The already complex law around copyright infringement becomes even more vexed when the infringer alleges in its defence that the copyright owner in effect consented to (technically speaking “authorised”) the infringement.
While there are a significant number of reported cases which address the meaning of “authorisation”, these are mostly limited to their facts and fail to identify the precise circumstances in which authorisation will be established.
In a recent decision by the Court of First Instance (CFI), the CFI issued a considered judgment seeking to reconcile the authorities and to determine the factors which will point to a finding of authorisation. In particular, the Court found that where a principal:
- has knowledge of the infringement by the third party;
- issues specific instructions which, when followed by the third party, results in the copyright infringement;
- a high level of control over the third party; and/or
- final approval of the infringing work,
that principal may be liable for authorisation of copyright infringement.
Sky King Machinery Engineering Ltd v Chun Wo Construction & Engineering Company Ltd and China Railway Ltd (HCA 1918/2013) was an application by the Plaintiff for summary judgment in respect of the Defendants’ authorisation of infringement of copyright in various construction plans.
The Plaintiff is the owner of copyright in a series of plans which set out the layout, setup and structural specifications of some public facilities (Plans). The Defendants are the main contractor for a government construction project. The Defendants sub-contracted the design and construction for part of the project to a third party.
The Plaintiff claimed that the Defendants infringed its copyright. It was accepted that the Defendants had access to the Plans through the government, that the construction plans infringed the Plaintiff’s copyright in the Plans, and that the infringing plans were prepared by the sub-contractor. The Defendant maintained that they had not authorised the sub-contractors’ copying of the Plans. Accordingly, the Defendants maintained that they were not liable for copyright infringement.
In argument, the parties referred to a number of prior authorisation cases. The Plaintiff relied on Standen Engineering Ltd v A Spalding & Sons Ltd  FSR 554, where the Court found that the principal had authorised copyright infringement by approving and sanctioning infringing drawings. The Defendants relied on CBS Songs Ltd & Ors v Amstrad Consumers Electronics 1 AC 1013, which held that authorisation occurs where a person having or purporting to have authority, grants the third party the right to infringe the copyright.
The CFI also independently considered a number of the leading authorities on authorisation but ultimately placed significant weight on Pensher Security Door v Sunderland City Council  RPC 249 (Pensher). In Pensher the defendant was found to have authorised the copyright infringement by the manufacturer they had engaged because they provided particular specifications which, if followed, amounted to copyright infringement. The defendant in this case also reviewed the design and, knowing it was similar, approved it.
Applying these cases, the CFI concluded that it was necessary to look at the relevant circumstances and evidence in each case to determine “…whether, on the facts, it can be said that the person claimed to be the authorizer had expressly or implicitly granted, or purported to grant the right and consent to do the act complained of…” (see para 19).
Looking at the facts before it, the CFI concluded that there was insufficient material to determine the authorisation allegation at the summary judgment phase. However, the CFI stated that the specifications to be followed by the sub-contractor did not dictate any particular design or layout of the plan and, as a result, there was no requirement that the plans created by the sub-contractor be the same or even substantially similar to the Plans. Further, the mere right of the Defendants to approve the plans was by itself insufficient to establish authorisation.
We await the final hearing on this case which will hopefully contain some further guidance on the circumstances which will amount to authorisation of copyright infringement.