Not a Free For All on Compilations! Big Additional Damages Payout

Dynamic Supplies Pty Limited v Tonnex International Pty Limited (No.3) [2014] FCA 909

In the liability hearing of this matter (Dynamic Supplies Pty Limited v Tonnex International Pty Limited (2001) 91 IPR 488) Justice Yates found that:

• the respondent, Tonnex, had infringed the copyright owned by the applicant, Dynamic, in a computer compatibility chart for printer and computer consumables called the ‘March 2008 CSV file’ (Copyright Work) in breach of the Copyright Act 1968 by reproducing a substantial part of the Copyright Work in its document called ‘Tonnex 2008’
• Tonnex had contravened ss 52, 53(c) and 53(eb) of the Trade Practices Act 1974 (Cth).

Tonnex was ordered to pay:

• AUD1 in nominal damages (this amount upon was agreed by the parties)
• AUD150,000 in additional damages.

Dynamic had submitted an order for additional damages of AUD400,000 while Tonnex had submitted that no order for additional damages should be made or, in the alternative, that the order should be a “modest one” reflected in “the low tens of thousands of dollars”.

Justice Yates concluded that this was a case of flagrant infringement and that a ‘modest’ amount in additional damages was definitely not appropriate. Justice Yates based his decision on the following factors:

1. Tonnex attempted to play down as a ‘mistake’ that its National Marketing Manager was found to have deliberately and consciously copied a substantial part of the Copyright Work even though he must have understood that a competitor’s work should not be copied.
2. Tonnex’s National Marketing Manager did not reveal the true situation after Tonnex received Dynamic’s letter of demand and Tonnex continued to send its customers the infringing Copyright Work, or refer them to it.
3. Tonnex needed to be specifically deterred from this type of conduct as it was clear that it saw this matter as a form of commercial posturing by Dynamic rather than as a proper vindication of its legitimate legal rights.
4. A message of general deterrence was also required as there appears to be a perception in the community that must be corrected that copyright cannot subsist in compilations of publicly available data as a literary work and, therefore, this kind of work can, with impunity, be pilfered by reproducing a substantial part. The large additional damages amount awarded marked the Court’s disapproval of this type of conduct. 

This case demonstrates it is clear that copyright can subsist in compilations and proceedings of this kind must be treated seriously and with proper regard of the applicant’s claimed rights. Otherwise, the Court retains the discretion to punish the respondent by ordering large additional damages awards.