Universal City Studios Incorporated and Others v Gerard Mulligan (No. 2)

• Jurisdiction: Ireland
• Judgment Date: 01 January 1999
• Docket Number: [1994 No. 2908P]
• Date: 01 January 1999
• Court: High Court

High Court

[1994 No. 2908P]

Universal City Studios Incorporated v. Mulligan (No. 2)

Universal City Studios Incorporated, Walt Disney Productions Incorporated, 20th Century Fox Film Corporation and Warner Brothers Incorporated

Plaintiffs

and

Gerard Mulligan, Defendant (No. 2)

Cases mentioned in this report:-

Director of Public Prosecutions v. Irwin (Unreported, High Court, Barron J., 25th October, 1984).

Orion Picture Corporation v. Hickey (Unreported, High Court, Costello J., 18th January, 1991).

The People (Director of Public Prosecutions) v. Kenny [1990] 2 I.R. 110; [1990] I.L.R.M. 569.

Intellectual property - Copyright - Ownership - Whether maker of cinematograph film entitled to copyright therein if first publication took place outside State - Copyright (Foreign Countries) Order, 1978 (S.I. No. 132) - Copyright (Foreign Countries) Order, 1996, (S.I. No. 36) - Copyright Act, 1963 (No. 10), s. 43.

Evidence - Admissibility - Best evidence rule in civil cases - Whether court can rule on admissibility of search warrant despite it not having been produced in court.

Plenary summons.

The facts have been summarised in the headnote and are fully set out in the judgment of Laffoy J., infra.

By plenary summons dated the 13th May, 1994, the plaintiffs sought damages, an account of profits and an injunction for breach of copyright.

The case was heard by the High Court (Laffoy J.) on the 20th, 21st, 25th and 28th November and the 9th, 10th and 12th December, 1997.

The plaintiffs, an association of motion picture companies, alleged that the defendant had made and sold pirated video tapes of films in which they owned the copyright.

Judgment on a preliminary matter, whether a video tape was a cinematograph film within the terms of the Act of 1963, was given on the 28th November, 1997 (and is reported at [1999] 3 I.R. 381).

The defendant argued that while evidence had been given to the court indicating that the plaintiffs were copyright owners in the United States that was not in itself proof of their copyright ownership in this country.

The defendant further argued that the failure to produce a search warrant relating to a search of the defendant's vehicle in May, 1996, should result in the exclusion of the evidence obtained from that search.

Held by the High Court (Laffoy J.), in granting the relief sought by the plaintiffs, 1, that the copyright of the seized videotapes subsisted in the plaintiffs by virtue of the copyright (Foreign Countries) Order, 1978 and the Copyright (Foreign Countries) Order, 1996, made under s. 43 of the Copyright Act, 1963.

2. That, in the absence of the search warrant itself, it could not be determined whether a search of the defendant's property was carried out on foot of a valid search warrant. However, even if the search warrant was illegal, it did not amount to a breach of the defendant's constitutional rights and on the basis that the court had a discretion to admit it, the evidence was admissible.

The People (Director of Public Prosecutions) v. Kenny [1990] 2 I.R. 110 applied.

3. That the plaintiffs were entitled to an order for damages or an account of all profits made by the defendant in connection with his breach of the plaintiffs' copyright, but not to both.

4. That, having regard to the conduct of the defendant, this was in principle an appropriate instance in which to impose the provisions of the Copyright Act, 1963, s. 22(4) permitting the imposition of additional damages.

Orion Picture Corporation v. Hickey (Unreported, High Court, Costello J., 18th January, 1991) considered.

Cur. adv. vult.

Laffoy J. 25th March, 1998

The proceedings

The proceedings were initiated by a plenary summons issued on the 13th May, 1994, in which the plaintiffs claimed certain injunctive relief and damages and ancillary relief on their own behalf and, in addition, on behalf of and representing certain named members of the Motion Picture Export Association of America Incorporated, namely, Paramount Pictures Corporation, Buena Vista International Incorporated, Sony Pictures Entertainment Incorporated (formerly Columbia Pictures Industries Incorporated) and Metro-Goldwyn Meyer Incorporated (the association members). Contemporaneously, the plaintiffs brought a motion seeking an interlocutory injunction against the defendant. By order of this Court (McCracken J.), made on the 6th February, 1995, the plaintiffs' motion was struck out by consent upon the undertaking of the defendant pending the trial of the action not to -

• (a) infringe the copyright in or aid, abet or procure any other person or persons to infringe the copyright in any cinematograph film or in any pre-recorded video cassette recording the copyright in which is vested in the plaintiffs or any of them or any of the association members as owners, exclusive licensees, or assignees;

• (b) part with possession, power, custody or control or otherwise than to the plaintiffs or their authorised agents of any infringing copy of any cinematograph film or pre-recorded video cassette recording of the type specified in paragraph (a);

• (c) pass off or attempt to pass off or cause, permit, procure or assist any other person or persons to pass off any infringing copy of any cinematograph film or pre-recorded video cassette recording not of the plaintiffs or any of them or any of the association members as and for a pre-recorded video cassette recording of the plaintiffs or any of them or any association members or as connected with any of them by the use thereon or in connection therewith or in connection with any notice, sign or advertisement of the trademarks of the plaintiffs or any of them or the association members or any of them or any colourable imitation thereof;

• (d) copy, sell, or by way of trade, offer or expose for sale or hire, let on hire, exhibit or in any way deal in any video cassette recording the making of which to the knowledge of the defendant constitutes an infringement of any of the said copyrights or would have constituted such an infringement if done within the State;

• (e) dispose of, hide or part with the possession otherwise than to the plaintiffs or their authorised agents of any books relating to the supply to or from the defendant, his servants, agent, licensees or otherwise of any cinematograph film or pre-recorded video cassette recording; or

• (f) interfere by unlawful means with the trade or business of the plaintiffs or any of them or any of the association members by dealing in, copying, offering for sale or hire, selling, letting on hire, exhibiting or otherwise any infringing copy of any cinematograph film or pre-recorded video cassette of the type specified in paragraph (a).

In an amended statement of claim delivered on the 10th August, 1995, it is claimed that the plaintiffs and the association members are the owners of the copyright in certain films set forth therein and, inter alia, that the defendant has infringed that copyright unlawfully and without licence by copying, recording, dealing in, selling, exposing for sale and hire by way of trade and for profit pirated and/or counterfeit copies of the said films and/or legitimate pre-recorded video cassette recordings thereof well knowing that said copies infringe that copyright. Particulars of various seizures by members of An Garda Síochána of assorted pirated and/or counterfeit video cassettes and counterfeit video cassette sleeves in the possession of the defendant are pleaded. On the basis of those seizures and subsequent seizures and test purchases, particulars of which were furnished to the defendant, the plaintiffs allege persistent and regular breaches by the defendant of their rights under the Copyright Act, 1963 (the Act of 1963) involving consistent and substantial disregard of their rights. In broad terms, the relief sought by the plaintiffs is threefold. First, they seek a perpetual injunction restraining infringement of their copyright and other wrongdoing by the defendant. Secondly, they seek damages, including additional damages pursuant to s. 22(4) of the Act of 1963. Thirdly, in relation to the infringements which they allege occurred subsequent to the giving of the undertaking recorded in the order...