Universal City Studios Incorporated and Others v Gerard Mulligan (No. 1)

• Jurisdiction: Ireland
• Judge: Miss Justice Laffoy
• Judgment Date: 01 January 1999
• Neutral Citation: [1997] IEHC 177
• Docket Number: [1994 No. 2908P]
• Court: High Court
• Date: 01 January 1999

[1997] IEHC 177

THE HIGH COURT

No. 2908P/1994

UNIVERSAL CITY STUDIOS INCORPORATED, WALT DISNEY PRODUCTIONS INCORPORATED, TWENTIETH-CENTURY FOX FILM CORPORATION & WARNER BROS INCORPORATED v. MULLIGAN

BETWEEN

UNIVERSAL CITY STUDIOS INCORPORATED WALT DISNEYPRODUCTIONS INCORPORATED 20TH - CENTURY FOX FILM CORPORATION WARNERBROTHERS INCORPORATED

PLAINTIFFS

AND

GERARD MULLIGAN

DEFENDANT

Citations:

COPYRIGHT ACT 1963 PART III

COPYRIGHT ACT 1963 S18

COPYRIGHT ACT 1963 S18(10)

COPYRIGHT ACT 1963 S18(4)

COPYRIGHT ACT 1963 S21(6)

COPYRIGHT ACT 1956 S13(10) (UK)

COPYRIGHT DESIGNS & PATTERNS ACT 1988 S5(5) (UK)

COPYRIGHT DESIGNS & PATTERNS ACT 1988 S175(1) (UK)

REINBOTHE & VON LEWINSKI THE EC DIRECTIVE ON RENTAL & LENDING RIGHTS & ON PIRACY (1993)

EMI LTD V SHARIF UNREP WHITFORD 2.2.1981

COPYRIGHT ACT 1957 (INDIA)

STERLING & CARPENTER COPYRIGHT IN THE UNITED KINGDOM (1986) 282

NETAGE PROPERTY LTD V CANTLEY UNREP (UK) YOUNG 10.12.85

YING V TELEVISION BROADCASTS LTD 1987 FSR 57

KEANE V COMMISSIONER OF IRISH LIGHTS 1997 1 IR 199

Synopsis

Intellectual Property

Copyright; alleged infringement; construction of statute; sale of pirate videos; whether lacuna in copyright legislation; whether video tapes come within statutory definition of cinematograph films in s.18(10), Copyright Act, 1963; whether possibility of updating construction Held: A videotape is a cinematograph film within the statutory definition (High Court: Laffoy J. 28/11/1997)

Universal City Studios Inc. v. Mulligan - [1999] 3 IR 381

1 JUDGMENT of Miss Justice Laffoydelivered on 28th day of November 1997

2 Part III of the Copyright Act, 1963(the 1963 Act) regulates copyright in sound recordings, cinematograph films, broadcasts and other media. Section 18 specifically deals with copyright in cinematograph films. In subsection (10) of Section 18 the expression "cinematograph film" is defined as meaning -

"..........any sequence of visual images recorded on material of any description (whether translucent or not) so as to be capable, by use of that material -"

(a) of being shown as a moving picture, or

(b) of being recorded on any other material (whether translucent or not) by the use of which it can be shown"

3 There are two relevant complementary definitions in subsection (10). First, the word "publication" is defined, in relation to a cinematograph film, as meaning -

"..........the sale, letting on hire, or offer for sale or hire, of copies of the film to, or for showing by any means to, the public".

4 Secondly, the word "copy" is defined, in relation to a cinematograph film, as meaning -

"..........any print, negative, tape or other article on which the film or part of it is recorded".

5 Subsection (4) of Section 18 provides that the acts restricted by the copyright in a cinematograph film are, inter alia, making a copy of the film. Section 21(6) provides that any copyright subsisting by virtue of part III of the 1963 Act is infringed -

"..........by any person who, in the State, and without the licence of the owner of the copyright -"

(a) sells, lets for hire, or by way of trade offers or exposes for sale or hire any article, or

(b) by way of trade exhibits any article in public,

6 if to his knowledge the making of the article constituted an infringement of that copyright ......"

7 The Plaintiffs in these proceedings are members of the Motion Pictures Export Association of America Incorporated (the Association). They claim that they are the ownersof the copyright of certain films scheduled in the Statement of Claim herein, for example, "Beauty and the Beast", and they allege that the Defendant let on hire, distributed and by way of trade or otherwise offered and exposed for sale or hire and/or exhibited in public and to members of the public for profit pirated and/or counterfeit copies of the scheduled cinematograph films well knowing that the said copies infringed the copyright of, and without the licence of, the Plaintiffs and other members of the Association.

8 In simple terms what is alleged against the Defendant is that he has sold and offered for sale video cassettes or tapes which were pirated or counterfeit copies of video cassettes or tapes authorised by the Plaintiffs of films or motion pictures in which they owned the copyright. As I understand it, the article which it is alleged the Defendant has wrongfully sold and offered for sale is the type of video cassette or tape which one plays at home in a video cassette recorder (VCR) connected to a television set.

9 The Defendant contends that a video tape does not come within the definition of "cinematograph films" in the 1963 Act, a contention which is rejected by the Plaintiffs. I have been requested by the parties to determine as a separate issue in these proceedings the following questions, namely:

10 (1) Is a video tape a cinematograph film within the meaning of that expression in Section 18(10) of the 1963 Act?

11 (2) If the answer to question (1) is in the negative, can a video tape be a "copy" within the meaning of Section 18(10) of the 1963 Act of a "cinematograph film" as defined in thatsubsection?

12 The forgoing questions are mixed questions of fact and law. The factual element is the processes by which what is commonly known as a film or motion picture is transferred onto a video tape and the playing of the video tape in a VCR produces the visual images of the film or motion picture on a television screen. I have had the benefit ofthetestimony of John Brady, who works in video post production in the State, and who explained the processes involved.

13 A reel of film of the type projected on a screen in a cinema comprises a sequence of frames and each frame represents an image. The film is projected at the rate of twenty-five frames per second and this gives the impression of a moving picture. The creation of a video tape from a reel of film involves representing the sequence of frames on a metal particle tape by an arrangement of metal particles in a series of diagonal patterns which produce lines of information. As I understand it, getting the information onto the video tape is a two-stage process. First, a telecine machine causes the visual images on the film to be converted into electrical impulses or signals and then a video tape machine converts the electrical impulses into magnetic signals represented by an arrangement of metal particles on the tape. The process by which the magnetic signals produce visual images on a television screen is also a two-stage process. The first stage is that a rotary magnetic head in the VCR reads the information on the metal particles and converts that information into electrical signals. The television set to which the VCR is connected is the projection unit and it converts those electrical signals into visual images.

14 Mr. Brady testified that there is no visual image observable on the video tape. If one examines a video tape under a microscope what one observes is an arrangement of metal particles in a series of diagonal patterns. He acknowledged that what is on the tape is information which represents the frames on the reel of film and that the visual images on the film can be reconstituted from the information on the tape by a magnetic head in a VCR.

15 I think it is important to stress that the issue is being determined in the context that the basic facts which give rise to the Plaintiff's allegations remain to be proved. First, the Plaintiffs still have to prove that they are the owners of the copyright in the scheduled films in this jurisdiction, the Defendant having made a very limited concession that the Affidavitevidence produced in accordance with the Order of this Court (Geoghegan J.) made on 21st day of July 1997 proves ownership of the copyright in the scheduled films in the United States of America by virtue of registration in the Copyright Office in the Library of Congress. Secondly, the Plaintiff must prove by admissible evidence that the Defendant has sold or offered for sale counterfeit video cassettes which infringe the Plaintiffs' copyright contrary to Section 21 (6) of the 1963 Act.

16 On behalf of the Defendant, Mr. Mackey submitted that the words "any sequence of visual images recorded on material of any description" in the definition of cinematograph films in Section 18(10) of the 1963 Act, on there ordinary meaning, do not capture video tapes of the type which the Defendant is alleged to have sold contrary to Section 21(6). On the evidence, he submitted, visual images are not recorded on a video tape. He submitted that there is a cassus omissus in Irish copyright law. In the United Kingdom the legislature recognised the existence of similar lacuna and rectified it. Section 13(10) of the UK Copyright Act, 1956 was in similar terms to Section 18(10) of the 1963 Act. The recent legislation in the United Kingdom which resolved the difficulty, it was submitted, is the Copyright Designs and Patterns Act, 1988, Section 5(5) of which defines the word "film" as meaning "a recording on any medium from which a moving image may by any means be produced". That broader definition than the UK 1956 Act definition of "cinematograph film" is supplemented by a broader definition of "publication" in Section 175(1) of the UK 1988 Act, wherein that word is defined as including -

".........in the case of a literary, dramatic, musical or artistic work, making it available to the public by means of an electronic retrieval system".

17 It was further submitted that the obvious deficiencies in Irish copyright law have been the subject of criticism in Reinbothe and Von Lewinski on " The EC Directive on Rental and Lending Rights and on Piracy" (1993, Sweet and Maxwell). Having read the chapter in that work on Ireland, I do not find that the criticism is directed at the point in issue in the instant case.

18 On behalf of the Plaintiff, while...