Sandy v Kiama Municipal Council

The legislation

1. The objects of the GIPA Act are contained in s 3: "3 Object of Act (1) In order to maintain and advance a system of responsible and representative democratic Government that is open, accountable, fair and effective, the object of this Act is to open government information to the public by: (a) authorising and encouraging the proactive public release of government information by agencies, and (b) giving members of the public an enforceable right to access government information, and (c) providing that access to government information is restricted only when there is an overriding public interest against disclosure. (2) It is the intention of Parliament: (a) that this Act be interpreted and applied so as to further the object of this Act, and (b) that the discretions conferred by this Act be exercised, as far as possible, so as to facilitate and encourage, promptly and at the lowest reasonable cost, access to government information."
2. Section 72 provides: "72 Forms of access (1) Access to government information in response to an access application may be provided in any of the following ways: (a) by providing a reasonable opportunity to inspect a record containing the information, (b) by providing a copy of a record containing the information, (c) by providing access to a record containing the information, together with such facilities as may be necessary to enable the information to be read, viewed or listened to (as appropriate to the kind of record concerned), (d) by providing a written transcript of the information in the case of information recorded in an audio record or recorded in shorthand or other encoded format. (2) The agency must provide access in the way requested by the applicant unless: (a) to do so would interfere unreasonably with the operations of the agency or would result in the agency incurring unreasonable additional costs, or (b) to do so would be detrimental to the proper preservation of the record, or (c) to do so would involve an infringement of copyright, or (d) there is an overriding public interest against disclosure of the information in the way requested by the applicant. Note. Decisions about how to provide access are reviewable under Part 5."
3. Section 73 provides: "73 Access to be unconditional (1) An agency is not entitled to impose any conditions on the use or disclosure of information when the agency provides access to the information in response to an access application. (2) A condition may be imposed as to how a right of access may be exercised (such as a condition that prevents an applicant making notes from or taking a copy of a record that is made available for inspection) but only to avoid there being an overriding public interest against disclosure of the information. (3) A condition may be imposed that access to medical or psychiatric information will only be provided to a medical practitioner nominated by the applicant and not to the applicant personally. Note. Access can also be made conditional on the payment of processing charges (s 64) and on the provision of evidence of identity or other personal factors relevant to the agency's decision to provide access (s 55)."
4. The Copyright Act 1968 (Cth) deals with copyright in works in Australia. Copyright subsists in original literary or artistic works. Section 31(1) provides: "Nature of copyright in original works (1) For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right: (a) in the case of a literary, dramatic or musical work, to do all or any of the following acts: (i) to reproduce the work in a material form; (ii) to publish the work; (iii) to perform the work in public; (iv) to communicate the work to the public; (vi) to make an adaptation of the work; (vii) to do, in relation to a work that is an adaptation of the first-mentioned work, any of the acts specified in relation to the first-mentioned work in subparagraphs (i) to (iv), inclusive; and (b) in the case of an artistic work, to do all or any of the following acts: (i) to reproduce the work in a material form; (ii) to publish the work; (iii) to communicate the work to the public; and (c) in the case of a literary work (other than a computer program) or a musical or dramatic work, to enter into a commercial rental arrangement in respect of the work reproduced in a sound recording; and (d) in the case of a computer program, to enter into a commercial rental arrangement in respect of the program."
5. Section 10 defines "artistic work' and "literary work" as follows: "artistic work" means: (a) a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not; (b) a building or a model of a building, whether the building or model is of artistic quality or not; or (c) a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b); but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989 . "literary work" includes: (a) a table, or compilation, expressed in words, figures or symbols; and (b) a computer program or compilation of computer programs."
6. Section 32 provides: "Original works in which copyright subsists (1) Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author: (a) was a qualified person at the time when the work was made; or (b) if the making of the work extended over a period--was a qualified person for a substantial part of that period. (2) Subject to this Act, where an original literary, dramatic, musical or artistic work has been published: (a) copyright subsists in the work; or (b) if copyright in the work subsisted immediately before its first publication--copyright continues to subsist in the work; if, but only if: (c) the first publication of the work took place in Australia; (d) the author of the work was a qualified person at the time when the work was first published; or (e) the author died before that time but was a qualified person immediately before his or her death. (3) Notwithstanding the last preceding subsection but subject to the remaining provisions of this Act, copyright subsists in: (a) an original artistic work that is a building situated in Australia; or (b) an original artistic work that is attached to, or forms part of, such a building. (4) In this section, qualified person means an Australian citizen or a person resident in Australia."
7. Section 36 provides: "Infringement by doing acts comprised in the copyright (1) Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright. (1A) In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following: (a) the extent (if any) of the person's power to prevent the doing of the act concerned; (b) the nature of any relationship existing between the person and the person who did the act concerned; (c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice. (2) The next three succeeding sections do not affect the generality of this section."
8. Section 43 provides: "Reproduction for purpose of judicial proceedings or professional advice (1) The copyright in a literary, dramatic, musical or artistic work is not infringed by anything done for the purposes of a judicial proceeding or of a report of a judicial proceeding. (2) A fair dealing with a literary, dramatic, musical or artistic work does not constitute an infringement of the copyright in the work if it is for the purpose of the giving of professional advice by: (a) a legal practitioner; or (b) a person registered as a patent attorney under the Patents Act 1990; or (c) a person registered as a trade marks attorney under the Trade Marks Act 1995."
9. Section 10 of the Environmental Planning and Assessment Act 1979 provides: "10.14 Copyright in documents used for purposes of this Act - indemnification (cf previous s 158A) (1) A relevant person who is not entitled to copyright in a document that is part of a planning matter is taken to have indemnified all persons using the document for the purposes of this Act against any claim or action in respect of a breach of copyright in the document. (1A) The regulations may require a relevant person who is entitled to copyright in a document that is part of a planning matter to give (in the planning matter or otherwise) a licence to the State or a council to use the copyright material for the purposes of this Act. The regulations may also require a relevant person who is not so entitled to that copyright to give a warranty (in the planning matter or otherwise) that the relevant person has a licence to so use the copyright material from the person who is entitled to copyright in any such document. (2) For the purposes of this section: (a) a development application or an application for a complying development certificate (or an application to modify a development consent) is a planning matter, and the applicant is the relevant person, and (b) an application for approval to carry out State significant infrastructure (or an application to modify an approval of State significant infrastructure) is a planning matter, and the applicant is the relevant person, and (c) a Part 3A project or concept plan application within the meaning of Schedule 6A (or a request to modify an approval or concept plan under Part 3A), and any environmental assessment or report under Part 3A, is a planning matter, and the applicant is the relevant person, and (d) an environmental impact statement under Division 5.1 or 5.2 (including any preferred infrastructure report under Division 5.2) is a planning matter, and the proponent under Division 5.1 or 5.2 is the relevant person, and (e) a planning proposal under Part 3 is a planning matter, and the person preparing the proposal is the relevant person, and (f) a planning agreement referred to in section 7.4 is a planning matter, and the developer under the agreement is the relevant person, and (g) a matter or thing under this Act that is declared by the regulations for the purposes of this section is a planning matter, and the person declared by the regulations is the relevant person in respect of that matter or thing. (3) For the purposes of this section, a document is part of a planning matter if it forms part of or accompanies the planning matter, or is subsequently submitted by the relevant person in support of the planning matter or is exhibited or made public in accordance with a requirement made by or under this Act in relation to the planning matter. (4) The regulations may limit the operation of this section. (4A) This section extends to planning matters in paper or electronic form. (5) This section extends to a planning matter that was made or submitted before the commencement of this section."
10. Section 83 of the Local Government Act 1993 provides in relation to plans and specifications accompanying an application for approval to the Council : "83 Ownership and use of plans and specifications One copy of any plans and specifications accompanying an application becomes the property of the council, but must not be used for any purpose other than giving effect to the provisions of this Act or any other Act. Note. This section does not prevent the use of the plans and specifications for other purposes with the consent of the applicant and with any other necessary consent."

The positions of the parties

1. The applicant wants to be given copies of the information in question. He does not want to be limited to viewing the information. His reason is that the documents are very detailed and his purpose in examining them is to obtain legal advice on whether the development is "designated development" for the purpose of deciding whether or not to commence legal proceedings regarding the development. He stated that this was not practicable if he could not provide his lawyers with copies of the information.
2. He did not accept that the information which was the subject of the review was subject to copyright. Specifically he did not accept that they were original literary or artistic works within the meaning of the Copyright Act. He submitted that the respondent must satisfy the Tribunal of this, which included making findings that the works were original and that their authors were "qualified persons" within the meaning of the Copyright Act. He also said the respondent should establish: 1. That the owner of the copyright had not granted an express or implied licence to the respondent allowing copying by the applicant; 2. That copying the documents or allowing them to be copied would be 'reproduction' or authorisation of reproduction under ss 21 and 36(1A) of the Copyright Act; and 3. That copying the documents did not fall into any of the exceptions to infringement in part 3 Division 3 of the Copyright Act.
3. If the information was subject to copyright, the applicant: 1. queried whether the copyright belonged to the author or his or her employer; and 2. relied on s 43 of the Copyright Act.
4. The applicant stated he had written to the persons identified as the owners of the copyright but had not received the authorisation needed
5. The respondent submitted that the Tribunal should find, on the balance of probabilities, that the information was subject to copyright and that none of the exceptions applied.
6. The applicant argues that the respondent has the onus of justifying its decision (s 105(1) of the GIPA Act) and must therefore prove to the required standard every element required for copyright to exist, and disprove every exemption to the same standard. The respondent submits that with regard to the elements, the Tribunal should apply the balance of probabilities, and it is not required to exclude every possibility which might exist with regard to the exceptions.

Whether the information comprises original literary or artistic works

1. The information consists of reports and plans. The definition of "artistic work" includes "drawings" and "drawing" is defined to include a diagram, map, chart or plan (s 10(1) Copyright Act). A literary work need not have literary merit, but will provide either information, instruction or literary enjoyment (Hollinrake v Truswell (1894) 3 Ch 420 Davey LJ). A literary work can include a compilation or table in words, figures or symbols (s 10(1)).
2. For copyright to subsist in a literary or artistic work, it must be original (Copyright Act s 32(1) and (2)). The concept of "originality" is not defined in the Act. The law on this topic indicates that "originality" means that the creation or production of the work required some independent intellectual effort, but novelty or inventiveness is not required. The work must have originated "with an author or joint authors from some independent intellectual effort" (IceTV Pty Limited v Nine Network Australia Pty Limited (2009) AIPC 92-335 per French CJ, Crennan and Kiefel JJ). The work must originate with the author and be more than a copy of other material, as stated by Dixon CJ in Victoria Park Racing and Recreation Grounds Co Ltd v Taylor & Ors (1937) 58 CLR 479 at 511. However an artistic work based on another work can attract its own distinct copyright if a sufficient degree of labour and skill has been expended by the author to give the work "some quality or character which the same material did not possess, differentiating the product from the raw material" (Macmillan & Co Ltd v K & J Cooper (1923) 93 LJPC 113 at 118 per Lord Atkinson).
3. The applicant contends that there is no evidence that the works are original and not mere copies. I have outlined above that the works need not be totally new in order to be original, but some independent effort must have been expended to differentiate it. There is evidence of such independent effort in the works themselves. The reports state who prepared the reports and the methodology used in gathering information and in preparing them, such as site visits, test results and analysis. Some of the plans attribute the work to an individual. In addition, as the respondent pointed out, the likelihood that the works are mere copies, when the evidence is that they were brought into existence to address aspects of a particular development lodged with the respondent, is remote. I am satisfied that the works are original.
4. Secondly, the applicant contends that there is no evidence of authorship or that the author was a "qualified person" within the meaning of s 32 of the Copyright Act. It should be noted that the owner of the copyright is not necessarily the same as the author of the copyright. The author is the owner under s 35 subject to the other provisions of that section. "Qualified" person, for relevant purposes, is an Australian citizen or a person resident in Australia ( s 32(4)).
5. The respondent has tendered a list of the companies or businesses, to which the reports and/or plans are attributed. In each case their business address is in Australia. In addition the addresses of the authors and/or owners on the reports and drawings are located within Australia. The content of the reports and drawings also indicates that they were created in Australia by persons in Australia. While there is no evidence of their citizenship or residency, I find on the available evidence that it is more probable than not that they were resident in Australia.
6. I conclude that the information comprises original literary and artistic works within the meaning of the Copyright Act and is therefore subject to copyright protection.

Whether reproducing the information for the applicant would infringe copyright

1. Copyright is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of any act comprised in the copyright. Reproducing a work in a material form is an act comprised in the copyright. Therefore, reproducing or copying the work, or authorising such an act, will infringe the copyright unless an exception applies. The Council would authorise such an act if it gave express or implied permission to the applicant to reproduce the information, including providing copying facilities (University of NSW v Moorehouse (1974) 133 CLR 1).
2. Contrary to the applicant's submission, s 21 is not an exhaustive definition of what comprises reproduction. The question is whether the work would be reproduced in a material form.

Whether the owner of the copyright granted an express or implied licence to allow copying by the applicant

1. The applicant queried whether the copyright belonged to the author or his or her employer. In my view this need not be determined. If the information is subject to copyright, the issue for determination by this Tribunal is whether the applicant may receive access in the form he wishes.
2. The applicant says that the respondent must establish that the owner of the copyright has not granted an express or implied licence. The respondent says no such licence has been granted. The applicant's evidence is that he has approached those businesses associated with the information, seeking permission to reproduce the information but no permission has been forthcoming. This does not support his argument that a licence may have been granted.
3. The applicant submits that a licence is necessary to be implied because in order for the development application to be processed, third parties would need to reproduce the works. However s 10 of the Environmental Planning and Assessment Act is a legislative provision which deals with this circumstance and enables a licence to be given by the copyright owner for the purposes of that Act. It does not however enable a licence for the purposes of the GIPA Act.
4. The applicant refers to s 83 of the Local Government Act which provides in relation to plans and specifications accompanying an application for approval to the Council, that one copy becomes the property of the Council, but must not be used for any purposes other than giving effect to the provisions of the Local Government Act or any other Act.
5. Property rights do not of themselves comprise copyright and s 83 does not purport to assign copyright so this provision does not assist the applicant. In the absence of any evidence in relation to such a licence existing, or facts from which it could be implied, this argument cannot succeed.

Whether copying the documents falls into any of the exceptions to infringement in the Copyright Act

1. The Tribunal's task is to determine whether to provide access to the information in the reports in the way requested by the applicants "would involve an infringement of copyright." The only provisions which could apply to the circumstances, and which were referred to by the applicant, are s 41 (fair dealing for the purposes of criticism or review) and s 43 (reproduction for purpose of judicial proceedings or professional advice).
2. Section 41 provides: "A fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a literary, dramatic or musical work, does not constitute an infringement of the copyright in the work if it is for the purpose of criticism or review, whether of that work or of another work, and a sufficient acknowledgement of the work is made."
3. In Amos v Central Coast Council [2018] NSWCATAD 101 Senior Member Lucy considered a similar submission. Senior Member Lucy referred to Beaumont J's comments in De Garis v Neville Jeffress Pidler Pty Ltd (1990) 37 FCR 99 at 107 where his Honour referred to the Macquarie Dictionary definition of "criticism" as including: "1. the act or art of analysing and judging the quality of a literary or artistic work, etc: literary criticism. 2. the act of passing judgment as to the merits of something... 4. a critical comment, article or essay; a critique." His Honour said that, in his opinion, "'criticism' in the context of s 41 is used in these senses" (at 107).
4. In the present case the applicant's stated purpose is to obtain legal advice on the information and determine whether to commence legal proceedings. This is not consistent with wishing to comment on their quality or merits.
5. Moreover, as identified by the Senior Member in Amos, it is the Council's purpose in copying the documents which is relevant, not the applicants' purpose. The Council's purpose in copying the reports for the applicants, would be to fulfil its obligations under the GIPA Act, which also does not come within s 41.
6. Section 43(1) provides that copyright is not infringed by anything done for the purposes of a judicial proceeding or of a report of a judicial proceeding. There is no judicial proceeding currently in progress. The applicant stated that he wished to obtain legal advice to determine whether to commence Class 4 legal proceedings in the Land and Environment Court.
7. The applicant relied on the decision of Young AJA in Demlakian Engineers Pty Ltd v The Owners of Strata Plan 80453 [2014] NSWSC 401. In that case his Honour was considering an application for an injunction to restrain use of a report prepared by consulting engineers, on the grounds that it breached copyright. His Honour said: "121 A defence was also raised under s 43 of the Copyright Act, 1966 (Cth). This section provides (ss 1) that it is not a breach of copyright to deploy someone else's copyright material for the purpose of a judicial proceeding and (ss 2) that a fair dealing with a work does not does not constitute infringement of copyright if it is done in order to obtain professional advice from a legal practitioner, a patent attorney or a trade marks attorney. Sub-section (2) cannot be relevant in this case as the alleged breach does not relate to any dealing with the copyright material by any of the classes of person named in the section, but rather to the use of the material by another engineering consultancy firm and/or the insurer Vero. 122 This means that the only possible defence under s 43 must arise out of sub-section 1. Strangely, neither counsels' research nor my own have discovered any authoritative guidance as to the scope of this sub-section. In particular what there is suggests that sub-section (1) protects the parties to proceedings rather than the court itself, as there is no clear intention anywhere else in the Act to interfere with the doctrine of judicial immunity, see eg Ogawa v Spender (2006) 152 FCR 228 [12-17]. 123 It is not strictly necessary to decide this issue, but, prima facie it seems that the conduct of the plaintiff would enjoy the protection of sub-section 1. In passing the document onto their lawyer, who in turn passed it onto Vero and the consultancy firm who prepared the second report, the plaintiff was taking steps to obtain an expert report to be used as part of its case in a judicial proceeding. This would seem to fall well inside the broad terms of sub-section 1 which makes permissible "anything done for the purpose of a judicial proceeding". 124 However, for the reasons set out earlier, clause 7 not having any operation and the defendant having a general law licence to use the plaintiff's report for the purpose which both parties had in mind, there is no breach of copyright."
8. His Honour's comments can be regarded as obiter dicta as he did not decide the case on this issue and his remarks were apparently addressing a prima facie case which he had not fully considered. His Honour also referred to the case of Ogawa v Spender. In that case, the Full Court of the Federal Court was concerned with the relationship of s 43(1) to the principal of judicial immunity. The Full Court held that the sub-section "affords protection to those who reproduce works for the purposes of a judicial proceeding" and was directed to "persons, including litigants and practitioners, who use copyright material in the course of proceedings in the court".
9. In this case, no judicial proceedings exist and they may never exist as the applicant has not determined whether to commence them. In my view, the sub-section does not apply to the current case.
10. Section 43(2) provides fair dealing with a literary, dramatic, musical or artistic work does not constitute an infringement of the copyright in the work if it is for the purpose of the giving of professional advice by a legal practitioner.
11. In Volunteer Eco Students Abroad Pty Limited v Reach Out Volunteers Pty Limited [2013] FCA 731, Griffiths J held that the provision applied to dealings done for the propose of giving legal advice and did not extend to dealings for the purpose of seeking legal advice ( at [315]). "In its terms, s 43(2)(a) is directed to a dealing in a literary work for the purpose of the giving of professional advice by a legal practitioner. There is no equivalent provision in Part III of the Copyright Act to s 104 (which appears in Part IV), the effect of which is to create a fair dealing defence where an allegedly infringing act is done for the purpose of seeking professional advice from a legal practitioner."
12. Accordingly, the applicant cannot rely on s 43(2).

Conclusion

1. For the foregoing reasons it is clear that the respondent would infringe copyright if it reproduced, or authorised the applicant to reproduce, the information in question. Therefore the decision under review should be affirmed.

Order 1. The decision under review is affirmed.

I hereby certify that this is a true and accurate record of the reasons for decision of the Civil and Administrative Tribunal of New South Wales. Registrar DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 28 March 2019