to the Court rules are termed  Offers of Compromise whilst informal offers are known as Calderbank Letters.  The fact that a party offers to settle doesn’t necessarily constitute an admission as to liability but can have an effect on a costs order.

The introduction of eFiling and the introduction of an eCourtroom are significant initiatives. eFiling enables the lodgement of applications and documents electronically whilst the eCourtroom enables parties to participate in a virtual courtroom via a login.  The next generation eCourtroom solution will support the resolution of matters without the need for court attendance and will initially be used for the making of directions and the hearing of some interlocutory motions.

Leave a Reply

Your email address will not be published. Required fields are marked *