National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd

INTRODUCTION 1 The Optus group of companies is a leading provider of communications services throughout Australia. Two of its members, Singtel Optus Pty Ltd and Optus Mobile Pty Ltd (referred to collectively here as "Optus"), devised a new subscription service - "TV Now" - which it offered, in the mainland State capitals, to private and to the employees (subject to conditions) of small to medium business customers from mid-2011. That service enabled a subscriber to have free to air television programmes recorded as and when broadcast and then played back at the time (or times) of the subscriber's choosing on the subscriber's compatible Optus mobile device or personal computer. The system which permits such "time-shifting" of programme viewing requires the copying and storing of each television broadcast recorded for a subscriber, hence the allegations of copyright infringement in this matter. 2 It has been agreed for the purposes of these proceedings that the Australian Football League, the National Rugby League partnership (which consists of the first and second appellants in NSD 201 of 2012) and Telstra have copyright interests in the free-to-air broadcasts of live and filmed AFL and NRL football games played on four specified days in September 2011 which were recorded for Optus subscribers using the TV Now system. The Australian Football League conducts a national Australian Rules competition. The National Rugby League partnership conducts a national Rugby League competition. Those entities have granted to Telstra an exclusive licence to communicate to the public, by means of the internet and mobile telephony enabled devices, free to air television broadcasts of football matches conducted by them. 3 The two primary issues raised in the appeals can be stated shortly. The first is: When a cinematograph film (or copy) and a sound recording (or copy) were made when a television broadcast of one of the AFL or NRL matches was recorded for a subscriber, who, for the purposes of the Copyright Act 1968 (Cth) was the maker of that film, etc? Was it Optus or the subscriber (or both of them jointly)? The primary judge's answer to this was that the maker was the subscriber. 4 Ours is a different conclusion. The maker was Optus or, in the alternative, it was Optus and the subscriber. It is unnecessary for present purposes to express a definitive view as between the two. Optus could be said to be the maker in that the service it offered to, and did, supply a subscriber was to make and to make available to that person a recording of the football match he or she selected. Alternatively Optus and the subscriber could be said to be the maker for Copyright Act purposes as they acted in concert for the purpose of making a recording of the particular broadcast which the subscriber required to be made and of which he or she initiated the automated process by which copies were produced. In other words, they were jointly and severally responsible for the act of copying. 5 The second question is: If Optus' act in making such a film would otherwise constitute an infringement of the copyright of AFL, NRL or Telstra, can Optus invoke what we would inaccurately, but conveniently, call the "private and domestic use" defence of s 111 of the Act? The primary judge did not have to consider this, given his answer to the first question. 6 Our answer is that Optus cannot in either of the above contingencies bring itself within the scope of the s 111 exception on its proper construction. 7 Our conclusions on these two matters are sufficient to resolve these appeals. They must be allowed. It is, in consequence, unnecessary to consider the various alternative grounds of appeal the appellants have raised. 8 We should also note at the outset that Audio-Visual Copyright Collecting Society Ltd - a declared collecting society for the purposes of Parts VA, VB and VC of the Copyright Act - sought leave pursuant to r 9.12 of the Federal Court Rules 2011 to make short written and oral submissions on how s 111 should properly be interpreted having regard to the scheme of Part VC of the Act relating to the retransmission of free-to-air broadcasts. While this application was opposed by Optus (which nonetheless responded to the submissions made) it was an appropriate one in the circumstances and we have allowed the application on the limited basis sought. This said, we have in the event found it unnecessary to take account of those submissions. 9 Though our conclusions differ from those of the primary judge, we acknowledge the assistance we have derived from his reasons for decision. We have found the questions raised in the appeals to be of some difficulty and considerable uncertainty. His Honour conducted the proceeding at first instance in an expeditious manner, and reasoned cogently in his reasons for judgment. The primary judge has distilled very complicated technology and has crystallised complex issues in a way that has made the management of the appeal much easier than it might have been.