Be careful when you claim someone has infringed your
copyright, because an unjustifiable claim can be
A recent case has highlighted the importance of exercising due
caution prior to threatening another person or company with
copyright infringement. In Bell v Steele (No 3)  FCA 246,
$147,000 plus costs were awarded to the victim of an unjustifiable
threat of copyright infringement.
A US woman, Tanya Steele, was engaged by an Australian artist,
Richard Bell, to assist him to capture film footage in the US.
Steele was paid for her services. When Bell published the film
trailer for his artwork "The Blackfella's Guide to New
York", Steele threatened copyright infringement and insisted
that Bell immediately take the trailer down. He did as she demanded
– removing the film trailer from the gallery and other
websites where it was posted, postponing an upcoming exhibit, and
delaying the sale of his next catalogue as it featured a still shot
from the trailer.
Bell then brought proceedings under section 202(1) of the
Copyright Act 1968 (Cth), which provides protection for a person
who is threatened with legal action by another in relation to
copyright infringement, when the person making the threats has no
right to do so. The protection available is that the victim may
recover any damages sustained because of the threats, stop
continued threats, and have the threats declared unjustifiable by
In the judgment handed down on 16 March 2012 by Justice Collier
of the Federal Court of Australia, Bell was awarded his costs of
$22,224 for bringing the proceedings, as well as damages of
The judge emphasised that any damages claimed must flow from the
making of the threats. For this reason, the Court relied on the
evidence of Bell's agent, who calculated that the lost
opportunity to advertise Bell's work using the trailer had
resulted in a loss of sales totalling $243,000, of which $147,000
would be received by Bell. Although Steele was served with Court
documents, she did not defend the matter, and so the judge was
given no reason to doubt this evidence.
Bell also gave evidence that "there was a cloud" over
his reputation because others in the art world were aware of the
threats. However, the judge made it clear that losses arising from
rumours that may spring up but are not attributed to the party
making the threat, will not be compensated as damage sustained by
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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A central issue for the Court was whether or not the trademark arrangement could be construed as a franchise agreement.
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