Summary judgment in proceedings alleging copyright infringement: the decision in The University of Waikato v Benchmarking Services Ltd

The Court of Appeal considers just what a plaintiff needs to prove in a copyright claim to succeed on summary judgment.

This was an appeal from a decision of Associate Judge Christiansen which had dismissed the University's application for summary judgement against BSL in proceedings alleging infringement of copyright.

It is interesting because it confirms the orthodox view that seeking summary judgment in proceedings that allege copyright infringement is a strategy that is likely to fail in all but the clearest cases of copyright infringement.

The facts

The university had for many years published the results of an annual survey entitled the"New Zealand Business Benchmarking Survey". The survey provided benchmark information for a large number of New Zealand industry groups which could be used by businesses as a tool to compare operating performance with industry standards.

In late 2002, the university received information that a rival benchmark survey was in development. It gained access to a website which had on it a"sample business benchmark report".

It appeared to the university that the sample report on the website was an exact copy of the layout and ratios used in its 2001 survey.

Then, in early 2003, the university obtained a copy of the respondents' brochure which also contained a sample business benchmark report. The university then compared the respondents' collection and reporting software with its own 2001 questionnaire and the associated explanations. There were many similarities.

The university issued proceedings, alleging that the defendants had infringed its copyright in the:

• 2001 version of its report;



• CD-ROM version of its 2001 report;



• 2001 version of the questionnaire in written form; and



• Email version of the 2001 questionnaire.

Specifically, the university alleged that data, ratios, typographical information and layout of certain parts of its 2001 report and the typographical information contained in its questionnaire had been copied.

The university sought summary judgement for a declaration that the respondents had breached its copyright in the relevant works and an injunction requiring delivery up of all the alleged infringing materials in the respondents' possession or control.

The Associate Judge's decision

Before Associate Judge Christiansen, the issue was whether copyright had been infringed by the respondents; it had been accepted that copyright subsisted in the relevant works.

However, after recording that his initial view was that the respondents had substantially copied the university's format, Christiansen AJ stated he was unable to make assumptions, much less conclusions, on the basis of the evidence before him on such issues as whether the words used in the headings and sub-headings or the survey layout were unique or merely a consequence of the function (i.e. the need to source the relevant information). On that basis, the application for summary judgement was dismissed.

The Appeal

In the course of its judgment, the Court of Appeal stated:

"Considered in isolation, some elements of the [appellant's] report are commonplace such as the inclusion of income, the derivation of gross profit, the deduction of overheads, and the calculation of operating profit. But there are a number of unusual or unique features which clearly result from the expenditure of significant creative effort and skill on the appellant's part. These include the headings adopted; the order in which they appear; the selection and calculation of ratios; the presentation and calculation of figures and percentages... and the overall format and presentation of the report."

When the Court of Appeal compared the appellant's report with the relevant pages of the respondents' brochure, they were struck by the similarities between them to such an extent that they stated:

"...we find that the similarity between the appellant's report and the respondents' brochure is so obvious...that we consider there is an irresistible inference of copying, not only of the appellant's data but also its headings, ratios, columns and format."

The Court reached the same conclusion when it compared the CD-Rom version of the appellant's report and the respondents' brochure.

To obtain summary judgement, the appellant needed to satisfy the Court that the respondents had no defence to its claim. The test in this regard was stated to be that the Court must be "confident, sure, convinced,... persuaded to the point of belief... left without any real doubt or uncertainty": Pemberton v Chappell (1986) 1 PRNZ 183, 185.

The Court accepted that care was necessary before taking the step of granting summary judgement in a case involving copyright infringement, but indicated that the present case was one of alleged infringement of copyright in literary works where it was simply a matter of comparing the form and content of the appellant's report with the corresponding material in the respondents' brochure and website.

Having regard to this and the fact that there was, in their opinion, an"irresistible inference of copying" the Court of Appeal held that the appellant had demonstrated that the respondents had no deference to the claim that they had infringed the appellant's copyright in the relevant report, both in its printed and electronic form.

Accordingly, the Court held that the Associate Judge had erred in declining to enter summary judgement and allowed the appeal.

What this case confirms is that it will only be appropriate to seek summary judgment in proceedings that allege copyright infringement when there is evidence before the Court that will lead to an irresistible inference of copying being drawn.

Enquiries and information

For more information on the combating piracy, please email or call Garry Williams on 64 9 916 8661.