Copyright Agency Limited v State of New South Wales

[12]

Before turning to the relevant sections in Pt VII, it also needs to be noted that an act is "deemed to have been done with the licence of the owner of a copyright if the doing of the act was authorized by a licence binding the owner of the copyright" (s 15). This provision can encompass a consent or permission to use work subject to copyright, which is consonant with, or independent of, any contractual promise in respect of that work[10].
Pt VII, Div 2 (ss 182B-183F) is headed "Use of copyright material for the Crown". The phrase "copyright material" is defined (s 182B(1)) in terms which include not only literary, dramatic, musical and artistic works but copyright in published editions, sound recordings, cinematograph films, television and sound broadcasts and works included in them. The present litigation is concerned with the use of "copyright material", being survey plans, as "artistic works". References in these reasons to "works" should be read with this in mind and do not qualify the broader definition of "copyright material".
The State did not suggest that any of the fair dealing provisions (ss 40-42) or other provisions in Pt III, Div 3 (ss 43-44F) which provide that certain acts do not constitute an infringement, had any application to the uses of the survey plans described below. In cases where these provisions do apply, Pt VII, Div 2 respecting Crown use and equitable remuneration is not engaged.
The Act further provides that a State, doing any acts within the copyright, must inform the owner of the copyright unless it appears to the State that it would be contrary to the public interest to do so (s 183(4))[11]. Terms for the doing of such acts by a State are to be fixed by agreement between the State and the copyright owner or, in default of agreement, by the Tribunal (s 183(5)).
Putting aside for one moment the special position of governments, the idea that an exception to infringement of copyright might be made if a notice is given by a user of copyright material to an owner of the copyright and if the user pays certain specified royalties, is not new[12]. However, current statutory licence schemes, which will be discussed in more detail later, are comparatively complex and have been subject to continual legislative amendment as new technologies which simplify copying have emerged.
Specific statutory exceptions to infringement are also well known. The long‑established fair dealing exception first included in the Copyright Act 1911 (UK)[13], is a familiar example. Current statutory exceptions to infringement are legion[14]. Some exceptions give rise to a right to use copyright material without payment of remuneration; these are often referred to as "free use" provisions. Other exceptions are the foundation for statutory licensing schemes which permit use on condition that remuneration is paid by users to owners. The licences are often described as "compulsory" and the schemes are often collectively referred to as "remunerated use" provisions.

[20]

These provisions alleviate the administrative burden of giving notice and fixing terms for each individual "government copy" under ss 183(4) and (5). Notification of the making of copies instead occurs by a process of "sampling". The method of working out equitable remuneration must take into account the estimated number of copies made for the services of the government during the period and specify the sampling system to be used for that purpose (s 183A(3)). This applies whether the method is agreed on by the collecting society and government or determined by the Tribunal (s 183A(5)).
Equitable remuneration must be paid by the Commonwealth or State to the collecting society in the manner agreed by the parties or ordered by the Tribunal (s 183B(1)). Where not paid, the remuneration is recoverable by the collecting society as a debt due to the society in a court of competent jurisdiction (s 183B(2)).
A company limited by guarantee may become a "relevant collecting society" for the purposes of s 183A by application under s 153F. If the Tribunal is satisfied of certain matters, including that the society's rules permit the relevant copyright owners to be members (ss 153F(6)(b) and (c)) and include provision for the distribution of remuneration (s 153F(6)(e)(iii)), it may declare the company to be a collecting society in relation to all or a class of government copies. Where such a declaration is in force, the company will be a "relevant collecting society" (s 182C). CAL meets this description as it has been declared to be a collecting society for the purposes of Pt VII, Div 2 of the Act for each owner of copyright in works, other than a work included in a sound recording or a cinematograph film.
The operation of the 1998 amendments is dependent on a number of other provisions of the Act. Examples in Pt VII, Div 2 include the provision for the powers of collecting societies to carry out sampling (s 183C), annual reports and accounting (s 183D), the alteration of the rules of the collecting society (s 183E) and the making of applications to the Tribunal for the review of distribution arrangements (s 183F). Applications and references to the Tribunal are also dealt with by Subdiv E of Pt VI, Div 3 (ss 153E-153KA). Provision is made, for example, for applications for the review of a collecting society's distribution arrangement (s 153KA) and applications to the Tribunal to revoke a declaration of a collecting society (s 153G).

[32]

It has already been noted that the instrumentality of the State charged with the administration of the system of registration of land is LPI. Survey plans show how a parcel of land is positioned on the earth's surface and land in the State may not be subdivided so as to permit transfer of a legal estate in a parcel of land in the subdivision unless a plan is registered in accordance with Pt 23, Div 3 of the Conveyancing Act 1919 (NSW) ("the Conveyancing Act"). Such plans must conform to the requirements of Sched 5 to the Conveyancing (General) Regulation 2003 (NSW) made pursuant to s 202 of the Conveyancing Act. These requirements are conveniently set out by Emmett J in his reasons for decision in the Full Court[19], which obviates the need to repeat them here. An obligation to make copies of plans available to the public once they are registered is imposed under ss 198 and 199 of the Conveyancing Act.
Further, only a survey plan prepared by a registered surveyor is registrable under s 135F of the Real Property Act 1900 (NSW) ("the Real Property Act"). In order for a person to be registered as a surveyor, he or she must obtain a relevant four-year University degree and other professional qualifications. In addition to the preparation of registrable survey plans, surveyors' activities include subdivision and regional planning, surveying for strata titles, pipeline surveys, electricity transmission line surveys, engineering surveys and irrigation surveys.
When a survey plan is lodged for registration with LPI, numerous checks are carried out. If the survey plan complies with all relevant legislative requirements it proceeds to registration. Upon registration, the survey plan is scanned into a database, and copies of it are sent to the relevant council and authorities and to LPI's office in Bathurst.
The practical consequence of registration of a survey plan is that whilst copies are available over the counter, electronic copies of the plans are made available to LPI staff, government agencies, councils, relevant authorities, information brokers and members of the public. The Real Property Regulation 2003 (NSW) and the Conveyancing (General) Regulation 2003 (NSW) prescribe the fees payable to LPI for access and copying. Information brokers have numerous clients and a sample contract between an information broker and LPI was in evidence. LPI acts "as a wholesaler [of the information] to the information brokers" and various fees per transaction were to be found in Sched C to the sample contract. The obligations of the information broker under the sample contract included the active marketing and promotion of its business.

[33]

In relation to question 5, CAL argued before the Full Court that the State's only authority to copy and make available the Relevant Plans derived from s 183(1) of the Act. Emmett J (with whom Lindgren and Finkelstein JJ agreed respecting questions 5 and 6 of the stated case) accepted that the copying and the making available of those plans was done "for the services of the … State"[20] within the meaning of s 183.
In 1863, the Torrens System of land ownership was established in New South Wales under the Real Property Act 1862 (NSW) which commenced operation on 1 July 1863. The current legislation governing the Torrens System in New South Wales is the Real Property Act. In that context Emmett J recognised that the Torrens System of land is based on statutory ownership and proper survey[21]. His Honour dealt with relevant statutory requirements to be found in the Real Property Act, which include a requirement that the Registrar‑General cause a Register to be maintained (ss 31B and 32(1)) as a public record which must be available for inspection on payment of a prescribed fee (s 96B(1)), and from which certified copies of registered instruments must be furnished to the public, also upon payment of a prescribed fee (s 115(1))[22].
His Honour also considered the statutory requirements in the Strata Schemes (Freehold Development) Act 1973 (NSW) ("the Strata Freehold Act"), the Strata Schemes (Leasehold Development) Act 1986 (NSW) ("the Strata Leasehold Act"), the Community Land Development Act 1989 (NSW) and the Conveyancing Act, all of which legislation contains requirements in respect of the registration of plans[23]. For example, under s 198(1) of the Conveyancing Act the Registrar‑General is required to keep an index of the registers kept under that Act. On payment of a prescribed fee the Registrar‑General may provide a copy or permit inspection of the whole or part of the index (s 198(2) of the Conveyancing Act). His Honour noted that survey plans fall into two categories: Deposited Plans (DPs), which represent a subdivision or consolidation of land and include community plans, and Strata Plans (SPs), which represent a subdivision of land under the Strata Freehold Act or the Strata Leasehold Act[24].
It appears that the system for the lodgement and registration of survey plans in connection with the Torrens System has, since its inception, involved lodgements with LPI (and formerly with the Land Titles Office). Originally this was done across a counter but since about 2002 survey plans can be lodged electronically[25].
After dealing extensively with the State's use of survey plans after lodgement and prior to registration, Emmett J next identified the detail of the State's various uses of survey plans on and subsequent to registration[26]:

[45]

The issue in this appeal is whether the Full Court erred in finding that the State had a licence to reproduce the Relevant Plans and to communicate them to the public, independently of s 183 of the Act. It is important to recognise that the issue is limited to the copying of registered survey plans and the terms upon which they may be communicated to the public. Uses made of the survey plans which are antecedent to the two uses in question were not the subject of any claim for remuneration or for the fixing of terms. The antecedent dealings were described as the dating and sealing of the plans and their registration.
CAL contended that s 183 is a statutory licence scheme leaving no room for the implication of a licence to copy the plans, or communicate them to the public. That argument was supported by reference to the whole of Pt VII, Div 2 and by pointing to the lack of necessity for an implied licence when there was an express statutory licence available.
The State submitted that, in the circumstances described above, it is not dependent on s 183 to except it from infringement because it has an implied licence, binding on the owners of copyright in the plans, to do everything that it is required to do under the statutory and regulatory framework which governs such plans. Implicit in the argument was the proposition that the State has free use of the plans under that implied licence.
The circumstances said by the State to support the implication of the licence were that it is an important State function to provide and maintain public records of landholdings, which includes legal obligations to provide copies of registered plans on request to the public. Furthermore, surveyors typically charge their clients for survey plans which they prepare in accordance with statutory and regulatory requirements knowing the use to which survey plans will be put by the State. The State sought to maintain the decision of the Full Court[29] that assent by a surveyor to the submission of a survey plan prepared by him or her, for registration, authorised the State to do all and any of the acts described above which might otherwise constitute an infringement[30].
The points of difference between the parties cannot be resolved without noting relevant distinctions between the various uses of the survey plans made by the State. On the one hand, the State uses the plans in direct response to lodgement of the survey plans by an applicant to effect, if appropriate, registration, and to issue title. This includes making a working copy of the plans. These uses are directly connected with private contracts for reward between surveyors and their clients for the preparation of plans for the specific purposes of lodgement, registration and the issue of title. On the other hand, there are uses of survey plans by the State which flow from registration and which involve copying the plans for public purposes or communicating them to the public via a digital system.
Whilst CAL is seeking remuneration and terms only in respect of those latter uses, the submissions did not always distinguish between the two types of uses. As will be explained in these reasons, the statutory licence scheme applies in the circumstances of this case to authorise the State to make copies of the survey plans after registration, for public purposes and for communication to the public, and provides for terms upon which that can be done. The scheme is compulsory in the sense that an owner cannot complain of the permitted use, but the use is allowed on condition that it be remunerated.

[48]

Before the modern rise of increasingly complex statutory licence schemes, provisions in respect of exceptions to infringement and statutory licences were comparatively simple. Section 8 of the Copyright Act 1912 (Cth) ("the 1912 Act"), simply provided that the Copyright Act 1911 (UK)[38] ("the 1911 Act") should, subject to any modifications in the 1912 Act, be in force in the Commonwealth. As noted, the 1911 Act provided exceptions to infringement which included "[a]ny fair dealing with any work for the purposes of private study, research, criticism, review, or newspaper summary"[39]. As also noted, the 1911 Act contained a simple proviso that after the expiration of a period of years from the death of the author of a published work in which copyright subsisted there would be deemed to be no infringement by reproduction of the work provided that the reproducer gave a notice in writing (and paid certain prescribed royalties) to the owner[40]. It was also provided that (after the death of an author) a compulsory licence could be obtained on an application to the Privy Council[41], although that latter provision was used rarely.[42]
Two related developments in the middle of the 20th century, one general, one more specific, constitute the setting in which the Spicer Committee was appointed to reconsider inevitable tensions between the rights of copyright owners and the public need for reasonable access to copyright works.
First, Art 7 of the Brussels Act[43], provided that the term of copyright protection shall be for the life of the author and 50 years after the date of the author's death. That raised the prospect that compulsory licensing under s 3 of the 1911 Act could continue long after any real economic interests in preventing copying had dissipated[44]. For that reason, and following the Report of the Copyright Committee[45] in the United Kingdom (the "Gregory Committee") before it, the Spicer Committee favoured removing general compulsory licensing provisions as they stood in the 1911 Act and as they applied in Australia, as a precondition for ratifying the Brussels Act[46].
Secondly, the specific abolition of Crown immunity for copyright infringement in the United Kingdom inevitably raised the question in Australia of following suit and simultaneously establishing a possible basis upon which some or all Crown use of copyright material might occur without the risk of infringement.
That was the background to the Spicer Committee's consideration of the position of the Crown and the question of whether, and to what extent, it should be liable for copyright infringement.

[53]

When enacted almost a decade later, s 183(1) of the Act followed a form of provisions governing the rights of the Commonwealth and the States to use inventions subject to the payment of compensation[54]; this course had been expressly suggested by the Spicer Committee[55].
What is important in respect of the submissions made in this case is that no distinctions are made in s 183(1) between government uses obliged by statute and/or government uses which may be "vital to the public interest" on the one hand, and government uses which reflect considerations more closely resembling commercial uses, on the other.
Whilst it is not difficult to understand a preference for a policy framed with an eye to such distinctions, no such policy is evinced in the clear and express terms of s 183(1).
Section 183(3) provides that an authority may be given by the State to a person to do any acts comprised in the copyright before or after the acts have been done and notwithstanding that the person has a licence binding on the copyright owner to do the acts. This suggests that an authority, consent or permission given by a government instrumentality to another person, to do acts within the copyright, may co‑exist with a licence covered by s 15 of the Act.
An agreement or licence fixing terms upon which a person other than the Commonwealth or a State may do acts comprised in the copyright will not be operative under s 183(1), unless the agreement or licence has been approved by the relevant Attorney‑General (s 183(6)).
Under s 183(8), an act done under s 183(1) does not constitute publication of a work. This preserves for copyright owners the running of time in respect of the first publication. It also operates to preserve the ownership of copyright in works or other subject matter which otherwise would vest in the Commonwealth or a State.
Finally, in recognition of separate statutory licence arrangements for educational uses, s 183(11) provides that copying or communication of a work for the educational purposes of an educational institution of, or under the control of, a State is "deemed not to be an act done for the services of … [the] State". Pt VB, Div 5 (ss 135ZU-135ZZA) establishes its own equitable remuneration system with respect to use by educational and other institutions. Section 183(11) emphasises the similarity of purpose in the different statutory licence provisions.
A consideration of ss 183 and 183A supports the submission by CAL that Pt VII, Div 2 of the Act lays out a comprehensive licence scheme for government use of copyright material. The statutory provisions are detailed and discussed earlier in these reasons under the headings "The legislation" and "The 1998 amendments".
The purpose of the scheme is to enable governments to use material subject to copyright "for the services of the Crown" without infringement. Certain exclusive rights of the owner of "copyright material" are qualified by Parliament in order to achieve that purpose. It is the statutory qualification of exclusive rights which gives rise to a statutory quid pro quo, namely a statutory right in the copyright owner (here a surveyor) to seek "terms" upon which the State (excepted from infringement by the legislature) may do any act within the copyright (s 183(5)) and to receive equitable remuneration for any "government copies" (s 183A).
With reference to the use by the Spicer Committee of the constitutional expression "just terms", it may be added that CAL conducted its case in this Court on the footing that the statutory scheme afforded "just terms" to copyright owners.
There is nothing in ss 183(1), 183(5) or 183A, or other provisions relating to the statutory licence scheme, which suggests that governments may make, or take the benefit of, arrangements which would have the effect of circumventing those provisions as they apply to the copying, and the communication to the public, of registered survey plans.

[55]

There are a number of statutory exceptions to infringement permitting certain similar public uses of copyright material (ss 47-50 of the Copyright, Designs and Patents Act 1988 (UK) (the "1988 UK Act")). First, any copyright in material, which is open to public inspection pursuant to a statutory requirement or in a statutory register, will not be infringed by copying so much of the material as contains factual information provided that any copying is done by or with the authority of the person making the material open to public inspection or maintaining the register, and provided that the copying is "for a purpose which does not involve the issuing of copies to the public"[56]. Secondly, copyright in material which is open to public inspection will not be infringed by the copying or the issuing of copies to the public if this is by or with the authority of the person making the material open to the public and is for the purpose of enabling the material to be inspected at a more convenient time or place[57]. In the White Paper titled "Intellectual Property and Innovation"[58] it had been said that the proposed legislation would "overcome the present obstacle to the copying of planning application documents by affected parties". Thirdly, copyright in material, which is open for public inspection pursuant to a statutory requirement or which is placed on a statutory register which contains information about matters of general scientific, technical, commercial or economic interest, will not be infringed by copying or issuing of copies to the public, by or with the authority of the person making the material open to public inspection or maintaining the register, for the purposes of disseminating that information[59].
There is a further exception for material communicated to the Crown in the course of public business by or with a licence of the owner, where the Crown owns or controls a document or other material embodying the work. Such material may be copied by the Crown or the Crown may issue copies to the public for the purposes for which the work was communicated to it, without infringement, subject to any agreement to the contrary[60]. Such provisions appear to cover the Crown when copying or issuing copies to the public which involve a profit at the copyright owner's expense[61].
There are also exceptions relating to the copying of public records[62] and other acts specifically authorised by Acts of Parliament[63].

[64]

Such considerations influenced the Full Court's finding that the circumstances here gave rise to an implied licence[74].
There are a number of facts which distinguish the position here from the position of the architect considered in Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd[75]. It can be noted that the uses made by the State of survey plans, for the purposes of an individual applicant seeking registration of those plans and issue of title, are not dissimilar to the uses under consideration in the implied licence cases. These are not the dealings in respect of which CAL seeks determination of terms under s 183(5) of the Act, or the payment of equitable remuneration pursuant to s 183A.
In relation to uses of the State which are not related to the private interests of an applicant, for registration and issue of title, but which can be conveniently described as public uses, a number of different considerations apply. First, whilst a surveyor's client pays the surveyor for the preparation of survey plans, a surveyor is not permitted by LPI to affix a copyright notice. However, there is nothing in the conduct of a surveyor in preparing plans for registration which involves abandoning exclusive rights bestowed by the Act, particularly since the statutory licence scheme qualifies those exclusive rights on condition that remuneration be paid for permitted uses.
Secondly, a surveyor cannot practise his or her profession, insofar as it touches land boundaries, without consenting to the provision of survey plans for registration knowing the uses, subsequent to registration, to which the plans will be put.
Thirdly, an application on behalf of a surveyor for equitable remuneration in relation to government uses of survey plans which involve copying and communication of the plans for, and to, the public, subsequent to registration, does not undermine or impede the use by the surveyor's client of the survey plans for the purposes for which they were prepared, namely lodgement for registration and issue of title.
Fourthly, neither a surveyor nor a surveyor's client could be expected to factor into remuneration under any contract of engagement between them, such copying for public uses as may be engaged in by the State.
Fifthly, the State imposes charges for copies issued to the public.
Sixthly, there is nothing in the express terms of s 183(1) (or its history) which could justify reading down the expression "for the services of the … State" so as to exclude reproduction and communication to the public pursuant to express statutory obligations.
These considerations all militate against implying a licence, as a matter of law, into all contracts between surveyors and their clients, in favour of the State, which is a stranger to such contracts. They also militate against the founding of any licence in an authority or consent given by the surveyors to the State, independently of the contracts between the surveyors and their clients.
Finally, and importantly, a licence will only be implied when there is a necessity to do so[76]. As stated by McHugh and Gummow JJ in Byrne v Australian Airlines Ltd[77]:

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Legislation Cited (14)

Cases Cited (12)