The judgment states that -
These proceedings concern the infringement of copyright and moral rights claimed by the applicants (Mr Perez, an international recording artist known as “Pitbull” and two corporate entities associated with him) in a sound recording and musical work known as Bon, Bon. The infringements involved the respondent (Mr Fernandez, a disc jockey and music promoter in Perth) distorting the Bon, Bon work in a way which was said to be harmful to its author’s reputation, and then streaming that distorted version of the song from a website owned and operated by Mr Fernandez.The song in question was created by Perez in the US during 2010 through addition of original lyrics and original music to two earlier songs known as We No Speak Americano and Tu Duo Fa L’Americano. Bon, Bon and the earlier songs are covered by the Copyright Act 1968 (Cth) . Perez's song is embodied in a Bon, Bon sound recording, covered under s 89 of the Act. Labels Mr 305 and Sweat It Out are the owners of copyright in the recording, with Sweat It Out having the exclusive license to make and distribute copies and otherwise exploit and protect the copyright in Australia.
The applicants seek declarations as to infringements, injunctions, damages, interest and costs. Mr Fernandez initially resisted the application in its entirety (and indeed intended to seek its summary dismissal as an abuse of process, having regard to other proceedings between the parties in the Supreme Court of NSW) but these proceedings were partially settled and I made consent orders on 7 July 2011 which note the following undertakings given by Mr Fernandez and the following agreed statement of facts:
I, Jaime Fernandez, undertake to the Court that:
1. I will not, by myself, or by my servants or agents, make copies of, or communicate to the public in Australia, the whole or a substantial part of the Bon, Bon Sound Recording, or authorize any third person to do such acts in Australia, without the licence of the third applicant.
2. I will not, by myself, or by my servants or agents, infringe the first applicant’s moral rights in the literary and musical works comprised in the Bon, Bon Song.
Mr Fernandez also provided an apology on his website.
Fernandez was "wholly responsible for the content that appeared on' the Suave website, created to promote events organized by Fernandez. During 2008 Fernandez obtained an 'Audio Drop' recording in which Perez speaks words to the effect of “Mr 305 and I am putting it down with DJ Suave”. Fernandez also obtained a recording containing Perez’s Bon, Bon song. Fernandez made a copy of the song, which he digitally stored that copy on his computer in MP3 format. He then combined the Audio Drop with the MP3 Copy, using and audio editing software program. In December 2010 Fernandez uploaded a copy of the edited recording to the Suave site, with members of the public having access to the recording - via streaming - from that time until 12 January 2011.
The judgment states that -
The applicants contend that Mr Fernandez’s use of the Audio Drop to produce a distorted version of Bon, Bon was conduct engaged in without authorisation and involved infringements of the rights of reproduction and communication to the public when Mr Fernandez streamed the altered version of the song on his website. This is said to amount also to infringements of Mr Perez’s moral rights to the integrity and authorship (as the author of Bon, Bon) pursuant to s.195AI of the Copyright Act. The conduct is said by the applicants to warrant the awarding of both compensatory and additional damages, including aggravated damages for moral rights infringement, as well as interest and costs.Fernandez had full control over the maintenance of the website and admitted that on 15 December 2010 he personally added four songs to the site so that when it loaded the songs would automatically play. The first song was Bon, Bon.
The judgment goes on to state that -
The interference with the sound recording was based on the Audio Drop that had been provided to Mr Fernandez by Mr Perez’s agent, a man by the name of “Mr Barry London” who also goes by the stage name “Mr Purple”. An Audio Drop or oral message had been provided to Mr Fernandez for the purposes of promoting the tour. ...Driver FM appears to have been unimpressed, stating that Fernandez -
On or about 30 September 2010 Mr Fernandez inserted the Audio Drop into the Bon, Bon track lasting for approximately 10 seconds into the song. Mr Fernandez was made aware of the fact that Mr Perez was disconcerted by the addition to the song and it was removed from the website no later than 12 January 2011.
Mr Fernandez states that he did not receive any income or derive any benefit as a result of the playing of the Audio Drop as part of the Bon, Bon Song. ...
Mr Fernandez was an unimpressive witness. His approach to giving evidence under cross-examination reflects poorly on his credit. He was at times untruthful, and gave answers which he thought would put his case in the best possible light, depending on what he perceived that case to be at any particular point in the cross-examination. When confronted with the inconsistency, falsity or improbability of his evidence, Mr Fernandez ranged between refusing to concede the obvious and seeking to draw immaterial and/or irrelevant distinctions, or was simply nonplussed by the illogicality of his answers.
It was made clear from the cross-examination that Mr Fernandez has a continuing grievance with Mr Perez resulting from the failed tour, and a sense of entitlement to leverage off Mr Perez’s reputation. This explains both his motive for engaging in the infringing conduct in the first place, and the approach that he took to the proceedings until the partial settlement.
• was untruthful as to his reputation as a promoterIn discussing the claimed infringements the judgment indicates that -
• refused to acknowledge that the Audio Drop conveyed an association between himself and Mr Perez
• maintained an illogical and implausible position about his right to use the Audio Drop.
• obfuscated on the significance of the internet audience
• obfuscated as to his knowledge of copyright requirements
• resisted the inference that his infringing conduct formed part of a campaign against Mr Perez resulting from a failed tour
• obfuscated on his intention to use the edited Bon, Bon recording to leverage off Mr Perez’s popularity
• failed to provide an acceptable explanation for the negative response he gave in July 2011 to interrogatories.
Fernandez’s distortion of Bon, Bon involved combining a promotional recording known as an “Audio Drop” on which Mr Perez perform the words “Mr 305 and I am putting it right down with DJ Suave” with a copy of Bon, Bon Mr Fernandez had reproduced without authorisation from the Armando album. “Mr 305” is known among Mr Perez’s fans to be a reference to himself, and “DJ Suave” is a reference to Mr Fernandez. Mr Perez had provided the Audio Drop to Mr Fernandez in order to assist in promoting the failed tour which is the subject of the NSW Supreme Court proceedings.In a useful addition to Meskenas Driver FM considers moral rights -
The combination of the Audio Drop with Bon, Bon makes it sound to the listener like Mr Perez is positively referring to Mr Fernandez at the beginning of the song, and that this reference forms part of the original work. Mr Fernandez then uploaded this altered copy of Bon, Bon to the Suave Website, such that it would immediately begin streaming whenever anyone visited the Suave Website. It was an act designed both to avenge Mr Fernandez’s grievances with Mr Perez arising from the subject matter of the NSW Supreme Court proceedings, and to promote Mr Fernandez.
Mr Fernandez’s conduct was engaged in without any authorisation and involved infringements of the rights of reproduction and communication to the public comprised in the Bon, Bon Sound Recording (owned by the second and third applicants) pursuant to ss.85 and 101(1) of the Copyright Act, and infringements of Mr Perez’s moral rights to the integrity of authorship (as the author of the Bon, Bon Song) pursuant to s.195AI of the Copyright Act, which provides: (1) The author of a work has a right of integrity of authorship in respect of the work. (2) The author's right is the right not to have the work subjected to derogatory treatment.
I accept that the applicants were harmed by the conduct of Mr Fernandez and that he benefited from it.
I accept from the evidence of Ms Martinez that the rap/hip hop genre is one in which an artist’s commercial and artistic associations really matter. Success in building a reputation, developing a fan base, selling records, attracting people to concerts, and ultimately entering into lucrative commercial sponsorships and endorsements depends in large measure on the other artists and brands the artist is seen to associate with. It is also a genre which has been closely linked to “DJ-ing”. Association between artists and DJs continue to play an important role in promoting and building audiences for rap/hip hop music.
Mr Fernandez is a prominent DJ and live music promoter in Western Australia. He conceded that as well as streaming the Mixed Bon, Bon Version on his website, he also played the altered version of the sound recording at public venues where he performed as a DJ. He benefited by falsely representing a positive association between himself and Mr Perez. I further accept that Mr Fernandez was motivated in part by animosity towards Mr Perez because of the failed tour and the legal proceedings resulting from that failure. I accept that Mr Fernandez, in altering the sound recording of Bon, Bon to represent himself as a subject of the song and then prominently streaming it from his website, intended to cause Mr Perez artistic, reputational and commercial harm as an act of retribution for the grievances he has for the failed tour, while at the same time leveraging off the infringement for the sake of self promotion.
When he was made aware of the infringement by his solicitors, Mr Fernandez did not simply remove the infringing content from his website, but replaced it with the Audio Drop alone. Service of process upon him proved difficult. He also initially disputed all issues in the proceedings although ultimately conceded a number of matters which have been discussed above.
Mr Fernandez, in effect, acknowledged his wrongful conduct by seeking to obtain licences from APRA and the PPCA (copyright collecting societies) which he thought would retrospectively excuse his conduct. The APRA licence is irrelevant to the sound recording and the PPCA licence is not retrospective. In any event, a licence from either PPCA or APRA does not permit the licensee to remix or alter sound recordings in any way.
I accept the applicants’ legal submissions concerning moral rights. The moral rights protections in Part IX of the Copyright Act were introduced by the Copyright Amendment (Moral Rights) Act 2000 (Cth). They have independent existence from the bundle of “economic” rights protected by copyright, are inalienable to the author, and give protection to the investment of the author’s personality in his or her creation. Moral rights draw their jurisprudential force from civil law traditions and a number of international copyright and human rights conventions to which Australia is a party. Further, in his Second Reading Speech introducing the relevant amendments to the Copyright Act, the then Attorney-General said:
But this bill is not just about fulfilling international obligations. More importantly, it is about acknowledging the great importance of respect for the integrity of creative endeavour. At its most basic, this bill is a recognition of the importance to Australian culture of literary, artistic, musical and dramatic works and of those who create them.Although Australia and other common law jurisdictions were slow to recognise moral rights, Part IX of the Copyright Act now gives full force to Australia’s international obligations in this respect. In 2011, an expert group of copyright academics convened by the Australian Copyright Council recognised moral rights protection as one of the four fundamental principles of Australian copyright law. The author’s moral rights recognised in Part IX of the Copyright Act comprise the right of attribution (not in issue here), and right of integrity of authorship. Specifically, s.195AI provides that the right of integrity of authorship is the author’s right “not to have the work subjected to derogatory treatment”.
Here, the act in question undertaken by Mr Fernandez consisted of the deletion of a prominent part of Bon, Bon (the Spanish words je, je, je, je, je, mira que tu estas rica) and its replacement with words performed by Mr Perez in an entirely different context (“Mr 305 and I am putting it right down with DJ Suave” – intended to promote the failed tour). This made it appear that Mr Fernandez was a subject of the song. This alteration was carried out skilfully (presumably drawing on Mr Fernandez’s DJ skills), and exploited the fact that Mr Fernandez already had in his possession the Audio Drop provided to him by Mr Perez. This created the impression that the author had authored the altered content himself and included it in the song. The reference to Mr Perez’s alter ego “Mr 305” particularly attracts the listener’s attention. The change made to the song by Mr Fernandez must be regarded as a “distortion” or “alteration” (if not a “mutilation”) of the work, which is material, thereby satisfying that element of s.195AJ.
The fact that Mr Fernandez’s treatment of Bon, Bon was “prejudicial to the author’s honour or reputation” (the second element which must be satisfied to engage s.195AJ) is evident in two ways.
First, given that the work had only recently been released in the United States, and not in Australia at the time of the infringement (Mr Fernandez obtained it from a friend in Chile), there will have been a class of listeners, who upon listening to Bon, Bon for the first time through the Suave Website, will have presumed that the altered section formed part of the authentic, original work. In other words, they would have presumed that Mr Fernandez was indeed a subject of the song, and that Mr Perez had written and performed it about him.
I accept the affidavit evidence provided by Ms Martinez that, associations between artists and DJs in the hip-hop/rap genre are highly significant. Artists go to great lengths to choose whom they associate with, and these associations form a central part of their reputation. In those circumstances, I accept that the fact that the reference to Mr Fernandez in the altered version of the song had not been authorised by the author should be regarded as prejudicial to him per se. Were it to be suggested otherwise, Ms Martinez’s affidavit establishes to my satisfaction that the association with Mr Fernandez is one which Mr Perez himself strongly considered to be prejudicial to his reputation, and which caused him anger and distress.
Secondly, there will have been an alternative class of listeners who were more intimately aware of both Mr Perez’s music and Mr Fernandez. This class is likely to have been alert to Mr Fernandez’s ruse. Persons in this class are also likely to have been aware of the circumstances of the failed Australian tour, and the fact that Mr Fernandez is suing Mr Perez in the NSW Supreme Court in relation to it. These are matters which Mr Fernandez has sought to publicise for himself. Listeners in this class will know the significance of Mr Perez’s associations as an artist, and will understand the alterations to the song made by Mr Fernandez to be mocking Mr Perez’s reputation.
The defence of reasonableness is not available to Mr Fernandez to excuse his conduct. In fact, an examination of the matters to be taken into account by the Court when deciding whether this defence is available, as set out in s.195AS of the Copyright Act, only serves to emphasise the harm caused by Mr Fernandez. In particular:
a) the nature of the work, which is one existing in a genre in which associations between artists is of considerable significance;Section 195AZA sets out the remedies that may be granted for an infringement of moral rights. In light of the relief which has now been obtained by way of the part settlement, the remedies which the applicants seek from the Court is an award of damages for loss resulting from the infringement pursuant to subsection (1)(b).
b) the purpose for which the work was used, which in this case was to either promote Mr Fernandez for his own benefit, or to mock Mr Perez as an act of retribution;
c) the manner and context, which in this case includes the fact that the work was streamed from Mr Fernandez’s own website, and the existing relationship between the parties.
In Meskenas v ACP Publishing Pty Ltd], when considering the approach to be taken to awarding damages[44], the Court took account of the academic commentary on moral rights, which notes among other things, that an author may also claim for injured feelings arising from the infringement. In this case, the Martinez affidavit establishes to my satisfaction that such harm was suffered by Mr Perez. He is entitled to be compensated for it.
In Meskenas, the Court ultimately took the view that the compensation awarded for moral rights infringement should reflect that which it would have awarded for copyright infringement. The applicants submit that this approach would not be apposite here. In this case there are two distinct groups of applicants involved: Mr Perez sues on the basis of his moral rights; the second and third applicants sue on the basis of their copyright. Were the conflation of copyright and moral right damages in Meskenas to be applied here without appreciation of the underlying factual differences it would leave one class of applicant uncompensated at the expense of the other. Here, the copyright and moral rights causes of action should sound in separate and cumulative heads of damage, in relation to compensatory damages for copyright infringement and breach of moral rights. However, as I have already found above, the considerations relevant to an award of additional damages are those bearing on the award of damages for breach of moral rights, as matters bearing on the interests of Mr Perez.
In Meskenas the Court also noted the availability of aggravated damages for moral rights infringement, which were awarded in that case on the basis of the respondent’s conduct following the time when the infringement of the moral rights was made known. Mr Fernandez here has allegedly similarly aggravated the harm caused by his conduct after the infringement was made known to him, as has been set out above.
Mr Fernandez continues to deny that his conduct has resulted in any harm or embarrassment. His affidavit evidence continues to maintain that he is entitled to do as he pleases with the Audio Drop. I do not accept that Mr Fernandez has displayed contrition. The conduct following the infringement further aggravated the harm caused, for which, Mr Perez is also entitled to be compensated. However, Mr Fernandez is entitled to the benefit of his acknowledgment of his infringements (however belatedly).
An action for infringement of moral rights is actionable as a breach of statutory duty without proof of damage. What is required for a breach of the author’s right of integrity (provided for in s.195AI) is the subjection of the work to “derogatory treatment”, which means the doing of anything in relation to a work that results in a material distortion of, the mutilation of, or a material alteration to the work (or anything else) that is prejudicial to the author’s honour or reputation. A person infringes the author’s right of integrity if he or she so subjects the work to derogatory treatment].
In other words, all that is required is proof that Mr Fernandez’s act in respect of the Bon, Bon Song was prejudicial to Mr Perez’s honour or reputation, not that Mr Perez suffered damage. This approach has also been taken under the equivalent UK legislation.
The Copyright Act does not require that Mr Perez’s reputation has been prejudiced. All that is required is that the respondent’s act in relation to the work “is prejudicial”. That statutory language is derived from Article 6bis of the Berne Convention, which requires Australia to afford authors the right to object to derogatory treatment “which would be prejudicial to their honour or reputation” (emphasis added).
As is evident from the Martinez affidavit, issues concerning the reputation and honour of an artist in the rap/hip-hop genre in which Mr Perez creates are highly attuned:
- an artist’s honour and reputation depends on whom he or she associates with, and is a driver of artistic (and with it commercial) success. The artist goes to great lengths to control whom he or she associates with;In Meskenas the Court awarded damages of $9,100 for breach of ss.195AO and 195AP of the Copyright Act, for breach of the author’s right of attribution, in circumstances where Raphael FM held that he would have awarded the same amount for copyright infringement (for both compensatory and additional damages).
- given that evidence, the distortion of Mr Perez’s work, such as to create a false association, should be regarded as prejudicial to his honour and reputation as an artist per se;
- that it is in fact prejudicial is made clear by the circumstances of Mr Perez’s relationship with Mr Fernandez; it is not necessary for the applicants to lead evidence from members of the public as to the way the work would be received;
- that the treatment of the work was prejudicial may be presumed.
However, the basis for compensation is not the same. Section 195AZA(1) provides that the remedies for moral rights infringement include “damages for loss resulting from the infringement”. Moral rights are not proprietary rights (a matter which is evident by the absence in the statute of any provision allowing assignment). Moral rights attach to the personality of the author. They may be compared, for instance, with the reputational interests protected by an action in defamation.
It is relevant to consider that prior to the introduction of Part IX one of the ways that Australia sought to comply with its Berne obligations with respect to the right of integrity, was pursuant to the law of defamation. There are clear parallels between the two laws (noting that defamation protects reputation, whereas moral rights protect both “honour and reputation”).
This means that the loss which is compensable includes not only pecuniary loss, but also damage to goodwill and reputation enjoyed by the author.
In awarding damages for moral rights infringement on this basis the Court should have regard to the matters described above, with respect to extent and value of Mr Perez’s reputation as an artist, and the harm caused by Mr Fernandez’s conduct. This includes the fact that the distortion of the work and the false association created by it occurred at a time when the song was newly released, the artistic significance which associations have within the genre in which Mr Perez creates, the fact that the distorted work was performed in nightclubs which reach the target audience for Mr Perez, and that the distorted work was communicated on the internet where its audience was potentially unlimited.
In addition, damages awarded under s.195AZA(1) may further provide compensation for injured feelings, and vindication of the artist, by way of an award of aggravated damages. A parallel here may be drawn with an award of damages under this limb in the law of defamation. An award of aggravated damages may also take account of the respondent’s conduct in the litigation. This would also accord with the approach taken in the law of defamation, where it has been held that conduct by counsel during the trial may also justify the award of aggravated damages through increasing the hurt done to the plaintiff.
In Meskenas, Raphael FM awarded the applicant a separate component of damages, which he characterised as aggravated damages, for the distress caused to the applicant, including by reference to the respondent’s conduct after the proceedings were commenced. In that case, his Honour considered that, the necessary factors going to flagrancy otherwise being absent in that case, the amount should be equal to that which he would have awarded under s.115(4) (ie. $8,000).
Here, it is submitted that the Court should have regard to the need to provide compensation to Mr Perez for the distress caused to Mr Perez as an artist both at the time of the infringement, the conduct of Mr Fernandez since that time, including the ongoing campaign which is said to be being waged by Mr Fernandez, and the need to provide vindication to Mr Perez as an artist. In doing so, the Court may have regard for the range of damages it would award under s.115(4) for infringement of the copyright.
The applicants seek $35,000 for the harm to Mr Perez’s reputation and $50,000 aggravated damages for distress to Mr Perez. That claim considerably overstates the applicants’ case, trespasses into matters more appropriate to be dealt with in the NSW Supreme Court proceedings, and gives no acknowledgment of Mr Fernandez’s concessions, undertakings and apology. I do not accept that Mr Perez’s reputation has suffered any lasting damage. His moral rights were infringed in circumstances which caused him distress, and which were serious, but Mr Fernandez ultimately saw the error of his ways and appropriately gave undertakings and an apology, however grudgingly. In all the circumstances, I have decided that an appropriate award of damages for the infringement of Mr Perez’s moral rights is $10,000.
