The decision sets an important precedent. As far as we are aware, this is the first time damages have been awarded where a third party had content removed from the Internet without legal justification. In light of this decision, if a person falsely tells a file-sharing or social media website that they own copyright in an image or movie to have it taken down, and in fact that is not the case, it could be actionable as an unjustifiable threat.
The decision also provides clear guidance as to the principles the courts will apply in assessing the quantum of damages recoverable for unjustifiable threats.
King & Wood Mallesons represented Richard Bell in this litigation.
Richard Bell is a well-known Australian artist, who has painting in the collections of most major galleries in Australia. He has also made a number of art films, including “Scratch an Aussie” and “Uz vs THEM.”
Between June 2009 and September 2011, while on a fellowship in New York, Mr Bell produced and directed approximately 18 hours of raw footage for a film “The Blackfella’s Guide to New York”. He engaged Ms Steele to help him make the film, and paid her for these services.
Mr Bell made a trailer from the raw footage, which his agent posted on the Vimeo website. Ms Steele, through her American lawyers, sent letters to Mr Bell and his agent claiming that she owned the copyright in the footage and demanding that the trailer be removed from the Internet. She also caused the Vimeo website to remove the trailer.
In response to Ms Steele’s threats, Mr Bell’s agent did not display the footage on the Internet, postponed a showing of Mr Bell’s artworks, and delayed the sale of a catalogue of Mr Bell’s artworks that included a still from the trailer.
Mr Bell began proceedings in the Federal Court. On 7 February 2012, orders were made declaring him the owner of the copyright in the footage and declaring Ms Steele’s threats unjustifiable pursuant to section 202(1) of the Copyright Act.
Mr Bell then asked the Court to make an award of damages to the loss he suffered due to Ms Steele’s unjustified threats.
Justice Collier heard the following submissions from Mr Bell in relation to his claim for damages:
Mr Bell also suffered additional losses in the United States due to these threats. In this case, Mr Bell was only seeking damages for the losses in Australia due to the threats made in Australia by Ms Steele.
Justice Collier found that the principle to be applied in assessing damages in respect of unjustifiable threats is that “such damage must flow from the making of the threats”. Her Honour gave the following examples of this:
Mr Bell was awarded $147,000 in damages for the lost sales of paintings and catalogues that he suffered as a result of Ms Steele’s threats. He was also awarded lump sum costs totaling $22,224 against Ms Steele.
The full decision is available here.
The trailer for the video is now on YouTube. Click here to watch the trailer.