Using Corporations law remedies where IP rights are disputed in consequence of the termination of a joint venture
In Showtime Management Australia Pty Ltd v Showtime Presents Pty Ltd [2008] NSWSC 594 (13 June 2008), Austin J., granted an interlocutory application requiring the unsuccessful parties to bring the profits of a Queen tribute act concert tour in South Africa into Australia, to be held securely pending the outcome of proceedings to determine which of the parties to the litigation owns the name and other rights in a business comprising the relevant Queen tribute act and a further such act. The Court also made orders for the respondents to provide detailed sworn accounts and source documents.
The case illustrates the importance of Corporations Act, common law and equitable remedies where IP rights are disputed in consequence of the termination of a joint venture where a company structure (and, in this case, also a trust) is involved. A narrow skill set, or IP-centric approach, may not be appropriate to such cases.
In the substantive and ongoing matter, the plaintiffs seek orders, in the Supreme Court of New South Wales, for the winding up of the joint venture company on the "just and equitable" ground set out in section 461(1)(k) of the Corporations Act.
The defendants to that action have brought a cross-claim against the plaintiffs, seeking relief on various grounds including grounds relating to claims of ownership of intellectual property in respect of the common law trade marks of the two acts in dispute ‘Queen It’s a Kinda Magic’ and ‘Champions of the World’, ownership of certain copyright works and rights used to present performances of the acts, oppression under the Corporations Act, breach of fiduciary duties of joint venturers and company directors, breach of statutory provisions reflecting the general law fiduciary duties of company directors, and accessory liability for breach of fiduciary duty.
In Showtime Management Australia Pty Ltd v Showtime Presents Pty Ltd [2008] NSWSC 618 (17 June 2008), the cross-claimants were also successful in their application under section 237 of the Corporations Act for leave to bring 'derivative' proceedings on behalf of the company against each of the plaintiffs for breach of fiduciary and statutory duties and accessory liability .
The Australian Financial Review’s Hearsay column ran an article on the case on Friday 20 June 2008: “King rings a bell, but never heard of Queen”.
The successful applicants, the cross-claimants and the JV company (under the derivative proceeding) are represented by Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog.
