The Full Federal Court has its say on authorisation of copyright infringement

By Stefan Ladd
Intellectual Property Patents & Trade Marks

A focus on third-party IP 3 min read

The Full Federal Court has delivered its judgment in Campaigntrack Pty Ltd v Real Estate Tool Box Pty Ltd and, although the court ultimately allowed Campaigntrack's appeal, it was divided on authorisation of copyright infringement.

In this Insight we analyse this interesting decision and its effects.

Key takeaways

  • The decision in Campaigntrack Pty Ltd v Real Estate Tool Box Pty Ltd [2022] FCAFC 112 highlights that businesses should take proactive steps to ensure they don't infringe third-party IP.
  • If put on notice as to potential infringement of third-party IP, businesses and any relevant personnel should ensure they take all necessary steps to investigate the veracity of the claims.
  • Even if a person is not themselves the primary infringer, inaction and/or indifference in the face of such claims can result in liability for authorising the infringement.

Who in your organisation needs to know about this?

Executives, key operational personnel and in-house counsel.

What happened in this case?

  • Campaigntrack Pty Ltd brought various claims against Real Estate Tool Box Pty Ltd, Biggin & Scott Corporate Pty Ltd, David Semmens, Dreamdesk Pty Ltd, Jonathan Michael Meissner, Paul Geoffrey Stoner and Michelle Bartels, alleging infringement of the copyright in Campaigntrack's 'DreamDesk' software.
  • At first instance, the Federal Court upheld the copyright infringement claims against Mr Semmens (whom it found to be the 'main developer' of the infringing 'Toolbox' system), but dismissed the copyright infringement claims against the remaining respondents (see our Insight on this decision). Key to this conclusion was the finding that the remaining respondents 'lacked actual or constructive knowledge' of, and so had not authorised, the infringing acts.
  • Campaigntrack brought an appeal against the first instance decision in respect of the remaining respondents.

A key issue on appeal was whether the primary judge erred in rejecting Campaigntrack's argument that the remaining respondents had authorised the infringement of its copyright.

What did the majority find?

The Full Court by majority allowed the appeal, making findings of copyright infringement against each of the remaining respondents.

Key to this decision was the finding that the primary judge hadn't analysed all of the relevant evidence in the authorisation case – notably, a letter from Campaigntrack's solicitors dated 29 September 2016 in which it 'unambiguously expressed' its concern about there having been 'improper access' to and 'duplication of' its code.

Justice McElwaine noted that the letter should have caused the remaining respondents to make further inquiries of Mr Semmens in order to more carefully and fully investigate Campaigntrack's claims. Justice Greenwood observed that the letter created a 'geological fault line' in the evidence, with the result that the remaining respondents had authorised infringements on and after 29 September 2016.

What was the countervailing view?

Interestingly, Justice Cheeseman disagreed with the majority and so would have dismissed the appeal with costs. Her Honour emphasised that in order for the appeal to succeed, it was necessary to establish error on the part of the primary judge and, in the absence of error, it was unnecessary for the court to 'embark upon a real review of all the material that was before the primary judge in order to revisit the primary judge's rejection of the authorisation claims'.

As to the letter of 29 September 2016, her Honour observed that it was 'clear that the primary judge was aware of, and considered, the 29 September 2016 letter' and 'did not err' in not making any express findings in respect of it. Her Honour suggested that, when considered in the context of the evidence as a whole, 'it may be inferred that the absence of an express finding in relation to that letter is because the primary judge considered it to be immaterial'.

Actions you can take now

  • If you are concerned about potential infringement of third-party IP, take steps to investigate the matter and seek legal advice.