Copyright Act 1968

De Garis v Neville Jeffress Pidler Pty Limited (1990) AIPC 90-678 considered.

Paxus Services Ltd v People Bank Pty Ltd [1990] FCA 500; (1990) 99 ALR 728 applied.

Counsel and solicitors Mr D.K. Catterns instructed by Phillips Fox

Counsel and solicitors Mr A.J.L. Bannon instructed by Taylor and Scott

That the application stand over to a date to be fixed to bring in Short Minutes for the giving of effect to these Reasons for Judgment.

NOTE: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.

Each of the applicants is a member of The Australian Journalists Association ("the AJA") who is employed by the proprietor of a newspaper, magazine or similar periodical, or is a freelance journalist whose literary works are published by newspapers, magazines or similar periodicals. The applicants include political commentators, finance and business reporters, sporting writers, feature writers and other specialist journalists.

2. The respondent ("Jeffress") carries on a business that includes the provision to subscribers, for a fee, of what are known as media monitoring services. These services include the monitoring by Jeffress of newspapers and other publications for "subjects" required by subscribers, and the provision of a photocopy of the material requested together with a statement of the source of that material.

3. Each applicant is an Australian citizen, Australian protected person or an Australian resident. For the purpose of the present application, it is agreed that in respect of the literary works produced, as journalists, by the applicants, and published in newspapers, magazines and other periodicals, the applicants rather than the proprietors of those publications are the owners of the copyright subsisting in the works by virtue of Part III of the Copyright Act 1968 ("the Act"). This conforms to the conclusion reached by Beaumont J., upon the particular facts before him, in De Garis v Neville Jeffress Pidler Pty Ltd (1990) AIPC 90-678.

4. The AJA is an organisation of employees registered on 24 May 1911 under the provisions of the Conciliation and Arbitration Act 1904. It is empowered to act for its members in all respects in relation to the authorisation of use of copyright material, and the collection and distribution of licence fees. Copyright Agency Limited ("CAL") is a company limited by guarantee which acts as a copyright collecting society to represent authors and publishers in the licensing of copyright works, principally in what are described as the "print media". On 4 August 1989, CAL entered into an agreement with the AJA whereby CAL acts in the collecting of licence fees for the use of works belonging to AJA members. However, to date neither CAL nor any person authorised to act on its behalf has entered into any licence with Jeffress for the reproduction of works of the applicants.

5. Each of the applicants apprehends that there has been in the past and, unless action is taken, there will be in the future, infringement of the copyright of the applicants in literary works, by reason of the conduct by Jeffress of its "media monitoring" services. The Act provides various defences to copyright infringement but the applicants would hope to answer reliance upon any such defence by referring to what was decided in De Garis v Neville Jeffress Pidler Pty Ltd supra. That case involved, inter alia, the use of a book review by a freelance reviewer whose reviews from time to time were published in "The West Australian" newspaper. Beaumont J. held that the dealing by Jeffress with that work (a) was not something done for the purpose of research or study within the meaning of s. 40 of the Act, (b) could not be characterised as either "criticism" or "review" within the meaning s. 41, and (c) was neither for the purpose of reporting news nor fair within the meaning of s. 42 of the Act.

6. Jeffress offers two types of media monitoring service, the Comprehensive Service and the News Express Service. The evidence before me includes an account of the conduct at the premises of Jeffress of the "News Express Service". Readers sit at desks perusing various publications. They mark articles and cut them out from the publications. A label is then affixed to the cutting and upon the label is written a name of the publication from which the cutting came (or a code for the publication), the date of the publication and the name of the relevant subscriber or subscribers to the News Express Service. The cutting is then placed with the notations in a bin from which it is collected by another employee of Jeffress. That employee then sorts the materials that have been collected, and they are then filed in the filing cabinet, with a separate file for each subscriber. The files are located next to a bank of photocopying machines. Another employee then copies the contents of each file. Subscribers to the News Express Service receive copies on a daily basis. Each subscriber receives its copies by courier early in that morning of each day. The monitoring activities for the News Express Service begin at about 3 a.m. or 4 a.m. and are completed by about 9 a.m. on each day.

7. In this factual setting, as matters now stand, it is difficult for any particular one of the applicants to identify any particular act of copying by Jeffress with any particular work in which that applicant has copyright. The present application is an attempt to overcome that difficulty and, as the applicants see it, to enable the institution in this Court of a number of proceedings in respect of copyright infringement by Jeffress. Negotiations between CAL and Jeffress, for a licensing scheme which would embrace existing and future works of members of the AJA, to date have not been successful.

8. The difficulties of the applicants are increased by the nature of the literary works which they produce and of the use by Jeffress of which they complain. Jeffress is concerned to provide its subscribers with information that is current and much of what the various applicants write for newspapers, in particular, has a topical value which is quickly lost. Thus there may be no repetition of the use by Jeffress of any particular literary work, although the same author may then find his or her subsequent work is used by Jeffress as soon as it is published. Each literary work is a distinct item of incorporeal property and copyright litigation is concerned with the protection of particular works, not, in a global sense, with the present and future works of particular authors. The lack of a real threat of repeated use of any particular work of which use has already been made makes injunctive relief inappropriate in respect of such a work. And as counsel for the applicants put it, there must be difficulty in formulating orders to protect against infringement works of his clients which do not yet exist.

9. The present application is brought in an endeavour to find a way to meet these difficulties, or at least some of them. The application is brought pursuant to Order 15A of the Federal Court Rules ("the Rules"). In particular, Order 15A Rule 6 provides:

"6. Where -

(a) there is reasonable cause to believe that the

applicant has or may have the right to obtain relief

in the Court from a person whose description has been

ascertained;

(b) after making all reasonable inquiries, the applicant

has not sufficient information to enable a decision to

be made whether to commence a proceeding in the Court

to obtain that relief; and

(c) there is reasonable cause to believe that that person

has or is likely to have or has had or is likely to

have had possession of any document relating to the

question whether the applicant has the right to obtain

the relief and that inspection of the document by the

applicant would assist in making the decision -

the Court may order that that person shall make discovery to

the applicant of any document of the kind described in

paragraph (c)."

Each applicant contends that, within the meaning of this sub-rule, there is reasonable cause to believe that the applicant has or may have the right to obtain relief in this Court for copyright infringement against Jeffress, that the applicant has not sufficient information to enable a decision to be made as to whether to commence a proceeding to obtain that relief, and there is reasonable cause to believe that Jeffress has or is likely to have or has had or is likely to have had possession of documents relating to the question whether the applicant has the right to obtain the relief. Each applicant further contends that within the sense of Rule 6, inspection of documents in the possession of Jeffress would assist the applicant in making the relevant decision. An appropriate order for discovery is sought.

10. Rule 6 uses the expression "document". This is to be understood in the light of the definition of Order 1 Rule 4, by virtue of which, unless the contrary intention appears, "document" includes "any record of information, which is a document within the definition contained in s. 7A of the Evidence Act 1905". By dint of sub-s. 7A (1) of the Evidence Act 1905, the word "document" includes:

"(a) a book, plan, paper, parchment, film or other material on

which there is writing or printing, or on which there are

marks, symbols or perforations having a meaning for persons

qualified to interpret them;

(b) a disc, tape, paper, film or other device from which sounds

or images are capable of being reproduced; and

(c) any other record of information."

11. In argument on the present application, reference also was made to Order 15A Rule 12. This provides as follows:

"12. On an application under this Order the Court may also make

an order providing for any one or more of the following

matters:

(a) the inspection, measurement, photocopying,

preservation, custody and detention of property:

(i) which relates to the subject matter of the proceedings; or

(ii) as to which any question arises in the proceedings;

(b) (i) taking of samples;

(ii) observation;

(iii) carrying out of any experiment;

(iv) making, playing or screening of tape recordings and

films and other means of recording sight or sound;

(v) making and reproducing or displaying other

instrumental recordings and tracings;

with respect to any such property mentioned in paragraph (a)."

12. Order 15A was inserted in the Rules by Statutory Rule No. 54 of 1988. Rule 6 was construed by Burchett J. in Paxus Services Ltd v People Bank Pty Ltd [1990] FCA 500; (1990) 99 ALR 728. This was an unsuccessful application to set aside ex parte orders, analogous to an Anton Piller order, which had been made under Order 15A Rule 6. The applicant had feared that the respondents had taken confidential computer disc information from its computer base, and had placed it onto their computer records. Accordingly, the applicant had sought and obtained ex parte orders requiring the placing of certain floppy discs into an envelope to be sealed and given to the Court. The respondents complied with the orders and then applied, unsuccessfully, to discharge the ex parte orders.

13. His Honour held that Rule 6 is designed to enable an applicant to ascertain whether he has a case against the prospective respondent, in a situation where the present proof can rise no higher than the level described in Rule 6. In other words, as his Honour put it, the applicant may be authorised to "fish" in the old sense of that term. Upon the question of the proper approach to be taken in construing Rule 6, Burchett J. said, at 733:

"It would be unfortunate if a rule designed to amplify the court's

power to penetrate obscurities and uncertainties in the interests of

justice were to be weakened by restrictive and unnecessary glosses.

I think the rule is of a beneficial kind within the meaning of a

well known principle of interpretation, and should be given the

fullest scope its language will reasonably allow. The proper brake

on any excesses in its use is the discretion of the court, which is

required to be exercised in the particular circumstances of each

case. One guide for that discretion is provided by the reference in

r. 6 (b) to 'all reasonable inquiries', as to which see W.R. Pateman

Pty Ltd v Walker Corp Pty Ltd (1990) ATPR 41-1016 at 51,299."

14. In their application, the applicants seek orders for discovery of documents identified by reference to Schedule A to the application. In the course of the hearing, counsel for the applicants indicated that one of the paragraphs in Schedule A was no longer pressed, and that other paragraphs should be read with modifications. The position finally reached was that the applicants seek discovery (i) in respect of the period between 6 July 1990 and 30 October 1991, of invoices for the purchase of photocopying paper and records of maintenance of photocopying machinery, (ii) in respect of the same period, of invoices for the purchase of newspapers, magazines and similar periodicals by Jeffress and of the subscriber lists for its News Express Service and Comprehensive Service, (iii) of all documents contained in the subscriber files created on each day since 1 July 1991, and (iv) of any copy made by Jeffress since 1 July 1991 of any works written by any of the applicants and published in any newspaper, magazine or similar periodical under the by-line of that applicant, which copy is in the custody or power of Jeffress.

15. In addition to these four categories, the applicants sought further orders with effect for a future fixed period, and to operate in respect of (a) subscriber files created by Jeffress in that period and (b) copies made in that period by Jeffress of by-lined works written by any of the applicants. This latter form of relief was urged by the applicants to meet what they apprehended may be a deficiency in the documents presently available in relation to past activities of Jeffress. In response to a Notice to Produce, Jeffress produced no copies of any articles apparently written by any of the applicants and used by Jeffress in the course of its business of providing the Express News Service on 9 December 1991. No copies were produced although the evidence shows that on that day there were published in metropolitan daily newspapers in Brisbane, Perth and Canberra some 30 articles under the by-lines of applicants.

16. I accept the submission for the applicants that, upon the evidence, I should be satisfied that paras. (a) and (b) of Rule 6 apply. That is to say, there is reasonable cause to believe that each applicant may have the right to obtain relief against Jeffress for past infringement of copyright in literary works of that applicant but that, after making all reasonable inquiries, each applicant has insufficient information to enable a decision to be made whether to commence a proceeding in the Court to obtain that relief. The "relief" to which Rule 6 is refers includes, in a case such as the present, damages or an account of profits, and additional damages as described in sub-s. 115 (4) of the Act.

"115. (4) Where, in an action under this section:

(a) an infringement of copyright is established;

and

(b) the court is satisfied that it is proper to do

so, having regard to:

(i) the flagrancy of the infringement;

(ii) any benefit shown to have accrued to the

defendant by reason of the infringement; and

(iii) all other relevant matters;

the court may, in assessing damages for the

infringement, award such additional damages as it

considers appropriate in the circumstances."

"Relevant matters" to which the Court may have regard under this provision include the difficulty each applicant faces, in the circumstances I have described, in protecting that applicant's copyright and the likelihood that in addition to infringement of the copyright in the particular work the subject of a proceeding, there has been infringement of other copyrights of the applicant: Autodesk Australia Pty Limited v Cheung (1990) AIPC 90-665 at 36,226; Television Broadcasts Ltd v Tu [1990] FCA 411; (1990) 19 IPR 307 at 322. These "relevant matters" and documents going to them thus relate to the question whether an applicant has the right to relief for past infringement of any particular copyright.

18. Paragraph (c) of Rule 6 requires consideration of the four categories of document in respect of which the applicants seek discovery. In that regard, I accept the submission for the respondent that categories (i) and (ii) do not identify documents, the inspection of which by any applicant would be of assistance in making the decision whether to commence a proceeding in this Court to obtain relief for any particular copyright infringement. Category (i) is concerned with the purchase of photocopying paper and the maintenance of photocopying machinery, and category (ii) with the purchase of newspapers, magazines and similar periodicals by Jeffress. Category (ii) also includes the subscriber lists maintained by Jeffress for its News Express Service and Comprehensive Service. The number of such subscribers may be of importance in assisting an applicant to make a decision because it would indicate the scale of the activities of Jeffress. On the other hand, the subscriber lists themselves should not be discovered at this stage by use of Rule 6. The party against whom the applicants may have the right to obtain relief has been ascertained as Jeffress. Rule 6 does not contemplate the use of its procedures to assist in identifying other persons whose descriptions otherwise have not been ascertained.

19. Categories (iii) and (iv) are in a different position. Documents in those categories do, in my view, relate to the question of whether each applicant has the right to obtain relief and, further, inspection of the documents will assist in making that decision. It is said, for Jeffress, that it no longer has possession of any documents described in category (iv), though, of course, it did once have possession of them. Nevertheless, in my view, the applicants should have a proper response in an affidavit verifying discovery.

20. There remains the further orders sought by the applicants, with effect for a future fixed period. Counsel for Jeffress submits that, upon a plain reading, Rule 6 requires that the document in question exist at the time the Court makes an order in respect of it. He points to the absence in Order 15A of the special provision, in relation to discovery in a current proceeding, of Order 15 Rule 7A. This Rule provides that where a party has been required or ordered to give discovery, that party shall be under "a continuing obligation to discover any document not previously discovered and which would otherwise be necessary to comply with the requirement or order". Counsel also emphasises that before the copies were disseminated the applicants had made no application under Order 25 Rule 2 for an order for the preservation of property, being the copies made by Jeffress, of articles published under the by-lines of the applicants, for distribution by Jeffress to its subscribers; cf. Authors Workshop v Bileru Pty Ltd (1989) 88 ALR 211.

21. However, there remains for consideration the operation of Order 15A Rule 12, the text of which I have set out earlier in these reasons.

22. As I have indicated, a "relevant matter" to the availability of additional damages for past infringement of the literary work of an applicant would be the likelihood of there having been infringements by Jeffress of other works of that applicant. This likelihood would, in my view, properly be considered by having regard to the conduct of Jeffress not only before the particular infringement complained of in the proceeding, but thereafter, and at least up to the time of the institution of the infringement proceeding. The presence or otherwise of this likelihood is a question which arises in making the decision whether to commence the proceeding referred to in Rule 6.

23. The effect of Rule 12 is that on an application under Rule 6 the Court may also make an order providing for the inspection, photocopying, preservation, custody and detention of documents which relate to the subject matter of a contemplated proceeding to obtain relief, in this case, by way of additional damages under s. 115 (4) of the Act. Consistently with what Burchett J. said as to the proper construction of Rule 6, Rule 12 also should be construed by giving it the fullest scope its language will reasonably allow. In my view, Rule 12 is not limited so as to exclude the making of an order providing for the inspection, photocopying, preservation, custody and detention of documents not yet in existence at the date of the order but which, upon the evidence, it may reasonably be expected will shortly come into existence in the ordinary course of the conduct of a particular business or enterprise. What Burchett J. described as the "proper brake" on any excess in the use of a provision such as Rule 12 will be found in the present case by the requirement of provision by the applicants, in advance of the operation of the order under Rule 12, of proper security for the costs and expenses of the respondent in complying with the order.

24. Accordingly, the conclusions I have reached may be expressed as follows. Pursuant to Order 15A Rules 6 and 12, I would make orders for discovery to the applicants of documents contained in the subscriber files created by Jeffress on each day between 1 September 1991 and the date of the order, and also of any copies made by Jeffress in that period of any works written by any of the applicants and published in any newspaper, magazine or similar periodical under the by-line of that applicant, being a copy in the custody or power of Jeffress.

25. I would also make orders with respect to subscriber files and copies of by-lined works written by any of the applicants, in respect of a period to commence 7 days after the date of the orders and continuing for a period of 21 days thereafter. However, these further orders would only be made upon the provision by the applicants of suitable security, as I have indicated earlier in these reasons.

26. I will publish these reasons and stand the application over to a date early in February 1992 for the settling of the terms of the security and of the orders which will then be made. I will also then deal with the question of the costs of this application.