The somewhat complex facts involved the manufacture and refurbishment of pokies machines in Australia by the respondent (Global) which were sold to purchasers located principally in South America. The applicant (Aristocrat Tech) alleged that infringing copies of its computer programs (constituting the games and the artwork displayed on the gaming machines) were contained within the refurbished machines.
Interestingly, of the 54 impugned export transactions identified by Aristocrat Tech, which involved some 618 pokies machines, there was no evidence identifying precisely which components in each machine were allegedly infringing. This was the case even following the execution of search orders in respect of Global's premises.
In an attempt to overcome this evidentiary hurdle, Aristocrat Tech tendered a number of business communications, including 6 email chains between Global and certain international purchasers. These emails were described on appeal as 'essential' to the primary judge's reasoning process and His Honour's conclusion that, although their content did not reveal an offer to act in a manner constituting an infringement of the Copyright Act, it did indicate a 'willingness to assist the "serial counterfeiters" in South America in carrying out their actions'.
On appeal to the Full Federal Court, Global argued, and the Full Court held, that use of the emails to demonstrate the credit of the witnesses and the existence of a joint venture which involved the production and sale of infringing pokies machines amounted to tendency evidence. This finding was made notwithstanding the absence of the term 'tendency' in the primary judge's written decision.
Section 97 of the Evidence Act 1995 (Cth) creates a general rule excluding the use of tendency evidence with exceptions when evidence is considered by the court to be of 'significant probative value' and provided that strict notice requirements are complied with. As Aristocrat Tech did not recognise that the evidence it adduced was tendency evidence, the notice requirements were ignored and consequently, on appeal to the Full Court, the evidence was ruled to be inadmissible.
The importance of this case is underscored by the High Court's decision to refuse special leave yet still publish reasons for its decision (something it is not required to do). In finding the decision made by the Full Court to have been reasonably open, the joint judgement of the High Court stated: 'it would be difficult to find a clearer indication of the use of evidence as indicative of a tendency'.
Aristocrat provides a reminder of the strict requirements accompanying the use of tendency evidence, and that the assessment of whether evidence is being adduced to establish a tendency will be a matter of substance over form. It is also highlights the practical evidentiary hurdles facing those seeking to enforce their intellectual property rights globally.
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