It may be noted that fourteen of the re-broadcasts occurred within one week of the Nine broadcasts to which they respectively referred.
It is convenient to adopt in these Reasons for Judgment the S/C descriptions of such Nine excerpts so re-broadcast by Ten as the "Panel Segments".
The legislative scheme for infringement of television broadcast copyright
4 Nine's case as pleaded in the S/C was to the effect that each of the Panel Segments constituted the re-broadcast by Ten without the license of Nine of a substantial part of each of such Nine television programs or episodes, and thus an infringement of Nine's copyright in such television broadcasts, the expression "substantial part" carrying the critical statutory connotation referred to in s 14(1)(a) of the Act reproduced in [8] below. Division 6 of Part IV of the Copyright Act 1968 (Cth) governs such cause of action and is headed "Infringement of copyright in subject-matter other than works". The expression "work" is defined by s 10(1) of the Act to mean "a literary, dramatic, musical or artistic work", the copyright in relation thereto being governed by Part III of the Act. Copyright in "subject matter other than works" comprises "television broadcasts", "sound broadcasts", "sound recordings", "cinematograph films" and "published edition of literary, dramatic, musical or artistic works", and is governed by Part IV of the Act, and the same is in addition to and independent of any copyright in the literary dramatic, musical or artistic work from which such subject matters may have been derived (see s 113 of the Act). A distinguishing feature of the Part III "works" is the subsistence of originality in the expression of the same, and no pre-condition of originality is required for qualification as Part IV "subject matters". Such pre-condition of originality was the requirement of the common law of copyright which preceded the first British Copyright Act of 1911, being legislation which was wholly adopted by way of schedule to the first Australian Copyright Act of 1912.
5 By s 101 of Division 6 of Part IV, it is provided, so far as is material, as follows:
"101 Infringement by doing acts comprised in copyright
(1) Subject to this Act, a copyright subsisting by virtue of this Part 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 authorises the doing in Australia of, any act comprised in the copyright.
(2) The next two succeeding sections do not affect the generality of the last preceding subsection.
…
(4) Subsection (1) applies in relation to an act done in relation to a television broadcast or a sound broadcast whether the act is done by the reception of the broadcast or by making use of any article or thing in which the visual images and sounds comprised in the broadcast have been embodied."
The expressions "television broadcast" and "sound broadcast" are respectively defined by s 10(1) of the Act as follows:
" 'television broadcast' means visual images broadcast by way of television, together with any sounds broadcast for reception along with those images."
" 'sound broadcast' means sounds broadcast otherwise than as part of a television broadcast."
6 The expression "broadcast" is defined by s 10(1) to mean "transmit by wireless telegraphy to the public", and "wireless telegraphy" is defined by s 10(1) to mean "the emitting or receiving, otherwise than over a path that is provided by material substance, of electro-magnetic energy". The identity of a television or sound broadcaster is to be ascertained in accordance with s 22(5) of the Act as follows:
"For the purposes of this Act, a television broadcast or sound broadcast shall… be deemed to have been made by the person by whom, at the time when, and from the place from which, the visual images or sounds constituting the broadcast, or both, as the case may be, were broadcast."
Television broadcast copyright is attributable by s 91 as follows:
"91 Subject to this Act, a copyright subsists:
…
(b) in a television broadcast (other than a broadcast transmitted for a fee payable to the person who made the broadcast) made from a place in Australia under the authority of:
(i) a license allocated by the Australian Broadcasting Authority under the Broadcasting Services Act 1992;
…"
No issue arises of course as to the holding of such a license by Nine. Section 91(b)(i) should be read with s 99(b) as follows:
"99 Subject to Parts VII and X:
…
(b) a person who is or has been a holder of a license allocated by the Australian Broadcasting Authority under the Broadcasting Services Act 1992… is the owner of any copyright subsisting in a television broadcast… made by that person;
…"
7 The nature of copyright in television and sound broadcasts is defined in s 87 of the Act as follows:
"For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a television broadcast or sound broadcast, is the exclusive right:
(a) in the case of a television broadcast in so far as it consists of visual images - to make a cinematograph film of the broadcast, or a copy of such a film;
(b) in the case of a sound broadcast, or of a television broadcast in so far as it consists of sounds - to make a sound recording of the broadcast, or a copy of such a sound recording; and
(c) in the case of a television broadcast or of a sound broadcast - to re-broadcast it."
The subject proceedings have been conducted before me solely on the footing of infringement within s 87(c) above, that is to say, breach of copyright by way of re-broadcasting; but Nine foreshadowed an additional or alternative cause of action for infringement based upon s 87(a) of the Act in the circumstances described in [11] below. Section 95 stipulates a duration of copyright in a television broadcast or a sound broadcast of fifty years after the expiration of the calendar year in which the broadcast was made. The reference in s 87(a) above to making a "cinematograph film of the broadcast, or a copy of such film" picks up the following provisions of s 25(4) of the Act:
"In this Act
(a) a reference to a cinematograph film of a television broadcast shall be read as including a reference to a cinematograph film, or a photograph, of any of the visual images comprised in the broadcast; and
(b) a reference to a copy of a cinematograph film of a television broadcast shall be read as including a reference to a copy of a cinematograph film, or a reproduction of a photograph, of any of those images."
The issues arising
8 Nine's complaints of re-broadcasting by Ten in breach of s 87(c) of the Act concern excerpts of varying duration from each of Nine's programs or episodes listed in [3] above, each of which excerpts is said by Nine to comprise a "substantial part" of the subject matter of Nine's television broadcast copyright arising under s 91(b) above. The statutory expression "substantial part", as already mentioned at the commencement of [4] above, is contained in the critical definition provisions of s 14(1)(a) of the Act, which read as follows:
"14(1)In this Act, unless the contrary intention appears:
(a) a reference to the doing of an act in relation to a work or other subject-matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject-matter…"
The contention as to "substantial part" in relation to a television broadcast, which I have from time to time described by way of abbreviation in terms of "substantiality", is the essential issue arising in Nine's case in chief. Substantiality of part of a copyright work was a concept originally developed by the common law of copyright. It is the linchpin for determination of Nine's contention that Ten has infringed its television broadcast copyrights pursuant to s 101 above by re-broadcasting such excerpts in contravention of s 87(c) above.
9 Ten contends that if the statutory notion of "substantial part" or substantiality is satisfied by Nine in the circumstances of its re-broadcasting of any of the Panel Segments, which Ten denies, then certain of such Panel Segments constituted "a fair dealing… for the purpose of criticism or review" within s 103A of the Act, the full text whereof reads as follows:
"103AFair dealing for purpose of criticism or review
A fair dealing with an audio-visual item does not constitute an infringement of the copyright in the item or in any work or other audio-visual item included in the item if it is for the purpose of criticism or review, whether of the first-mentioned audio-visual item, another audio-visual item or a work, and a sufficient acknowledgment of the first-mentioned audio-visual item is made."
By s 100A of the Act, an "audio-visual item" is defined to mean inter alia a television broadcast. Thus if Nine succeeds on the substantiality issue in chief, it is open to Ten to establish the defence of fair dealing for the purpose of criticism or review.
The above expression "sufficient acknowledgment" contained in s 103A is defined by s 10(1), but only in relation to a "work". As already indicated in [4] above, "work" is defined by s 10(1) of the Act to mean "a literary, dramatic, musical or artistic work", that is to say, a work of originality in expression recognised by the common law of copyright to which Part III of the Act applies. The definition makes no reference to an audio-visual item and thus for instance to a television broadcast or any other "subject matter" within Part IV. What therefore constitutes a "sufficient acknowledgment" in relation to a television broadcast must fall to be determined by the circumstances of each "fair dealing… for the purpose of criticism or review".
10 Apart from the defence of fair dealing for the purpose of criticism or review, Ten contends that certain of the Panel Segments involved the reporting of news on the part of Ten by means of broadcasting, those Panel Segments having constituted "a fair dealing… for the purpose of, or [was] "associated with, the reporting of news" within s 103B(1)(b) of the Act, the text whereof reading as follows:
"103B(1) A fair dealing with an audio-visual item does not constitute an infringement of the copyright in the item or in any work or other audio-visual item included in the item if:
…
(b) it is for the purpose of, or is associated with, the reporting of news by means of broadcasting or in a cinematograph film."
Such statutory expression "fair dealing" appearing in both ss 103A and 103B(1) is not defined by the Act. It will be noticed that the requirement for "a sufficient acknowledgment", stipulated by s 103A, is absent from s 103B(1)(b). I am informed by Ten however that it is customary in the industry to attribute similar "sufficient acknowledgment" provisions to s 103(1)(b) as exist in s 103B(1)(a).
11 On the third day of the hearing, Nine sought to further amend the S/C (in the already amended form referred to in [1] above) by way of addition of the following paragraphs thereto:
"7A. Shortly prior to each such broadcast the Respondent made or authorised the making of a cinematograph film of the said footage from the Nine Programs for the purposes of each such broadcast.
8A. Each cinematograph film referred to in paragraph 7A constituted the making of a cinematograph film of a substantial part of each of the broadcasts from which the said footage was derived.
10A. Each making or authorising of the making of the cinematograph films referred to in paragraph 7A above constituted an infringement of copyright in the Nine Programs from which it was acquired.
11A. Unless restrained, the Respondent will continue to make or authorise the making of cinematograph films of substantial parts of the Nine Programs without the licence of the Applicants."
These amendments were designed to take advantage of the provisions of s 87(a) extracted in [7] above, by way of an alternative attack to that already advanced under s 87(c). At the conclusion of the evidence on the following day, Ten's opposition to the amendment was resolved by way of mutually agreed compromise, and the terms of such resolution became reflected in the document reproduced below (omitting formal parts):
"1. Grant leave to the Applicants to file in Court the Second Further Amended Statement of Claim which was handed up to the Court on 16 November 2000.
2. Order pursuant to Order 29 Rule 2 that the issues referred to in paragraphs 9A, 10A, and 11A of the Second Further Amended Statement of Claim be heard separately from and after the present hearing, if the need arises.
3. Reserve any questions of costs relating to the amendment."
Consequently this judgment does not address the issues raised above in relation to s 87(1)(a).
Substantiality - the doctrinal development prior to and including the period of time during which television broadcast copyright has subsisted.
12 As foreshadowed in [8] above, the first issue of statutory construction arising in the proceedings concerns the operation of the s 14(1)(a) notion of "substantial part of the… subject matter" in the context of an alleged infringement of a television broadcast by way of re-broadcasting of the same. The other issues of statutory construction, concerning fair dealing for purposes of criticism or review or for purposes of or associated with the reporting of news, do not arise if Ten can establish the absence of any taking of a "substantial part" of Nine's programs or episodes. As I have already mentioned, such notion of substantiality had its origins in the common law of copyright, prior to the introduction of the Copyright Act 1911 (UK), and was developed with emphasis more on the quality or value of what was taken by the alleged infringer from the protected work than on the quantity of what was taken. An example of the common law description of the concept is contained in the following passage in Bromwell v Halcombe (1836) 3 My & Cr 737 at 738 per Lord Cottenham:
"When it comes to a question of quantity, it must be very vague, One writer might take all the vital part of another's book, though it might be but a small proportion of the book in quantity. It is not only quantity but value that is always looked at. It is useless to refer to any particular cases as to quantity."
This passage is extracted in the Australian textbook "The Law of Intellectual Property, Copyright, Designs and Confidential Information" (2nd ed) LBC 1999 by Staniforth Ricketson, in the context of his discussion of substantiality, as a prelude to his discussion of a number of authorities referred to in [13-16] below. As the authorities thereafter cited by the author demonstrate, the expressions "value" or "quality" have been further judicially paraphrased in terms of the essentiality, vitality, or materiality of the part or parts of the works which have been copied or taken by the infringer. Virtually all of such authorities have related however to copyrights based upon the originality of works, so that the extent to which such principles may apply or extend to Part IV copyright subject matters, and in particular television broadcasts, presents considerable conceptual difficulty.
13 Thus by way of illustration in relation to the dramatic work of the complainant involved in Rees v Melville [1911-1916] MacG Cop Cas 168 (CA) at 174, the touchstone of substantiality was expressed in terms of the "dramatic value and importance" of the part taken, "… even although the portion [taken] might in fact be small and the actual language not copied", and in relation to the musical work of the complainant involved in Hawkes & Son (London) Ltd v Paramount Film Service Ltd [1934] 1 Ch 593 (CA), a substantial part was said to have been represented by only a relatively few bars containing nevertheless the "essential air" of the work. Another illustration is the well-known case in England of Kipling v Genatosan Ltd [1917-1923] MacG Cop Cas 203 (Ch), where literary copyright was infringed by the use of four lines from a serious poem which constituted "the essential part of the crescendo" of Kipling's "If", such four lines having been used in an advertisement for the infringer's medicinal preparation. More recently in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465, which related to betting coupons comprising sheets of paper listing forthcoming football matches, and which coupons were found to constitute the reproduction of a substantial part of the original literary work in the nature of tables or compilations, Lord Evershed referred, at 473, to the statutory notion of substantiality in terms of the "substantial significance of what is taken", whilst Lord Pearce said at 481 "Whether a part is substantial must be decided by its quality rather than its quantity". More recently, in the application of the principles as to substantiality enunciated in Ladbroke, the Court of Appeal in England, in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] Fleet Street Reports 121 at 130, referred to an extract from Professor Cornish's work Intellectual Property, 3rd ed, Sweet & Maxwell 1996 para 11-06 containing the imponderable observation "The answer in a particular case can only lie in the Tribunal's sense of fairness".
14 In more recent times in Australia, the statutory concept of substantiality has fallen for consideration in the context of computer programs, whose copyright protection falls nevertheless within Part III of the Act as a literary work. Judicial emphasis has been placed upon the extent of the "importance" of the taken portion of the complainant's computer program in relation to such work as a whole: see Autodesk Inc v Dyason (No. 2) (1992) 176 CLR 300 at 305 (per Mason CJ), and the subsequent Full Federal Court decision in Accounting Systems 2000 (Developments) Pty Ltd v CCH Australia Ltd (1993) 27 IPR 133 at 147 and 172 (per Lockhart and Gummow JJ). As to the former case reference, after first referring to Lord Pearce's emphasis in Ladbroke upon quality rather than quantity, Mason CJ at 305 said as follows:
"As this statement makes clear, in determining whether the quality of what is taken makes it a 'substantial part' of the copyright work, it is important to inquire into the importance which the taken portion bears in relation to the work as a whole: is it an 'essential' or 'material' part of the work… However, in the context of copyright law, where emphasis is to be placed upon the 'originality' of the work's expression, the essential or material features of a work should be ascertained by considering the originality of the part allegedly taken."
Whilst the judgment of Mason CJ in Autodesk was in the minority, the same (inclusive of the passage just cited) has been subsequently preferred by all members of the High Court in the subsequent computer copyright case of Data Access Corporation v Powerflex Services Pty Limited (1999) 166 ALR 228 at [83-84], the area of disagreement by Gaudron J at [127-130] being unrelated to principles concerning substantiality.
15 The decision of the Full Federal Court in Nationwide News Pty Ltd v Copyright Agency Ltd (1996) 65 FCR 399 however provides more assistance than perhaps any other in the context of the present proceedings, since the copyright works comprised so-called published edition of literary works within s 88 and thus Part IV of the Act, and where thus originality of expression is not involved in establishment of the copyright so protected. In determining whether the conduct of certain educational institutions in reproducing portions of newspapers and magazines infringed the publishers' published edition copyright conferred by s 88 of the Act, by reason of such reproduction constituting a "substantial part" of such Part IV subject matter within s 14(1)(a), Sackville J (with whose judgment Jenkinson and Burchett JJ wholly agreed), introduced his appraisal of the issue of alleged breach at 418-419, under the sub-heading "the test of substantiality", by referring to the passage in the speech of Lord Pearce in Ladbroke identified in [13] above, and to what was said by Mason CJ in Autodesk (see [14] above), in the following way:
"It has been said that the phrase "substantial part" as used in s 14(1) of the Act refers to the quality of what is taken, rather than the quantity: Autodesk Inc v Dyason (No. 2) (1993) 176 CLR 300 at 305, per Mason CJ. It has also been said that the reproduction of a part of a work which has no originality will not normally be a substantial part of the copyright and therefore will not be protected: Ladbroke v William Hill at 293; 481, per Lord Pearce. As Mason CJ observed, in determining whether the quality of what is taken makes it a substantial part of the work, the importance of what is taken should be considered in relation to the work as a whole and, for that purpose, it is appropriate to consider whether it is an "essential" or "material" part of the work: Autodesk (No. 2) at 305."
Thereafter Sackville J applied the statutory notion of substantiality to Part IV copyright in the form of published edition of works upon the following principles:
"The general principle of copyright law is that copyright does not extend to ideas, but only to the expression of those ideas. But in the case of a published edition copyright, what is protected is not a particular collocation of words or musical notes, or a photographic representation. Published edition copyright protects the presentation embodied in the edition. This form of copyright, as the legislative history shows, protects such matters as typographical layout. However, it also protects other aspects of presentation, such as juxtaposition of text and photographs and use of headlines. In the present case, a considerable volume of evidence was adduced on the importance of layout and presentation to magazines and newspapers. In modern times, the work of typesetters is shared among subeditors, layout artists or designers and production editors. It is clear that layout is often extremely important in attracting readers to read a particular story or magazine. It is also clear that the choice of layout, type-size, headings and colour is a skilled operation.
Published edition copyright thus protects the product of skill, labour and judgment in presenting material in an edition. …
In relation to a published edition, the quality of what is taken must be assessed by reference to the interest protected by the copyright. That interest, as has been seen, is in protecting the presentation and layout of the edition, as distinct from the particular words or images published in the edition. The quantity of the material reproduced, assessed by reference to the whole of the published edition, is relevant in determining whether what has been taken is a substantial part of the edition. But since it is the quality of the material taken that is the key issue, the quantity is not the only, nor necessarily the principal, criterion."
Subsequently at 420, his Honour explained the significance of what he encapsulated in the last paragraph above in terms of "the quality of what is taken…". I extract such explanation below:
"Nor is there a case in which there has been a significant interference with the interest protected by published edition copyright. This is not a situation, for example, where a competing publisher has utilised a distinctive feature of the copyright holder's layout or presentation for the purposes of a rival magazine or newspaper… The copying of the segment takes advantage of the publisher's layout and presentation and does so in circumstances in which it can be inferred that harm will be caused to the publisher's commercial interest in the whole of the published edition.
The copying undertaken in the present case was of discrete articles… There is no evidence as to when the copying took place… In these circumstances, it is difficult to conclude that there was any significant interference with the publisher's commercial interest in the whole published edition."
I interpose at this point to say that as will later appear, what the Full Federal Court here stated in relation to quality, and in particular the circumstance that "…what is taken must be assessed by reference to the interest protected by the copyright", has been endorsed by the Court of Appeal in England (see in particular the judgment of Mance LJ in the Marks & Spencer litigation subsequently discussed in [18] below).
The judgment of Sackville J thereafter referred with approval to the following passage from Copinger and Skone James on Copyright (13th ed) Sweet & Maxwell 1994 p175:
"In deciding [the quality or importance of the part taken], regard must be had to the nature and objects of the selection made, the quantity and value of the materials used, and the degree to which the use may prejudice the sale, or diminish the profits, direct or indirect, or supersede the objects of the original work… In short, the question of substantiality is a matter of degree in each case and will be considered having regard to all the circumstances."
Mr Ricketson's commentary on Nationwide News, as contained in para 9.35 of his book first identified in this judgment in [12] above, is in the following terms:
"As Nationwide News indicates, a second relevant factor is the object or purpose which lies behind the taking, and the use which is made of the part taken. This is related to the statutory defences of fair dealing… but it should be noted that the latter are confined to specific purposes such as private study, criticism or review. In relation to issues of substantiality, a wider range of purposes may be taken into account. Thus, it seems that if the purpose of the copyist is the same as that of the author of the original, this may lead a court to hold that the part taken is substantial. This is particularly so where copyists are relieved of the necessity of using their own skill and labour, and are able to take a free ride on the efforts of the original author. In addition it seems that courts will readily reach the conclusion that a substantial part has been taken where this has been done… with an intention on the part of the copyist to take from the original work for the purpose of saving time and labour…."
16 In the context of the foregoing discussion of the object and purpose of the alleged infringer in taking part of the protected work or subject matter, Mr Ricketson's textbook (see [12] above) thereafter refers in the said para 9.35 to Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 1 All ER 703, where the defendant had taken what might otherwise have been a substantial part of the plaintiff's song, but had bestowed such mental labour upon what he had taken, and subjected it to such revision and alteration, as to produce an original work with a totally different purpose, namely a parody of the plaintiff's song. Mr Ricketson concluded at this point of his discussion of the relevance of object or purpose to substantiality with the following observation: "However it should not be thought that parody represents a separate or distinct defence or justification for what otherwise might be an infringing use… Anglo-Australian courts have tended to play down the parodic intent of an allegedly infringing use, although it may tip the balance in a case where all other factors are equal." In the course of the hearing, there occurred some discussion of the significance or otherwise of parody or burlesque in relation to the law of copyright, and reference was made to AGL Sydney Ltd v Shortland County Council (1989) 17 IPR 99, where Foster J found that the adaption by the Council of AGL's original television advertisement extolling the virtue of gas as a home power source, being an adaption which substituted an advertising promotion for electricity as a home power source in a parodic manner, infringed AGL's copyright as a literary and dramatic work within Part III of the Act. At 105 his Honour said as follows:
"[Counsel for the Respondent County Council] relies upon authorities which have been described as the parody cases… [however] a statement of principle which appears to have won general acceptance is that of Younger J in Glyn v Weston [1916] 1 Ch 261 at 268, namely: 'that no infringement of the plaintiff's rights takes place where a defendant has bestowed such mental labour upon what he has taken and has subjected it to such revision and alteration as to produce an original result'… as it is of the essence of parody that the work parodied must be evoked in the mind of the hearer or viewer to fulfil the purpose of the parodist, the question must necessarily remain whether an infringement of copyright has occurred as a result of a substantial taking from the parodied work. This question must necessarily arise from the application of the provisions of ss 14 and 31 of the Act. The statute grants no exemption, in terms, in the case of works of parody or burlesque."
Such reference on his Honour's part to s 14 of the Act is of course to the statutory notion of substantiality therein stipulated, which brings to the fore once again the factors of quality and quantity, nature and objects of the selection made, essentiality and materiality etc referred to in the passages cited from authority in [14-15] above. In taking account of AGL, one needs to keep in mind the material considerations leading to his Honour's conclusion, such as "It is quite candidly acknowledged by the [Council] that it worked from the AGL advertisement in an attempt to develop a hard hitting answer to it", and "In any event, I seriously doubt that the second Shortland advertisement could properly be regarded as parody of the AGL work and advertisement in so far as a parody is defined as 'a humorous or satirical imitation of a serious piece of literature or writing'. Earlier the Supreme Court of New South Wales in United Features Syndicate Inc v Star Newspapers Pty Ltd, an unreported decision made in proceedings No. 2637 of 1977 which is noted by Mr Lahore's Copyright Law in para 4.1.230, the foregoing approach in AGL was applied in circumstances where the parody of a cartoon strip, in which the original characters were reproduced in a different story with a different theme, was found nevertheless to have infringed copyright in a literary work by reason of the absence of such extent of revision and alteration as to have produced a result of originality.
17 It is appropriate that I should interpolate at this point to say something about the words "parody" and "burlesque", and what I consider to be their distinctiveness of meaning from the word "satire", and I do so in the particular context of my discussion of authorities in [16] above. The Macquarie Dictionary definitions of the three notions indicate that the essence of parody is imitation, consistently with the observation made in AGL as above extracted, and that burlesque is in the nature of vulgarising parody by way, for instance, of a vulgarising or debasing caricature, whereas satire is described as being a form of ironic, sarcastic, scornful, derisive or ridiculing criticism of vice, folly or abuses, but not by way of an imitation or take-off. Nevertheless that Dictionary's attribution of "… satirical imitation" has caused me to research further into the true or essential meaning of satire. In the work of a highly respected Australian academic, Professor Margaret Rose, published by the Cambridge University Press in 1993 and titled "Parody: Ancient, Modern, and Post Modern, the author distinguishes between both the Aristotle originated word parody, and the conceptually similar Italian originated word burlesque, on the one hand, and the Latin originated word satire on the other hand. Such distinction referrable essentially to imitation, though sometimes blurred at the edges by every day usage, assists an understanding as why parody (and burlesque) will not avoid copyright infringement, since imitation is in the nature of copying, in contrast to satire which involves the drawing of a distinction between the satirist and the author, composer etc. The distinction is of importance for the purposes of this litigation, to the extent that Ten may rightly be said to have used Nine footage for mainly satirical purposes or purposes similarly to satire, and to have done so in way that made it obvious that what has been taken originated from Nine and not from Ten. I observe incidentally that Copinger, supra at paras 7-34 and 7.44 use parody and burlesque implicitly as carrying similar connotations, though at para 9.18, the authors include "satire" in the heading "Parody, burlesque and satire", though without explicitly discussing satire otherwise than in note 92 thereto, where the following distinction is made, in my opinion correctly:
"In some cases a distinction has been drawn between cases where a work itself is parodied and cases of satire, where part of a work is used to provide a critique of individuals or institutions or society in general."
And after listing those cases, the authors proceed as follows:
"The broad definition of criticism which has been adopted in the United Kingdom which allows the reviewer to look 'behind' a work…would seem to make it more likely that some cases of satire would also fall within the fair dealing defence" (the underlining is my emphasis).
Such para 9.18 of Copinger does however refer to parody as possibly relevant to fair dealing for purposes of criticism and review, which of course involves different considerations to those of substantiality.
18 After the commencement of the subject proceedings on 9 February 2000, the Court of Appeal in England handed down judgment in Newspaper Licensing Agency Ltd v Marks & Spencer PLC [2000] 3 WLR 1256; 48 IPR 229. This litigation, as in the case of Nationwide News, related to published edition copyright. Two members of the Court of Appeal (Peter Gibson LJ and Chadwick LJ) discussed Nationwide News predominantly by reference to the litigation at first instance (Nationwide News Pty Ltd v Copyright Agency Ltd (1995) 55 FCR 271) where Wilcox J rejected the submission that published edition copyright could be infringed by the reproduction of a single item in a newspaper or magazine. Ten's written submissions cited the following passages from the leading judgment of Peter Gibson LJ at 1265, 1267; 235,237-8:
"[26] The reasoning of the Judge [the United kingdom judge at first instance] therefore was more directed to a qualitative rather than a quantitative test of what is a substantial part. However, the primary submissions of both Mr Silverleaf and Mr Garnett were that the test was quantitative, having regard to the fact that the copyright is typographical arrangement copyright which is not dependent on originality. I agree that that is the most important factor, though I would not exclude from relevance an assessment of substantiality based on considerations of other than a mere measurement of column inches, such as the impression which the copied part makes on the eye of the reader. This may in turn depend on matters such as the prominence of the part in the edition: see the observations of Sackville J in the Nationwide case 136 ALR 272, 292.
…
[37] I turn then to how I would answer the second issue, bearing in mind that the copyright with which we are concerned is typographical arrangement copyright and that this requires a comparison of the parts copied with the whole published edition and a primarily quantitative assessment coupled with a consideration of the impact on the reader."
The judgment of Chadwick LJ was to similar effect, and I extract from the same below:
"(71) …If the true analysis is that the only relevant "published edition" is the newspaper or magazine from which the article or report has been taken, then the question is whether the copying of the typographical arrangement of the individual article or report is properly to be regarded as the copying of a substantial part of the typographical arrangement of the newspaper or magazine as a whole.
(72) For my part, I would regard the test of substantiality in that context as primarily, if not exclusively, quantitative. But whether the quantitative comparison is confined to column inches of space occupied, or includes a word or line count or some other assessment of visual impact, is a question on which I prefer to express no view. The difficulties which, as it seems to me, are inherent in applying the test of substantiality to a work which consists of typographical arrangement contribute to my view that parliament is unlikely to have intended that to be the applicable test in relation to the infringement of copyright in the typographical arrangement of a compilation of individual literary works. Be that as it may, it is sufficient if I express my agreement with the conclusion reached by Peter Gibson LJ on this issue. If substantiality is the test, then I agree that we have not been shown any cutting which can properly be regarded as a substantial part of the newspaper or magazine from which it was taken." (at 1275-6; 245-6)
The judgment of Mance LJ adopted more closely the Full Federal Court's approach in Nationwide News regarding the way in which the notion of substantiality is to be assessed in relation to published edition copyright. After first observing at paragraph (103) that "Like Peter Gibson LJ, I would conclude that a substantial part is not copied merely because the quantity copied is more than de minimis, and that the test under s 16(3)(a) is probably best paraphrased by asking whether copying took place to an extent 'worthy of consideration for the purposes of the Act'…", Mance LJ continued at 1284-5; 253-4 as follows:
"(104)Mr Garnett's next submission was that the test must in the present context be purely quantitative. But lack of creativity does not mean a lack of all characteristics apart from volume…. The typographical arrangement of a published edition looks to the typographical characteristics of the entire edition, including… matters of layout and appearance. In this respect, the appellants suggested that guidance was again to be found in the decision of the Nationwide case (and Mance LJ thereafter cited the paragraph of the Full Court's judgment commencing "In relation to a published edition…" extracted in [15] above).
(105) I would not myself endorse the reasoning in the Nationwide case if and to the extent that it is to be read as taking as a relevant test of substantiality whether the part copied was "an 'essential' or 'material' part of the work": see at IPR 71; ALR 290, citing Mason CJ in Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 305; 25 IPR 33. At least the first word may, as it seems to me, set the test too high. However, the Federal Court's reasoning appears to me correctly to identify the sense in which the "quality" of the material copied should be considered. It is not the quality of the information, comment or other contents in any article that matters. Typographical arrangement copyright is concerned with presentation or appearance. What matters is the extent to which the typographical arrangement is reproduced, both in terms of volume and in terms of appearance.
…
(107) It is, in my view, relevant to go back to the purpose for which, or the mischief in the light of which, this type of copyright was introduced. What was in mind was the copying, or "pirating", of publications by unscrupulous competitors. It is appropriate to have that in mind when considering the extent to which the appellants' activities should be regarded as involving the copying of "any substantial part" of any published newspaper from which they copied articles. In no case, which we were shown, can it be said that the appellants' copying reproduced anything that could be regarded as either resembling the newspaper concerned or having newspaper-like qualities. In some cases, it seems clear that, the copying was, if not trivial, then barely more than trivial. …As to the reproduction of articles involving larger chunks of text - rearranged though they commonly were when copied onto an A4 page - the appellants gained thereby commercial advantages for themselves, but they cannot in any realistic sense be said to have done so as competitors of the respondents. They did not create anything which could be regarded as resembling any, or in my view, any significant part of the relevant newspapers viewed as an entire publication. Moreover, any use that the appellants made of such newspapers' typographical arrangement was at best incidental or very subsidiary to the appellants' primary purpose, which was to communicate the information in the articles to their staff. In the circumstances I do not think that it is right to regard the appellants in the present context as having copied a substantial part of any of the newspapers involved. …"
19 All of the authorities to which reference has thus far been made, with the exception of Nationwide News and Marks & Spencer, have been concerned with literary, dramatic, musical or artistic material, and thus "works" within Part III of the Australian Act. The assistance to be derived from authorities referrable to Part III works is the gaining of an appreciation of the extent of modification or qualification required to be made in the application of the dichotomy of quality and quantity to Part IV "subject matters", and in particular of course television broadcasts, if that dichotomy is to substantially survive in the light of the approach of Chadwick LJ in Marks & Spencer (see para 72 of his judgment extracted in [18] above). Nationwide News and Marks & Spencer both related to published edition, the copyright addressed by s 88 of Part IV of the Australian Act. I have not yet referred to the Part IV subject matter of cinematograph films which had initially, until the British Copyright Act 1911, enjoyed protection initially as a series of photographs and subsequently as literary or artistic works where possessing an original and personal character. Thereafter under that legislation, cinematograph film copyright gained additional statutory protection as dramatic or literary works, where an original character could be imputed: Copinger and Skone James on Copyright (14th ed), Sweet & Maxwell 1999, Vol 1 para 3-55-6. The now Part IV copyright subject matter of sound recordings first gained statutory protection under the 1911 Act as musical works, without the requirement for demonstration of originality "as such": Copinger (14th ed), supra at para 3-105. The critical issue which must here be addressed is the manner in which, and the extent to which the historical notion of substantiality subsequently embodied in s 14(1)(a) of the Australian Act should accommodate the more recently recognised Part IV copyright relating to television broadcasts, in the light of the accommodation of that notion which has taken place in relation to other Part IV subject matters. Chapter 7 of Laddie and Prescott and Ms Vitoria The Modern Law of Copyright and Designs (2nd ed) Butterworths 1995 addresses "… the special sort of copying which protects the signals emitted by broadcasts and the items in a cable programme" (in para 7.1). The authors further develop this subject in para 7.3, after making the observation that "Television and sound broadcasts received no independent copyright protection under the pre-1956 law" as follows:
"Because, in many instances, at that time, sound or television broadcasts were transmitted live they were of an ephemeral nature and therefore could not be squeezed into one of the then existing categories of copyright subject matter, all of which required that the subject of copyright should be reduced to writing or some other tangible form."
Thereafter the authors explain, without controversy, what is sought to be protected by the conferral of copyright in favour of television broadcasts:
"… it is the 'message' carried by the broadcast waves - the visual images, sound or other information… and not the waves as such which may be regarded as temporary packaging for use in transit…. But the 'message' carried by broadcast waves is nothing more nor less than what is encoded by the precursor signal used to modulate the carrier wave at the broadcasting station. It is submitted that to make sense of these matters one must have recourse to the rather metaphysical concept that the substance of the 'work' -what everyone is interested in sending or receiving - is the 'message', the wireless telegraphy waves are the outward accident thereof. Put in more practical terms, what is protected by broadcasting copyright are the visual images, sounds or other information but copyright cannot arise unless the author engages in the act of transmitting these by wireless telegraphy, this being a condition precedent to the acquisition of the right. (I interpolate here to refer again to the reference to "wireless telegraphy" in the s 10(1) definition of "broadcast" in the Australian Act extracted at [6] above). It is, however, a mistake to suppose that the visual images, sounds or other information enjoy broad protection in the same way as an artistic musical or literary work. For instance, in the case of sound broadcasting it is only the sounds actually heard in the broadcasting studio which are protected, not the underlying intellectual content and so on…."
The authors thereafter cite the decision of this court in CBS Records Australia Ltd v Telmark Teleproducts (Aust) Pty Ltd (1987) 9 IPR 440, where it was held that the copyright in a sound recording could not be infringed by the making of a 'sound alike' record, being a close imitation of a performance on an existing record, using alternative performers. The reason provided by the Court was that what was protected by this kind of copyright were the actual sounds as embodied in the recording, which actual sounds had not been taken by the alleged infringer. Bowen CJ said in this regard as follows:
"… [t]he section [referring thereby to s 87(b) extracted at [7] above] is speaking of the actual sounds broadcast being taken and not speaking of someone producing an imitation by the use of independent performers of broadcast sounds."
20 The said authors of The Modern Law of Copyright and Designs continue in para 7.32 thereof in relation to broadcast copyright, still without controversy, as follows:
"One must bear firmly in mind that this type of work may be copyright even though it is wholly devoid of originality. The statutory monopoly arises even though the author expended no mental skill, labour or ingenuity in its preparation. In the case of copyright works of the traditional type, eg original literary works, originality is highly material to the question of infringement by altered copying… It is submitted that it is the actual visual images or sounds which are protected, and not some initiation or reproduction thereof produced by collateral means… The underlying creative content (eg the script or the music) may well be protected aliunde for instance, as an original literary or musical work. But this is a different thing, and involves questions of originality."
However the following conclusion to the authors' Chapter 7, contained in para 7.34, brings into focus the main area arising for present debate, in terms which Nine would adopt in favour of its case as to substantiality:
"Partial taking
7.34 …the Act does stipulate that the copyright in a broadcast or cable programme may be infringed by the copying of a 'substantial part'… How lengthy must an extract be before it counts as a substantial part for this purpose? Whilst no absolute standard can be laid down, the Act states that in relation to a film, television broadcast or cable programme, 'copying' includes making a photograph of the whole or any substantial part of any image forming part thereof. This strongly suggests that the taking of even a single frame of a film (or the equivalent amount of a TV broadcast) may be an infringement. Yet in an average feature film a single frame forms less than 0.001 per cent of the total. Sheer length, then, is unlikely to be conclusive. Perhaps a practical test is to enquire whether what is taken has any discernible market value. A poster would have. A short burst of sound engendered while 'channel hopping' on a receiver in a shop would not. It may be that anything which is not de minimis would be regarded as 'substantial'."
The foregoing view of the authors as to "partial taking" of a television broadcast copyright addresses s 17(4) of the British Copyright Designs and Patents Act 1988 (UK), which reads as follows:
"Copying in relation to a film, television broadcast or cable programme includes making a photograph of the whole or any substantial part of any image forming part of the film, broadcast or cable programme."
Such statutory provision may be contrasted however with the provisions of s 101(4) of the Australian Act (see [5] above), which addresses breach of television broadcast copyright alone, and which, by its employment of the words "… the visual images and sounds comprised in the broadcast", incorporates the notion of plurality of visual images, in contrast to the words "any image" of the above 1988 UK legislation. Such UK 1988 legislation relating inter alia to television broadcast copyright may similarly be contrasted with s 14(4) of the 1956 UK legislation, which is reproduced in [21(ii)] below. I will return later to the text of certain of both UK statutory provisions.
21 Each party has referred me to the content of materials extrinsic to United Kingdom and Australia legislation, in the form of reports of law reform bodies and second reading speeches, in support of submissions as to the construction of the relevant copyright statutory provisions enacted here and in the United Kingdom since the introduction of television broadcasting. As to the justification for so doing in relation to extrinsic material of Australian origin, see generally CIC Insurance Ltd v Bankstown Football Club Ltd (1997) 187 CLR 384 at [408]; Newcastle City Council v GIO General Ltd (1997) 191 CLR 85 at 99 and 111-113 and Schott Musik International GMBH & Co v Colossal Records of Australia Pty Ltd (1997) 75 FCR 321 at 323-4 per Wilcox J, at 328-333 per Hill J and at 333-6 per Lindgren J. I would include within the general purview of those authorities the extrinsic use of United Kingdom extrinsic materials, by reason of the leading role adopted in the United Kingdom to copyright reform after the introduction of television broadcasting, which was largely adopted in Australia in circumstances which were similarly occurring in Australia, as will shortly be traced. Such content of extrinsic materials are extracted below, to the extent they have been cited to me in address:
(i) Prior to the enactment of the United Kingdom copyright legislation of 1956, the President of the Board of Trade presented to the Parliament in October 1952 the Report of the Copyright Committee chaired by Mr H.S. Gregory ("the Gregory Committee"), which contained the following:
"93. …
Further, it can no longer be assumed that the reproduction of visual effects must be preceded by photographs, and we are given to understand that even now it is possible to record on a magnetic tape a spectacle which can be reproduced visually as a television programme. Accordingly, in drafting provisions relating to records, cinematograph films and such matters, we consider that the wording adopted should have regard to the end-product (eg sound or visual representation) rather than to the means whereby these effects are produced.
…
116 We now turn to the question whether a new right should be given to the broadcasting organisations in their own programme, additional to any copyright there may be in the individual items which go to make up those programmes, and we deal at this stage solely with a right to prevent other persons from copying the programme whether by way of again broadcasting a programme (in the event of there being more than one broadcasting authority in the future) or by way of recording such programmes for subsequent performance in some other way.
117 On the question of copyright in the ordinary sense, the position of the B.B.C., as we see it, is not, in principle, very different from that of a gramophone company or a film company. It assembles its own programmes and transmits them at considerable cost and skill. When using copyright material it pays the copyright owner, and it seems to us nothing more than natural justice that it should be given the power to control any subsequent copying of these programmes by any means. It has been represented to us that the absence of such a right has already caused considerable embarrassment to the B.B.C. Apparently, indifferent reproductions both of sound and television programmes have been made, and sold to the public, to the detriment alike of the Corporation and of those taking part….
118 There is one comparatively small matter relating to broadcasting to which we must refer. It is the practice of the BBC, and we believe of all broadcasting authorities, to make records of their programs, sometimes before the performance is broadcast, sometimes in the course of broadcasting, for subsequent use in repeat programmes. Where copyright material is broadcast, however, the making of such records would infringe the mechanical rights of composers or authors. We accept that a procedure of this kind is essential and we note that the Brussels convention (Article 11(b)) accepts that countries of the Berne Union may determine regulations for what is described as 'ephemeral' recordings made by a broadcasting body by means of its own facilities and used for its own emissions."
I would pause to record here the references to the "programmes" of television broadcasters used in paragraphs 93 and 116 to 118 above in the context of the broadcast copyright being proposed for introduction. The word "programmes" was not however incorporated as such into the television broadcast provisions of the ensuing UK 1956 legislation, except in the context of references to cable television.
(ii) In the result, s 14(1) of the Copyright Act 1956 (UK) (since repealed) stipulated that subject to the succeeding sub-sections, copyright should subsist in every television and sound broadcast made by the B.B.C., and sub-sections (4) and (6) in particular stipulated as follows:
"(4) The acts restricted by the copyright in a television broadcast or sound broadcast are:
(a) in the case of a television broadcast in so far as it consists of visual images, making, otherwise than for private purposes, a cinematograph film of it or a copy of such a film;
(b) in the case of a sound broadcast, or of a television broadcast in so far as it consists of sounds, making otherwise than for private purposes, a sound recording of it or a record embodying such a recording;
(c) in the case of a television broadcast, causing it, in so far as it consists of visual images, to be seen in public, or, in so far as it consists of sounds, to be heard in public, if it is seen or heard by a paying audience;
(d) in the case of a television broadcast or of a sound broadcast, re-broadcasting it or including it in a cable programme.
…
(6) In relation to copyright in television broadcasts, in so far as they consist of visual images, the restrictions imposed by virtue of sub-section (4) of this section shall apply to any sequence of images sufficient to be seen as a moving picture; and accordingly, for the purpose of establishing an infringement of copyright, it shall not be necessary to prove that the act in question extended to more than such sequence of images."
(iii) The Report of the Copyright Law Review Committee 1959 in Australia subsequently chaired by Mr J.A. Spicer (the Spicer Report) occurred in the context of the 1956 United Kingdom legislation enacted pursuant to the Gregory Report. Chapter XVIII related to "Sound And Television Broadcasts". The following provisions are of potential relevance:
"286 … However there can be no doubt that broadcasting authorities are properly entitled to protection against the display in public to a paying audience of the programme received….
287 In the absence of express provisions giving copyright in broadcasts, the broadcasting authority could obtain protection by recording or filming its broadcast and rely upon the copyright thus arising in the record or film. In most cases this would doubtless be done. However, the protection should not be dependent upon this course being followed.
288 The conclusion we reach, therefore, is that provision should be made, either in the copyright law or in some other appropriate legislation, for the protection of sound and television broadcasts against the kind of pirating envisaged by section 14 of the 1956 Act.
295 It seems to us, having regard to the provisions of section 14(6) that under the 1956 Act, a person may, without committing an infringement of the broadcasting copyright, take as many photographs of a television broadcast as he wishes provided no two photographs constitute a sequence or images. We can see no good reason for limiting the protection to this extent and recommend that the taking of a photograph of any part of a television broadcast should be a restricted act if it is done otherwise than for the private use of the person taking the photographs."
I would draw attention to the use of the word "programme" in paragraph 286 above.
(iv) The Second Reading Speech of the Attorney General Sir Nigel Bowen, relating to the introduction of the Australian legislation to the House of Representatives, contained the following:
"There is no copyright under the existing law in a sound or television broadcast. There are provisions in the Broadcasting and Television Act which prohibit the broadcasting by one person of programmes transmitted by another without the permission both of the original broadcaster and of the Broadcasting Control Board. The Bill establishes a new category of protection for sound and television broadcasts. It provides that copyright, in relation to a broadcast is the exclusive right to make a cinematograph film of the broadcast in the case of a television broadcast, to make a sound recording of the broadcast and to re-broadcast the broadcast. These provisions are contained in clause 87 of the Bill."
Clause 87 of the Bill became of course s 87 of the Australian Act (see again [7] above for the full text thereof). Again I observe the use of the word "programme(s)".
22 Before recording and addressing the respective submissions of the parties in relation to the Nine case in chief as to breach of s 87(c) of the Act concerning television broadcasting copyright generally, it is appropriate for me to summarise the present state of authority thus far identified in relation to the subject of statutory substantiality in the law as to infringement of copyright, to the extent that the same may have some bearing upon the operation of s 14(1))(a) of the Australian Act in relation to television broadcast copyright. Both parties acknowledge that there is an absence of authority directly on point, and that the present proceedings raise novel issues concerning television broadcast copyright and infringement thereof.
23 In relation to Part III copyright works, the quality of what has been taken will normally dominate in significance in comparison with the quantity of what has been taken, such notion of quality being sometimes paraphrased in terms of the importance or the essence or the materiality of the part taken in relation to the whole of the protected work, whatever it may comprise. The nature and degree of protection of copyright in such works was developed at common law prior to the UK 1911 legislation, and the reason for the provision of the protection which evolved at common law was related to the degree of originality in the expression of the work. Cinematograph films attracted copyright protection following upon their later emerging technology, as did sound recordings, and the concept of originality played a part in the development of such protection. There is no Australian authority bearing directly on the scope of Part IV protection for television broadcasting, but in the context of Part IV protection for published edition, the Full Federal Court in Nationwide News [15] above has postulated an emphasis on both quality and quantity, either of which may be the principal criterion in a particular case (see again the expression "… the quantity is not the only, nor necessarily the principal criterion" at 419 of the Judgment), subject nevertheless to the need to recognise that "the quality of the material taken… is the key issue" (again at 419 of the Judgment). Furthermore the Full Court said that such appraisal of substantiality by reference to the dichotomy of quality and quantity should be "… assessed by reference to the interest protected by published edition copyright", namely "… the presentation and layout of the edition as distinct from the particular words or images published in the edition" (at 418), and ultimately in each particular case, the assessment will boil down to matters of degree. Moreover the Full Court emphasised the occurrence of infringement where a competing publisher has utilised a distinctive feature of the copyright holder's layout or presentation for its rival publication, and has done so in circumstances in which it can be inferred that harm will have been caused to the publisher's commercial interest in the whole of the published edition. Such approach to the interaction between quality and quantity so postulated in Australia by Nationwide News in relation to published edition has been supported in substance by Mance LJ in the published edition copyright litigation Marks & Spencer, but the other two members of the Court of Appeal in that case, particularly Chadwick LJ, would place the weight of their emphasis on quantity. In addition, by adopting the passage from Copinger (13th ed) also extracted in [15] above, Nationwide News postulated a second factor relevant to the statutory principle of substantiality in its application to published edition copyright, namely the object or purpose of the alleged infringer in undertaking the conduct of taking, object or purpose in such context operating beyond the area of the defence of fair dealing as appears from the reference to "object or purpose" in the passage cited in Nationwide News from Ricketson in [15] above. Some measure of support for that additional factor as to purpose or object of taking is to be also found in the judgment of Mance LJ in Marks & Spencer (see the reference to "primary purpose" in para 107 of his judgment extracted in [18] above). The extent to which the foregoing approaches to the nature and dimension of published edition copyright should apply in an analogous way to Part IV television broadcast copyright remains of course to be determined in this judgment. Authorities in England and Australia would add the qualification, at least in relation to Part III works, that copying for objects or purposes of parody (and its related concept burlesque) do not absolve an infringer, in the absence of the infringer's input of such skill and labour such as to constitute the otherwise infringing work as an original work [16-17], but for the reasons I have additionally indicated in [17] above, I do not think that such qualification applies to satire, because satire, in contrast to parody or burlesque, does not in principle or at least as a general rule involve imitation of other work, but on the contrary the inherent recognition thereof. In the case of television and sound broadcasts, where like published edition, originality is not required for the establishment of copyright, and where the subsistence of copyright depends mainly upon technical considerations related to production, there remains to be interpreted by analogy the extent of interaction, if any, between quality and quantity. That question will shortly be addressed in the light of the decision concerning cinematograph film copyright (another Part IV copyright) in Spelling Goldberg to be discussed in [28(iii)] below, upon which Nine has placed reliance in its submissions on substantiality.
Nine's submissions on substantiality
24 Nine's written submissions commenced with the following general propositions of legal principle, implicitly upon the basis that the same applied to television broadcast copyright:
(i) Whether the copyist has taken a substantial part of the original depends much more on the quality, rather than the quantity, of the material taken;
(ii) The reproduction, performance or, as in the present case, re-broadcasting and copying, of a quantitatively small but nonetheless material part of a work may constitute infringement;
(iii) Whether or not [Ten] has taken a substantial part of the original broadcast is principally a question of fact, being necessarily a question of degree to be judged having regard to all the relevant circumstances of the case;
(iv) In considering the issue of substantial part, the Court may be guided by the sometimes designated "rough" working test advanced by Peterson J in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 to the effect that "what is worth copying is worth protecting".
These principles have of course been adopted in the context of Part III copyright protection. I have already referred to the above propositions (i), (ii) and (iii) in the course of my discussion of authorities in [12-15] above. Nine then referred in particular to Fernald v Jay Lewis Productions Ltd [1975] FSR 499, which involved literary or dramatic features derived from four pages out of a total of 126 pages of a book, and to Hawkes & Son (already mentioned in [13] above) involving twenty seconds of a marching song "Colonel Bogey", where Lord Hanworth MR said at 604:
"…when one deals with the word 'substantial', it is quite right to consider whether or not the amount of the musical work that is taken is so slender that it would be impossible to recognise."
Authorities are replete with reference to proposition (iv) above, but the same tends to beg the ultimate question to be resolved in each case.
25 Nine pointed to the circumstance that "… in relation to every source program there is evidence of significant investment by Nine in the organisation of the program in the case of those produced by Nine, and in the purchase of rights or the commissioning of programs in the case of those produced by others", and to the further circumstance that Nine and Ten are competitors in the same market. I do not understand there to be any disagreement on the part of Ten with the generality of such propositions. In similar vein, Nine continued rhetorically: "We invest a lot of money in it. Have they got a commercial interest in being able to present TV using footage without having to pay for it, yes, where that does but help their bottom line. Do we have a commercial interest which competes with that, yes, plainly we do"; "Are they using our footage in a way which competes with us and hurts us - plainly they are"; and "… our commercial interest is winning the rating battle. Do they harm our commercial interest by pursuing a precisely competitive personal interest by means of filling up their program in part with [our] footage, yes." The reference to "hurts us" picks up the reference to causing harm by a rival newspaper contained in Nationwide News but I have to observe that the assertion as to "filling up their programme in part with [our] footage" tends to overstatement.
26 Nine nevertheless disputed in the course of submissions the existence of any "useful analogy" in relation to the circumstances involved in Nationwide News, which, as has been already pointed out in [15] above, related to the Part IV copyright of published edition as distinct from the Part IV copyright of television broadcasting. However the observations of principle of the Full Court in Nationwide News extracted in [15] are in my opinion clearly capable of application in an analogous way to issues of substantiality involved in television broadcast copyright. There is more than an insignificant degree of affirmative comparison between what is protected by published edition copyright for instance in the form of presentation and layout of a newspaper, and what is protected by television broadcast copyright by way, for instance, of the presentation of television programmes, for example, on the subject of current affairs. Indeed Nine contended that there is i involved skill and expertise on its part in the presentation of its programmes.
27 Nine thereafter advanced the critical submission on its part that any of the visual images comprised in a television broadcast is an infringement of the copyright in relation to that broadcast, and in so doing advanced the following propositions in sequence:
(i) That para 295 of the Spicer Report, extracted at [21(iii)] above, constituted the recommendation which "obviously led to section 25(4)(a)" of the Act; the recommendation of that paragraph stated that "… the taking of a photograph of any part of a television broadcast should be a restricted act if it is done otherwise than for the private use of the person taking the photographs".
(ii) That the use of the words "any of the visual images" and "any of those images" in s 25(4)(a) govern and control the meaning of "visual images" in s 87(a).
(iii) That s 25(4)(a) provides the following guidance or direction:
First as to what constitutes the so-called "the source broadcast";
Secondly as to the extent of the protection afforded by broadcast copyright;
Thirdly as to the approach which the Court should adopt on the question of "infringement by re-broadcast which is consistent with infringement by copying as provided for in section 25(4)(a)"; the reference to "re-broadcast" was of course to s 87(c) of the Act.
(iv) That it would be unlikely that there would be a different operation for s 87(a) from that of s 87(c) so far as the import of "visual images" was concerned, notwithstanding the absence of explicit reference thereto in s 87(c), and that since s 87(a) is to read as applying to "any of the visual images" by virtue of s 25(4)(a), as above stated, so also should s 87(c) be implicitly read and construed.
(v) That the s 10(1) television broadcast definition "… just says visual images [and] it doesn't use the word program. The whole thing becomes clear, ie that what is being protected are signals which are sufficient in quantity and number such that one can recognise in their product a visual image. That's certainly a high point of our case".
28 In support of the foregoing approach of Nine to the operation of s 25(4)(a) of the Act, which I should point out is not an operational but an interpretative provision (see again the full text thereof extracted in [7] above), Nine thereafter set out the following critical steps in furtherance of its case on substantiality in relation to television broadcasting:
(i) The s 10(1) definition of "television broadcast", specifying as it does "visual images broadcast by way of television together with any sounds broadcast for reception along with those images", does not thereby identify any number of images or a cut-off point, or a requirement that the visual images constitute a discrete or complete story or programme.
(ii) Section 25(4)(a) implies in effect that to copy of "any of the visual images comprised in a broadcast" is an infringement, which, so the submission continues, must be so, because each visual image which is broadcast constitutes a television broadcast, and each is subjected to the "extraordinary process of conveyance known as broadcasting", and further (as already indicated in [27(iv)] above) because s 25(4)(a) is logically designed to ensure that infringement by copying a broadcast is in no way "dimensionally different" to infringement by re-broadcasting.
(iii) The decision of the UK Court of Appeal in Spelling Goldberg Productions Inc v BPC Publishing Ltd [1981] RPC 283 found that to constitute copying of a part of a cinematograph film within s 13(10) of the Copyright Act 1956 (UK), it was enough that there had been a single still photograph made from the cinematograph film, because a single frame of the film was part of a "sequence of images" constituted by the film; s 13(10) of such 1956 legislation contained in that regard the following definitions:
"In this Act -
'cinematograph film' means any sequence of visual images recorded on material of any description (whether translucent or not), so as to be capable by the use of that material -
(a) of being shown as a moving picture, or
(b) of being recorded on other material (whether translucent or not), by the use of which it can be so shown.
…"
Moreover the court in Spelling Goldberg also held that the substantiality provisions of the UK 1956 Act did not apply to the s 13(10) definition of a cinematograph film, but that if the same did so apply, a sensible meaning could be given to the "substantial part" of a single frame, since the whole of a single frame may not be taken by an infringer in a particular case, but merely "a split screen". I should here cite from the judgment of Buckley LJ (at 296-297) the following passage:
"Indeed, as a matter of ordinary use of language, I should have thought that it was very difficult indeed to say that a single frame taken out of, or selected from, all the frames contained in a cinematograph film was not itself part of that film. This view of the matter does not seem to me to be surprising when one remembers that until 1957 every single frame in a film constituted an individual photograph for copyright purposes, and as a matter of construction of the language, as well as a matter of giving the language its ordinary sense as distinct from any special sense that can be derived from close analysis of the provisions of the Act, I reach the conclusion that a single frame from a film is a part of that film within the meaning of the definition of 'copy'."
For comparison however, I intrude in this present context the definition of "cinematograph film" contained in s 10(1) of the Australian Act:
"cinematograph film means the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing:
(a) of being shown as a moving picture; or
(b) of being embodied in another article or thing by the use of which it can be so shown;
and includes the aggregate of the sounds embodied in a sound-track associated with such visual images."
I draw attention to the references in the Australian definition to "the aggregate of the visual images embodied in an article or thing", and "the aggregate of the sounds embodied in a sound-track associated with such visual images", both of which are absent from the former s 13(10) Copyright Act 1956 (UK) statutory provision in relation to which Spelling Goldberg was decided, which uses the expression "any sequence of visual images".
(iv) Nine next pointed to the absence of any reference to the aggregation of visual images in the Australian statutory definition of "television broadcast" contained in the s 10(1) definition thereof, by way of contrast to the s 10(1) definition of cinematograph film, and further pointed to the contrast between "sound broadcast" and the s 10(1) definition of "sound recording" set out below:
"… means the aggregate of the sounds embodied in a record."
As to the respective legislative definitions of "copy in relation to a cinematograph film", the same are set out below for comparison for further insight into the reasons for judgment in Spelling Goldberg:
1956 UK Act : "… means any print, negative, tape or other article on which the film or part of it is recorded" (s 13(10)).
1968 Aust Act : "… means any article or thing in which the visual images or sounds comprising the film are embodied" (s 10(1)).
The differences between the definitions cited immediately above caused the following observation to be made in Nationwide News at 420:
"Mr Nicholas also cited Spelling Goldberg… where it was held that one frame of a cinematographic film amounted to a substantial part of the film. But the case turned on the definition under the Copyright Act (UK) of a 'copy' of a cinematographic film. That definition has no counterpart in the Act. The case is also not helpful in the present context."
No definition of "copy" appears however in either the 1956 UK Act or the 1968 Australian Act in relation to a television broadcast, as distinct from a cinematograph film.
(v) The skill, industry, expensive equipment and infrastructure involved in the creation and projection of broadcast images (a submission already paraphrased in the extracts set out in [25] above). I observe that comparable observations were made in Nationwide News by reference to the published editions of The Australian Newspaper, in the context of discussion of the notion of quality.
(vi) The statutory notion of substantiality still has a role to play in relation to television re-broadcasting, even if every single visual image is protected in accordance with Nine's primary submission; leaving aside the suggestion of Buckley LJ in Spelling Goldberg in [28(iii)] above ofpart of a single visual image frame (ie split screens) in relation to cinematograph copyright, Nine instanced the hypothesis of a television broadcast without the taking by the infringer of any accompanying sound.
I would observe at this point that if Nine's submission in (vi) above be correct, it may well follow by analogy that substantiality in relation to sound broadcasting would be fulfilled in relation to each and every individual sound (see again the definition of "sound broadcast" in [5] above), a surprising hypothetical consequence. But in any event, I find this preferred submission of Nine as to copyright protection for each single visual image pursuant to s 87(c) to have an unrealistic and impractical foundation at least by reference to ss 25(4)(a) and 87(a), for the reasons that in the absence of a visual image being filmed or otherwise copied within s 87(a), a visual image which has been broadcast is merely ephemeral or evanescent.
29 Alternatively to Nine's primary submission reflected in [27-28] above that television copyright extends to each and every visual image of a television broadcast, Nine advances the following submissions:
(i) A television broadcast relates to the whole of each programme, or else the whole of each segment of a programme where the same breaks down into segments; it would be a question of fact in each case to identify the existence of any such segments; moreover there may be many substantial parts of a programme or a segments of a programme, as in the case of other copyright work. For example, following Nine programmes the subject of the proceedings were submitted as divisive into segments namely, Today, A Current Affair, Who Wants to be a Millionaire?, Australia's Most Wanted, The Midday Show and Sunday.
(ii) The period of time involved in assessing substantiality may come "… down to the second, the extent of each piece of footage. The footage is used to punctuate the show. Seconds in TV are important. Ratings are decided on 15 minute intervals. People leave, people turn off, they get bored. The man in the street is affected by seconds in TV" (transcript p378).
(iii) Material to (i) and (ii) above are the established principles of copyright law that identification of what is the subject of copyright is usually a question of fact, and Nine illustrates by reference to the principles that literary copyright may exist independently in each of the chapters of a book (see Universal Press Pty Ltd v Provest Ltd (1989) 87 ALR 497 at 501-503), or the taking of a chapter of a book may equate to the taking of a substantial part of the copyright subsisting in the book as a whole literary work, notwithstanding that each chapter is a complete story in itself: University of New South Wales v Moorhouse (1975) 133 CLR 1 at 11 and 20.
30 Further as to Nine's case that Ten has taken a substantial part of each broadcast, Nine points to the following circumstances as having been established from the Nine and Ten footage respectively in evidence:
(i) Ten has sought to "suck the marrow from the bone" of the Nine programs involved (Wainwright Securities Inc v Wall Street Transcript Corp (418 F Sup 620 at 625 (SDNY 1976)) (affirmed on appeal 558 F 2d 91 (2nd Cir 1977)); Nine asks rhetorically "…why should [Ten] be able to parasitically feed"?
(ii) The Nine footage taken must have been regarded by Ten as the best parts to show in the course of Ten's "fast paced show", and each part so taken has been in the nature of highlights; consequently there has been taken "a substantial part within s 14(1)(a) of the Act of each program or each relevant segment of each program, if what has been so taken constituted a "television broadcast" within s 10(1)"; in this regard, Nine has referred to the transcript of certain cross-examination of Mr Hirsch, the chief executive officer of Working Dog Pty Limited which has been the producer of The Panel (see [2] above), commencing at page 190, the content of which I will extract below in order to give a reasonable comprehension of the present submission:
"Mr Bannon SC: You see the golden rule is for tapes to run no longer than 20 seconds, if possible?…
Mr Hirsh: No, 60 seconds.
Mr Bannon SC: Here it says 20 seconds?…
Mr Hirsh: Yes, about 60 is tops but we average much less than that.
Mr Bannon SC: Well, as far as you were concerned its important that the footage as you say contains any footage which is shown on the show, its important that it contains no fat, is that right?…
Mr Hirsh: Yes.
Mr Bannon SC: And the footage which is the essential part of whatever it is you want to show?…
Mr Hirsh: Yes.
Mr Bannon SC: If its footage taken from some other show or program you want to make sure that the footage that you show is the best and most interesting bit for the purposes you have on the show?…
Mr Hirsh: Yes.
Mr Bannon SC: We've seen in this courtroom some excerpts of various bits of footage shown on The Panel and may we take its your view that a lot of the footage which is shown on The Panel provokes a great deal of mirth both in the studio audience and the viewing audience at home?…
Mr Hirsh: Sometimes, in the majority of times, yes.
…
Mr Bannon SC: … In other words, you don't instruct your researchers to go [and] look for dull pieces of footage, do you?…
Mr Hirsh: We don't give instructions to our researchers as such, whether its dull or boring or funny is not really relevant.
Mr Bannon SC: But so far as you're concerned you regard the show as an attempt to provide a snappy, pacey form of entertainment to a demographic within the 16 to 39 bracket?…
Mr Hirsh: An element of our show is entertainment, yes."
The assertion that the Nine footage must have been regarded by Ten as the best parts for it to televise by way of the Panel Segments begs the question as to whether Ten's object or purpose in re-broadcasting the same is identical to or different from Nine in broadcasting the same in the first place. Ten's case would be that it selected for the most part what it considered apposite for the object ort purpose of satire, comedy, or light entertainment (see again Nationwide News at [15], [17] and Mance LJ para 107 reproduced in [18]).
31 Nine seemed initially to accept in principle, in the context of its alternative submissions in [29] above as to measurement by programme in lieu of a single visual image, that the object or purpose of a television broadcaster in re-broadcasting another television broadcaster's "visual images" may be relevant in assessing whether particular visual images comprised a substantial part of a programme. However Nine would characterise Ten's object or purpose involved in any of its copying of Nine's programmes as referrable only to income derivation, rather than to any issue of substantiality in the law of copyright: I further extract below from Nine's submissions as follows:
"Here the object of the copying was to take advantage of precisely how our broadcast was shown… They wanted to show how our broadcast was shown… Here the very thing is, if one takes their statement of what they wanted to do in The Panel show… was [to] present what had appeared on television in the form in which it had appeared on television for whatever purpose they will now say, they did it." (transcript p327)
And in similar vein:
"… here's our commercial interest, that is to fill up TV screens with footage which people want to watch. Here's their commercial interest, it's exactly the same. They don't have the footage we have. Some of the footage we have is terrific to watch and it may be terrific to watch for all sorts of reasons but in terms of footage per se it has a value and the value to both of us is the same." (transcript p335)
As was pointed out however by Mance LJ in Marks & Spencer in para 207 extracted in [18] above, the notion of object or purpose, where used in the context of the principles concerning substantiality in relation to published edition, is not concerned with the gaining of commercial advantages by the infringer, but rather with the use which is made by the alleged infringer.
Subsequently in response to my questions as to the purpose of Ten's copying of allegedly substantial parts of Nine's television broadcasts, and in particular Ten's purpose in using the footage of Nine, was different to the purpose of Nine in broadcasting the same in the first place, Nine submitted in response as follows (transcript p379):
"That is a distinction which is very difficult to relate to the law of copyright. If they're saying watch this, enjoy it as a visual image, what's the difference? There's an assumption that some of their viewers or many of their viewers will have the same in many cases lack of taste that they have…."
Enjoyment however of a visual image per se, and enjoyment of for instance a satirical play upon part of an original television programme having a melodramatic nature, may well involve a relevant difference in terms of object or purpose.
Ten's submissions on substantiality
32 Ten commenced the substance of its submissions with reference to the Gregory Report, referring in particular to paras 117 and 118 thereof (extracted at [21(i)] above) in the course of tracing relevant legislative evolution to the enactment in Australia of s 87 of the Act. Ten then referred to the Attorney General's introduction of the Copyright Bill to the Australian Parliament containing the definition of "television broadcast" extracted in [6] above, being a definition identical in terms to s 14(10) of the UK 1956 Act, and submitted that plurality of the words included within the s 10(1) definition of "television broadcast" namely "visual images" and "along with those images" did not provide support for Nine's primary proposition that a single visual image constitutes an independently protected Part IV copyright. The definition of "television broadcast" in s 14(10) of the Copyright Act 1956 (UK) did indeed commence with the words "… means visual images broadcast by way of television…". In support of that contention, Ten pointed to the introductory line of s 10(1), namely "In this act, unless the contrary intention appears…".
33 Ten next submitted that the s 10(1) definition of "broadcast" requires transmission "to the public", and that visual images are not in any technical sense transmitted to the public, but only a signal which is sent out by a television broadcaster for part only of a twenty-four hour day in the early times of television, and which is now sent out continuously for 24 hours a day by almost all television stations. Ten then referred to the words used in para 116 of the Gregory Report, namely "… a new right should be given to the broadcasting organisations in their own programme…", and submitted that since "the broadcast made by a television broadcaster is constituted as a matter of ordinary English by various elements such as programs, news items, advertisements, station identifications and other familiar subject matter over the course of a period of time", it follows that the "only two serious competitors in the analysis (ie as to substantiality in relation to television broadcast copyright) are a period of one day or a period of seven days". In support of that radical submission, Ten referred to "… the way they packaged themselves…", and thus to the evidence given by Mr Stephens, Nine's Director of Programs (transcript pp265-266), in relation to the composition of Nine's daily programs, and to Nine's announcement to sections of the media of its ordinary programming on a weekly basis. Ten further pointed to the following words of the s 10(1) definition of "television broadcast", namely "…broadcast by way of television…," and submitted that since the same does not contain an expression such as "broadcast by way of a television program", the definition does not allow for the notion of a television programme for the operation of the s 14(1)(a) or otherwise. I would intrude to point out the equally obvious, namely that the definition does not stipulate "… broadcast by way of a signal", Ten expanded upon this submission as follows (transcript p406):
"… the television signal is generated by a transmitter. When the transmitter is switched on the copyright starts, a broadcast commences. When it's switched off the broadcast ends, in a technical sense, and there's nothing to see on the screen so that visual images are no longer broadcast.
…
… the signal is constant in the sense that something is being sent although the visual constituent of the signal will vary depending on what's being shown. That is continually changing. It changes every time the image or the sounds change, which is all the time."
The primary cases of the parties thus take the respective extremes of a split second (ie a single image), in the case of Nine, and of not less than twenty-four hours, in the case of Ten.
34 Before leaving Ten's submissions concerning television signals and the implications thereof in terms of s 14(1)(a) referrable to television broadcast copyright, I would point out that the Gregory Report did not only use the word "programme" in para 116. I would refer also to "It (ie the B.B.C.) assembles its own programmes and transmits them at considerable cost and skill", to "indifferent reproductions both of sound and television programmes have been made…" contained in para 117 of such Report, and to the words "… to make records of their programmes… for subsequent use in repeat programmes" contained in para 118 of such Report, as to all of which see their full context in 21 above. I would also refer to the use of the word "programme" in para 286 of the Spicer Report [21(iii)]. Moreover in the Broadcasting Act 1942 (as amended), the s 4(1) definition of "televise" means "to operate a radiocommunications transmitter to the general public of television programs". Whilst Nine's primary case as to individual visual image copyright does not sit well with the use of the word "programmes" in the passages I have extracted from the Gregory Report, nor does Ten's contention as to twenty-four hour or weekly signals.
35 Upon the basis of the submissions set out in [33] above, Ten's submissions concluded as follows:
"In the present proceedings, the applicants are out on a limb with their characterisation of what is the broadcast. This is because they have not proved the length or composition of any of their daily broadcasts or their weekly broadcasts as a benchmark against which to test the issue of substantiality. Unless the applicants are correct on their primary arguments, the Court cannot assess the question of substantiality, whatever the appropriate criteria may be."
But of course if Nine is correct on its alternative contention in principle as to television broadcast copyright residing in each individual programme or segment of a programme, this submission falls away.
36 As to the definition provisions of s 25(4)(a), upon which Nine placed so much reliance [27], Ten responded that whilst the same makes it clear that photographs can infringe, there would still need to be sufficient photographs to amount to a substantial part of an identified broadcast, and Ten seeks support for that contention from para 295 of the Spicer Report (extracted at [21(iii)] above) to the effect that what s 25(4)(a) was designed to achieve was the exclusion of any suggestion that a series of still images would never infringe television broadcast copyright. Furthermore, s 25(4)(a) was said by Ten to address a different kind of technology and a different kind of right, namely the technology involved in the taking of a physically enduring photograph of part of a momentary television broadcast, and not a momentary re-broadcast of a momentary original broadcast (as to which I have already made reference at the close of [28] above). Hence, so that submission continued, the text of s 25(4)(a) has nothing to say in relation to a re-broadcast within s 87(c), and relates only to the operation of s 87(a). Or put another way, s 87(c) relates only to the production of a signal by way of re-broadcast, which in no sense, technical or otherwise, is "a photograph of any part of a broadcast" (to adopt the description in para 295 of the Spicer Report), or to adopt what became the statutory description in s 87(a), namely "a cinematograph film of the [television] broadcast, or a copy of such a film". Thus, so it was illustrated by Ten, s 25(4)(a) and s 87(a) would apply to prohibit the video taping or photographing of visual images for the purpose of producing posters or advertisements, which was the thrust of the legislative intention.
37 Ten thereafter submitted, in response to Nine's contention summarised in [28(iv)] above, that the reason for the omission from the s 10(1) definitions of "television broadcast" and "sound broadcast" of the further s 10(1) expressions "aggregate of the visual images… [including] the aggregate of sounds embodied in the sound-track associated with such visual images", and "aggregate of the sounds embodied in a record" in the respective s 10(1) definitions of "cinematograph film" and "sound recording", was to reflect the changes in technology, addressed for instance in para 93 of the Gregory Report [21(i)], from the technology which had been originally addressed by the Copyright Act 1911 (UK), and that the use of such expressions involving the word "aggregate" did not carry the significance contended for by Nine, namely to impute to the respective definitions of "television broadcast" and "sound broadcast" the inclusion of references to a single image and a single sound respectively. In this context Ten subsequently submitted in terms which justify reproduction in full:
"Broadcasting is different because broadcasting is momentary. You never have an article which can hold permanently. If you tape a broadcast you produce a cinematograph film and that definition attaches. A broadcast itself may be evanescent, momentary and never recorded. That why there's a structural approach in the Act which differentiates between the aggregate of matters embodied in a more permanent article, when the Act speaks about cinematograph film and sound recordings, and, on the other hand, simply the description of the momentary image of broadcast, together with any sounds, when one turns attention to a television broadcast." (Transcript p 395).
Consequently, so it was further submitted by Ten, it is not possible to disconnect the statutory expression "visual images" by selecting any one of the same and characterising such image as a broadcast.
38 Ten next addressed the issue as to the implications of the s 14(1)(a) notion of "substantial part" in relation to a television broadcast, and in particular the significance of the distinction between Part III and Part IV subjects of copyright, and after citing the following passage from Nationwide News concerning published editions of works set out in [15] above containing the dictum "But since it is the quality of the material taken that is the key issue, the quantity is not the only, nor necessarily the principle criterion", Ten drew attention to the recent decision in the Court of Appeal in England in Marks & Spencer plc and in particular the passages cited from the judgment of Peter Gibson LJ concerning quantity considerations in particular, which are extracted in [18] above.
39 The last component of Ten's submissions upon the issue of substantiality concerned the relevance or otherwise of the object or purpose of an alleged infringer in taking the subject matter of copyright, in relation to which I have already referred to judicial discussions in [15-16] and [23] above. It is appropriate to cite verbatim certain passages from the submissions of Ten appearing on transcript pp 404-5, which were largely directed to Nine's submissions in [31] above:
"… the commercial purpose we point to which sits with our analysis of one week or one day is…. [to] identify a target audience, the kind of show it is and if part of that show, to use a neutral word, is included in [Ten's] broadcast it is legitimate to have regard to those factors, what it's aimed at, what it's designed to do and what the footage that you see is achieving for the general commercial purpose of the station. One doesn't need to say, well, all this is simply television or entertainment.
…if we took a number of parts of the week's episodes and assembled them rather like a Reader's Digest condensed book at the end of the week and said, well, this is what happened in Days of Our Lives over the past five days and we then, say in four minutes, gave a summary of what had happened by reference to little parts of their broadcasts, that would be to substitute the same commercial purpose.
That would be to say, you don't need to spend five hours this week watching Days of Our Lives, we will give the round-up, it's a condensed book. That would be a circumstance in which our object of putting out a potted summary of Days of Our Lives overlapped with the commercial purpose of Nine in putting it over in the usual way… But in our case, of course, the Days of Our Lives episode which has been borrowed is the one where Marlena becomes possessed and… [reacts] to her levitation. Now, the showing of that is not for the same commercial purpose… it's for the purpose of generating some amused interest to highlight the… quintessentially melodramatic nature of the production, to generate amusement because by taking it in a short slab, one doesn't have to watch the week to have a look at it, that is a perfectly legitimate but different commercial purpose. So what we say… that's an example of where the commercial purposes of the two uses of the material are taken into account but we don't, in that example in our submission, offend, overlap or compete in the necessary sense on the level of commercial purposes."
40 Ten's summary of its written submissions was consequently as follows:
(a) a primarily quantitative approach should be taken;
(b) the commercial purpose of the utilisation of the excerpts in the question should be looked at; and
(c) matters of technical significance in the excerpt with respect to the broadcast may also be relevant."
Conclusion on the statutory meaning of "a substantial part" of a television broadcast
41 I would reject the primary submission of Nine that Nine's television broadcast copyright relates to each and every single visual image as a discrete subject matter for the following reasons cumulatively:
(i) The threshold circumstance that the plural, in contrast to the singular, of the statutory concept of "visual image" is alone incorporated throughout the Act, that is to say, in the definition of "television broadcast" (which is preceded by the words "In this Act, unless the contrary intention appears…"), and in the other sections extracted in [5-8] above, namely ss 22(5), 25(4), 87(a) and 101(4).
(ii) The strained and unlikely examples which Nine found itself compelled to put forward to illustrate the statutory notion of substantiality as applied to a television broadcast, namely a single visual image without its accompanying sound, or the "split screen" of a single image (see [28(vi)] above).
(iii) The consistency of use in the contexts cited in [34] above of the words "programme" or "programmes" (or "programs"), which connote a sensible and practical means for measuring the number of "visual images" for the purpose of the operation ss 87(c) and 101(4) of the Act; it would be a question of fact and degree in every case of alleged infringement as to what may constitute a "programme" in a given situation. Incidentally, for what it may ultimately matter, I do not think that it would be sensible to include television advertisements preceding and following the broadcast, for instance by way of illustration, of a television programme consisting of an interview, as part of the preceding or subsequent programme (as the case may be). Television advertisements should be treated as discrete television broadcasts, particularly since "A television or cinema commercial is typically the product of the creative and administrative work of many separate individuals…": Copinger, supra, 14th ed at para 27.341. I would reject Ten's submission that because advertising is the "life blood" of commercial television broadcasting, it is "…impossible for [Nine] to avoid the conclusion that these advertisements are part of that program." Moreover, where a given programme divides into segments, it may be legitimate in the facts of a given case to use a segment of a programme for measurement of the television broadcast, rather than the whole of the programme.
(iv) For the reasons indicated by Ten set out in [36] above, which I would adopt and therefore need not repeat, and also for the reasons indicated by my concluding observation made in [28] above, the interpretation provisions of s 25(4)(a) have no relevant bearing upon the meaning or operation of s 87(c) of the Act, and are confined in application to the operation of s 87(a). When read together, as Ten submitted, ss 24(4)(a) and 87(a) have a sensible operation in relation to video taping or photographing visual images, for instance for the purpose of producing posters or advertisements. Whilst the definitions of "television broadcast" and "sound broadcast" do not of course contain the words "aggregate of the visual images" and "aggregate of the sounds" respectively appearing in the definitions of "cinematograph film" and "sound recording", I do not think that Nine's contention gains thereby any assistance of significance. There are potentially so many more kinds of programmes or segments of programmes which might be the subject of a television broadcast, other than of course the television broadcast of a cinematograph film, that it is understandable that the draftsman would use the respective expressions "visual images broadcast" and "sounds broadcast". The more difficult proposition seems to be that which Nine is bound to address, namely why the latter statutory expressions did not explicitly spell out reference to "one or more visual images broadcast" (or indeed "one or more sounds broadcast"), if that was the legislative intention? The unreality of copyright protection for every single image (with absence of photographing or filming reproduction) may be seen from the extract from Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs supra at para 7.34 in [20] above, and in particular the sentence "yet in an average feature film a single frame forms less than 0.001 per cent of the total".
(v) The decision in Spelling Goldberg provides no assistance of any analogous kind, because of the material legislative differences explained in 28 above between the UK 1956 Act definition of "cinematograph film" and the Australian Act present definition of the same expression. In any event, Spelling Goldberg provides no conceivable analogy. It cannot be sensibly postulated that an ephemeral or evanescent single image has any discernible value, in the absence of permanent reproduction by way of photocopying or filming as envisaged by s 87(a).
(vi) Circumstances concerning the extent of infrastructure investment involved in television broadcasting (see [28(v)] above) assist to explain why television broadcast copyright became the subject of Part IV protection, but do not provide a reason for the Legislature to confer broadcast copyright in relation to each and every single visual image of a television broadcast.
42 I would also reject the primary submission of Ten that Nine's television broadcast copyright is to be measured by the length of time of transmission of each of Nine's television signals dispatched by its television station, and would thus comprise the aggregate of all visual images broadcast by Nine over a period of not less than one day or alternatively not less than one week, irrespective of the number of programmes thereby involved for the following reasons:
(i) The context in which television broadcast copyright was first afforded legislative recognition was the protection of the broadcaster's "programme" or "programmes"; I have already referred to the occasions of use of those words in the Gregory Report and the Spicer Report in [42(i)(iii)] above and in the definition of "televise" in the Australian Broadcasting Act, each of which implicitly provide such useful indicia, albeit in different contexts. I do not think that it can be reasonably postulated that the expressions "programme" and "programmes" were intended by the British and Australian Legislatures to be measured by reference to the totality of broadcaster's signal, whether involving the aggregate of its daily or weekly broadcasting activity, or otherwise, any more than was each single visual image so intended. The Act seems to me to envisage that the statutory expression "visual images", for the purpose of determining television broadcast copyright, is to be distinguished from the means of broadcasting the same. I refer also the second extract from Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs, supra at para 7.3 appearing in [19] above, where the distinction is drawn between the visual images ("the message") and the means of carrying the same ("the broadcast waves").
(ii) To the extent to which firstly, object or purpose and secondly, quality may be material to the statutory notion of substantiality, there would be impractical difficulty in application across the spectrum of a daily, and much more a weekly, "signal" comprising a multiplicity of programmes, and indeed the very legislative objective of protecting television broadcasters against the "pirating" of their programmes (para 288 of the Spicer Report extracted in [21(iii) above) would be rendered otiose.
(iii) Ten's focus upon the television signal, for purpose of measurement of the "visual images" intended to be protected, would tend to subvert the maintenance of a measure of symmetry between television broadcasts and cinematograph films, particularly given that television broadcasts frequently comprise the visual images and sounds of a cinematograph film which a television station acquires for television re-broadcasting; it is true that copyright protection in relation to published edition of newspapers, the principles of infringement of which have, as I have earlier indicated, analogous ramifications for television broadcast, does not relate to newspaper reports or articles individually, but to the typographical lay-out etc, but of course the technical considerations involved in the presentation of published edition of newspapers on the one hand and television broadcasts on the other hand involve radical differences.
43 Having rejected each of the primary contentions of the parties as to how television broadcast copyright should be ascertained and measured in terms of protection, it follows that the only feasible candidate must be a television broadcaster's programme, or respective segments of a programme, if a programme is susceptible to subdivision by reason of the existence of self contained themes. Moreover in the case of commercial television, an advertisement should logically be treated in the same way as a separate programme, particularly given the difference in theme, the circumstance of discrete production, and the factor that the intellectual property rights involved in any one advertisement would be often complex, with at least some normally being vested in the advertiser (see again [41(iii)] above). In addition to exclusion of advertisements from programmes or segments of programmes for purposes of copyright protection, I would also exclude so-called "station breaks" and "station logos". The same do not bear in any relevant sense "an essential relationship" to the programmes or cognisable segments of programmes, any more than advertisements: cf Ainsworth Nominees Pty Ltd v Andclar Pty Ltd (1988) 12 IPR 551 at 556-7. It therefore becomes necessary to determine the principles governing the ascertainment of "a substantial part" of the television broadcast copyright inherent in a television programme and any segment thereof (as to which see examples propounded by Nine in [29(i)] above). For convenience, I will include hereafter in the expression "programme" any segment thereof, unless otherwise explicitly stated, and as earlier indicated, what may amount to a television programme or alternatively any segment thereof will require an assessment to be made in each case, based upon fair and reasonable judgment in the light of what the law may be taken to sensibly protect as a question of fact and degree. Thus in the case of a television programme containing successive themes or stories, particularly when segregated by advertisements, fairness and reasonableness may stand in the way of an artificial or unrealistic quantification spanning an entire and more lengthy programme presented with a single title.
44 Ten's threefold submissions as to what constitutes a substantial part of the subject matter protected by television broadcast copyright, summarised in [40] above, closely reflect the true construction and operation of the Australian Act, subject only to the requirement, for reasons already given, for measurement of visual images taken by reference to programmes (or perhaps segments of programmes). As earlier mentioned in this judgment, television broadcast copyright is attributable not to originality, as in the case with Part III works, but to technical considerations associated with the infrastructure of production. Nevertheless, technical considerations involve notions of quality, in the way of presentation, as explained in Nationwide News at [15] and in Marks & Spencer [18]. The primary concern of at least the Australian Legislature for protection of television broadcasters appears to have related to piracy (Spicer Report paras 286 and 288 extracted in [21(iii)] above), and I think the same may be said of the UK Legislature, apart from its concern as to poor quality in reproduction inherent in the reproduction of unprotected broadcast copyright (Gregory Report paras 116 and 117); see also Mance LJ paragraph 107 extracted in [18], where reference is made to piracy. In these circumstances, in the absence of authority directly addressing television broadcasting, but with assistance from authority in Australia and the United Kingdom addressing the Part IV analogy of published edition, I am of the opinion that Ten's summary of submissions appearing in [40] above are substantially correct and require only the minor qualification.
45 Ten has apparently borrowed the theme of "a primarily quantitative approach" appearing in [40(a)] above from paragraph (26) of the judgment of Peter Gibson LJ and from paragraph (72) of the judgment of Chadwick LJ, as extracted from Marks & Spencer in [18] above. The judgment of Mance LJ, the remaining member of the court in Marks & Spencer formulated the test in paragraph (105), further extracted in [18] above, by reference to the words "essential" and "material part", which reflect the description of the Federal Court in Nationwide News of the notion of quality, as Mance LJ also said, "But lack of creativity does not mean a lack of all characteristics apart from volume" (paragraph (104) extracted in [18] above). The test was further expressed in Nationwide News [15] to the effect that neither quality or quantity is necessarily the principal test, so much depending on the quality of the presentation and layout of the published edition in each particular case, and how much thereof has been taken by the infringer, and in determining how that test is to be applied, the practical task is to determine whether the taking occurred "… in circumstances in which it can be inferred that harm will be caused to the publisher's commercial interest in the whole of the published edition". Or as put by Mance LJ in paragraph (105) extracted in [18] above in the context of adoption of the Federal Court's approach in that latter respect, "It is not the quality of the information, comment or other contents in any article that matters. Typographical arrangement copyright is concerned with presentation and appearance. What matters is the extent to which the typographical arrangement is reproduced, both in terms of volume and in terms of appearance", and His Lordship appears to draw by way of illustration the contrast between "pirating" on the one hand, and insignificant interference with the copyright owner's commercial interest on the other hand, thereafter pointing out that the defendants/appellants "… did not create anything which could be regarded as resembling… any significant part of the relevant newspapers viewed as an entire publication". Whilst therefore Ten's adoption of the expression "primarily quantitative approach" can be soundly argued in a particular case of broadcast copyright, I do not think that the same wholly encapsulates the test for published edition enunciated in Nationwide News, which in turn must provide the closest of analogies to television broadcasting. Although of course these proceedings relate to television broadcast copyright and not to published edition copyright, I think that the tests explained in Nationwide News in relation to the latter subject matter are capable of reasonably analogous adaption to television broadcast copyright, especially where published edition relates to newspapers. More specifically, the notion of substantiality falls to be determined as a matter of degree by reference to the quality of presentation and screen appearance of the programme which has been taken, as well as the quantity of the programme in terms of viewing time which has been also taken, with sometimes more emphasis to be placed on the former than the latter, or vice versa, depending on the circumstances of the case and in particular, what has been actually copied. Or put another way by Nationwide News in more practical terms, can it be concluded, for instance in the present circumstances of dispute, that harm has been caused to Nine's commercial interest in the whole of its particular programme?
46 As to Ten's second summarised submission extracted in [40(b)] above, I would conclude that in principle, the object or purpose of taking may be material to the resolution of an issue as to whether the substantial part of a television broadcast copyright has been taken, though I think that care must be taken to avoid the application of that test in a mutually exclusive way from the tests concerning quantity and quality identified in [45] above. As indicated in [15] above, in the context of the comparable Part IV copyright of published edition, the judgment in Nationwide News adopted a passage from Copinger (13th ed), supra at 175 containing the words "… regard must be had to the nature and objects of the selection made…", and Mr Ricketson's work took up that theme, stating "In relation to issues of substantiality, a wider range of purposes may be taken into account" (again in [15] above). Consistent with these views is the passage lastly appearing from paragraph (107) of the judgment of Mance LJ in Marks & Spencer extracted at [18] above, which contains the words "… the appellants' primary purpose". Thus if the primary purpose of an alleged infringing television broadcaster in taking visual images from its competitor for presentation in a programme is for a different use than that to which its competitor has put the same, it may be concluded that though the alleged infringer has thereby gained a commercial advantage, it cannot in any realistic sense be postulated that it has done so as a competitor of the copyright holder, or has in any event occasioned harm to the copyright holder's commercial interest in the whole of its programme, or has been otherwise guilty of piracy. Particularly will that be so where what has been so taken may not reasonably be regarded as taking something reasonably representative of that which the complaining copyright owner had previously broadcast. By way of example, in particular circumstances, the taking of a relatively minuscule segment of a competitor's television broadcast for the object or purpose for instance of satire, comedy, or light entertainment particularly in the wider context of a free and democratic society, may well in particular circumstances fall within "… the Tribunal's sense of fairness" (to cite again Professor Cornish at the conclusion of [13] above), rather than constitute the kind of "pirating" of which for instance the Spicer Report spoke in para 288 (see [21(iii)] above).
Authorities relating to fair dealing for the purpose of criticism or review and for the purpose of reporting news
47 Generally speaking, both parties relied upon statements of principle from the same authorities. As will later emerge, the difficulty in resolving the issues arising concerning fair dealing lies in the application thereof. The texts of ss 103A and 103B have been already extracted in [9-10] above, and their respective provisions pick up reference to a television broadcast by virtue of the s 100A definition of "audio-visual item". An important aspect of s 103A in the context of the subject proceedings is that the criticism or review may be of the audio-visual item infringed, or another audio-visual item or a work, the latter expression referring of course to any of the Part III works. As stated in [9] above, the s 10(1) definition of "sufficient acknowledgment" is confined to "a work", which is in turn confined to a literary, dramatic, musical or artistic work, so that what constitutes a "sufficient acknowledgment" within s 103A falls to be determined in the light of any relevant differences between Part III works and the particular Part IV subject matter being addressed, and otherwise as a question of fact in the circumstances of each case. I am informed by Ten that it is customary to indicate an "acknowledgment" in the circumstances of at least television broadcasting in any event. The fair dealing provisions of ss 103A and 103B of the Act relating to audio-visual items came into force in 1986, in the context of the Explanatory Memorandum later referred to and partly extracted. Prior to that time, there was already in force s 41 of the Act relating to fair dealing with literary, dramatic, musical or artistic work (and an adaption of any of the first three of such works) for the purpose of reporting news, and s 42 relating to fair dealing for the purpose of reporting news. No corresponding or similar provisions have been incorporated into Part IV of the Act, so that the matters to which regard should be had are at large, subject of course to such assistance as can be obtained from the authorities.
48 An appropriate starting point for review of authorities relating to fair dealing is the decision of this court in De Garis v Neville Jeffress Pidler Pty Ltd (1990) 37 FCR 99 (Beaumont J), where consideration was given to the common law origins of the defences of fair dealing, and to the subsequent Australian and United Kingdom authorities upon the respective Australian and UK statutory provisions until the handing down of the judgment in 1990. After referring to the common law origins of the doctrine of fair dealing, Beaumont J at 107, set out the Macquarie Dictionary definitions of "criticism" as follows:
"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."
and of "review" as follows:
"1. A critical article or report, as in a periodical, on some literary work, commonly some work of recent appearance; a critique…"
Such definitions have not changed over the past decade. Then his Honour continued at 107: "It would seem that the word 'review' in the sense in which it is to be understood in s 41 is cognate with the word 'criticism'. It may be said that one is the process and the other is the result of the critical application of mental faculties…". One of the reasons for his Honour's conclusion that the Neville Jeffress activities could not be characterised as either "criticism" or "review" for the purposes of s 41 was that the same did "… not appear to extend to the passing of a judgment as to the merit of the articles identified".
49 As to the meaning of "fair" in relation to a dealing within s 41 of the Act, his Honour found assistance in the following often cited passage appearing in Hubbard v Vosper [1972] 2 QB 84 at 94 (per Lord Denning MR)
"It is impossible to define what is 'fair dealing'. It must be a question of degree. You must consider first the number and extent of the quotations and extracts. Are they altogether too many and too long to be fair? Then you must consider the use made of them. If they are used as a basis for comment, criticism or review, that may be fair dealing. If they are used to convey the same information as the author, for a rival purpose, that may be unfair. Next, you must consider the proportions. To take long extracts and attach short comments may be unfair. But, short extracts and long comments may be fair. Other considerations may come to mind also. But, after all is said and done, it must be a matter of impression. As with fair comment in the law of libel, so with fair dealing in the law of copyright. The tribunal of fact must decide…"
Thus, it will be appreciated that factors relevant to the notion of substantiality may overlap with those relating to fair dealing. Further extracts from Lord Denning's judgment in Vosper are cited in [51] below in Time Warner. Beaumont J also cited the following passage from University of New South Wales v Moorhouse (1975) 133 CLR 1 at 12 per Gibbs J, in the context of a dispute in relation to s 49 of the Act, as follows:
"The principles laid down by the Act are broadly stated, by reference to such abstract concepts as 'fair dealing'… and it is left to the courts to apply those principles after a detailed consideration of all the circumstances of a particular case."
And further the following passage from Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 56 per Mason J as follows:
"I am inclined to allow that 'news', despite its context of 'the reporting of news' 'in a newspaper, magazine or similar periodical', is not restricted to 'current events'."
And also in the same context, Beaumont J at 108 cited from the judgment of Romer LJ in Hawkes and Son (London) Ltd v Paramount Film Service Ltd (already referred to in [13] above in the context of discussion of the notion of substantiality) at 609 as follows (inter alia):
"… The paper would also, of course, be entitled to publish a photograph of the boys marching past the Prince of Wales. But what they would not be entitled to do would be to say: 'For the benefit of those who were not able to be present, we publish the principal 28 bars of the Colonel Bogey march'. That is just what the defendants have done. They have, for the benefit of those who were not present, photographed the boys marching past the Prince of Wales; and have also provided, for the people who would see it, a representation of the 'Colonel Bogey' march."
50 To the judicial dicta cited in De Garis, I would add reference to the dictum of Ungoed-Thomas J in Beloff v Pressdram Ltd [1973] 1 All ER 241 at 262 (also [1973] RPC 765 at 786):
"The relevant fair dealing is thus fair dealing with the memorandum for the approved purposes. It is fair dealing directed to and consequently limited to and to be judged in relation to the approved purposes. It is dealing which is fair for the approved purposes and not dealing which might be fair for some other purpose or fair in general. Mere dealing with the work for that purpose is not enough; it must also be dealing which is fair for that purpose; whose fairness, as I have indicated, must be judged in relation to that purpose."
That passage in Beloff has since been frequently cited since, for instance, in British Broadcasting Corporation v British Sky Broadcasting Ltd (1991) 21 IPR 503 at 514, where Scott J also added reference to what had been much earlier said in Johnstone v Bernard Jones Publications Ltd [1938] 1 Ch 599 at 607 as follows:
"I think there is much force in the contention of counsel for the plaintiff that any oblique motive, as he expressed it, would render the publication of the letter in question an unfair dealing."
51 Subsequent to the decision of this Court in De Garis, there has been, first in point of time, an important decision of the Court of Appeal in the United Kingdom in Time Warner Entertainment Co Ltd v Channel 4 Television Corporation PLC (1993) 28 IPR 459, which related to copyright in a well known cinematograph film. The passage from Vosper extracted in [49] above was approved by Neill LJ (with whose judgment Farquharson LJ agreed), as was the following further passage from Vosper at 94:
"A literary work consists, not only of the literary style, but also of the thoughts underlying it, as expressed in the words. Under the defence of 'fair dealing' both can be criticised. Mr Vosper is entitled to criticise not only the literary style, but also the doctrine or philosophy of Mr Hubbard as expounded in the books."
And after referring to a further passage from Beloff at 263 that "fair dealing is a question of fact and impression", Neill LJ added at 467: "One has to consider whether the allegedly infringing material may amount to an illegitimate exploitation of the copyright holders' work". Henry LJ agreed with the other members of the Court of Appeal in Time Warner, and added the following further observations and analysis at 468-9:
"The mischief at which the Act is aimed is to prevent copyright owners of works which they have put in the public domain from picking and choosing as to who may review their works, when they may do so, and what clips they may use….
But even if it is assumed that the infringing excerpts were arguably not fairly representative, would that defeat the fair dealing defence? In my judgment as a matter of law it would not. As Lord Atkin said in a different context: 'The path of criticism is a public way: The wrong-headed are permitted to err therein…': Ambard v AG for Trinidad and Tobago [1936] AC 322 at 335. 'Fair dealing' in its statutory context refers to the true purpose (ie good faith, the intention and the genuineness) of the critical work - is the program incorporating the infringing material a genuine piece of criticism or review, or is it something else, such as an attempt to dress up the infringement of another's copyright in the guise of criticism, and so profit unfairly from another's work? As Lord Denning said in Hubbard v Vosper… 'it is not fair dealing for a rival in the trade to take copyright material and use it for his own benefit'.
If it is the former, in a genuine criticism of the decision or to withdraw that work from the public domain, it seems to me that the defence is not lost if the offending excerpts might arguably be thought to be (in relation to the original film) unbalanced or unrepresentative… If satisfied that the theme and purpose of the criticism was genuinely as summarised above, I would not regard such imbalance as raising an arguable case that the fair dealing defence was not available. Likewise, the other side of the same coin, if the intention was to profit from the breach of copyright… under the pretence of criticism, then no matter how fair or balanced or representative the infringing excerpts might be, the purpose would not be that of criticism and review, and so would not have the protection of the s 30 defence…."
52 Both parties professed reliance upon the subsequent unanimous decision of the UK Court of Appeal in Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605. The circumstances in that case involved the television re-broadcast of an excerpt from a German television programme broadcast by a British television station, in relation to which the trial judge had rejected the defences of the broadcaster based upon the corresponding (though not identical) provisions of the Copyright Act 1988 (UK) to ss 103A and 103B of the Australian Act. The Court of Appeal adopted statements of principle appearing in the judgments in Vosper, Beloff and Time Warner to which I have already made reference, and in explaining that the trial judge had focused too little on the likely impact of the television excerpt which had been copied, and too much on the actual purposes, intentions and motives of the programme producers, the Court of Appeal enunciated the following principles:
(i) "It is a question of degree or of fact and impression…The degree to which the challenged use competes with exploitation of copyright by the copyright owner is a very important consideration, but not the only consideration. The extent of the use is also relevant, but its relevance depends very much on the particular circumstance … ." (at 613)
(ii) "If the fair dealing is for the purpose of criticism that criticism may be strongly expressed and unbalanced without forfeiting the fair dealing defence; an author's remedy for malicious and unjustified criticism lies (if it lies anywhere) in the law of defamation, not copyright." (at 613)
(iii) "'Criticism or review' …are expressions of wide and indefinite scope. Any attempt to plot [its] precise boundaries is doomed to failure. They are expressions which should be interpreted liberally…However, it can be said that the nearer that any particular derivative use of copyright material comes to the boundaries, unplotted though they are, the less likely it is to make good the fair dealing defence." (at 614)
(iv) "Criticism of a work need not be limited to criticism of style. It may also extend to the ideas to be found in a work and its social or moral implications." (at 614)
53 The most recent United Kingdom authority to which I was referred in relation to the defence of fair dealing for the purpose of criticism or review was the further decision of the UK Court of Appeal in Hyde Park Residence Ltd v Yelland [2000] 3 WLR 215, which related to a defendant newspaper's publication of two prints of the Princess of Wales and Mr Dodi Fayed outside the plaintiff's Paris villa, and which prints were made by a member of the plaintiff's staff without its consent. The newspaper sought to justify its conduct by reference to the United Kingdom equivalents of ss 203A and 203B on account of an alleged contradiction between what the photographs disclosed and what Mr Fayed's father had been publicly asserting. So far as concerns the issues of fair dealing in the proceedings before me, the Court of Appeal's decision may be treated as unanimous. Aldous LJ, who wrote the leading judgment, re-affirmed the essence of that part of the judgments in Vosper, Beloff and Pro Sieben to which I have referred in [49], [50] and [52] above. In para 38 at 227, Aldous LJ then said as follows:
"Section 30 looks at the use made of the copyright work, not who the owner was or is. Thus the court must judge the fairness by the objective standard of whether a fair minded and honest person would have dealt with the copyright work, in the manner that 'The Sun' did, for the purpose of reporting the relevant current events, in this case the published untruthful statements of Mr Al Fayed.
…
To describe what the Sun did is to give honour to dishonour. Further the extent of the use was excessive."
Sufficient acknowledgment
54 I come then to the requirement of "sufficient acknowledgment" for the purpose of Ten's s 103A defence. As earlier indicated in [9] above, the definition of that expression in the Australian Act applies only to Part III works, so that "sufficient acknowledgment" in relation to a Part IV subject matter is at large, subject to the observations I have already made in [47] above, and must be a question of fact in each case in relation to whatever "subject matter" is the subject of consideration. The following extract from Pro Sieben at 618 provides a measure of guidance for the purposes of assessing what may constitute a "sufficient acknowledgment" within s 103A in relation to a Part IV work such as a television broadcast:
"Mr Silverleaf accepted that identification of an author would normally and naturally be achieved by communicating, by spoken works or writing or both, his correct name or, if the author wrote under a pseudonym, the name by which he was known as an author. But Mr Silverleaf submitted that the television transmission of a logo could also constitute identification for the purposes of section 178, especially if the logo was the means by which the author of a television programme was accustomed to identify itself, and if the use of the correct name was unlikely to have any particular significance to the bulk of the audience. In this case there was evidence, from Mr Michael von Dessauer, a vice president of Pro Sieben, that his company used the logo (of a stylised "7") as an identification. The fact the company's correct name and postal address was used on business communications is unsurprising and does not detract from that evidence. There was also evidence that the normal audience for Pro Sieben programmes in England is, for obvious reasons, very small and not representative of the general body of Carlton viewers. I would accept Mr Silverleaf's submissions and hold that the defendants succeed in making good a defence under section 30(1)."
Ten's submissions upon fair dealing defences
55 Since Ten carried the onus of establishing these defences upon the hypothesis that Ten had infringed Nine's television broadcast copyright, it is appropriate that I first summarise Ten's submissions. Ten referred me to the Explanatory Memorandum to the Copyright Amendment Bill 1986 which introduced ss 103A and 103B to the House of Representatives of the Australian Parliament, and in particular, the following paragraphs 25, 26 and 27:
"25. As is the case in sections 41 and 42 of the Act, upon which the two new sections are modelled, what amounts to a fair dealing is a matter to be determined on the facts of each case. The dealing must, however, be genuinely for the purpose permitted in the sections, and not for some other "hidden" purpose. Sections 103A and 103B are intended to operate (as do sections 41 and 42 of the Act) as complete defences to actions for infringement. A number of factors may be considered in determining whether the defence is made out, such as the nature of the material, the amount and substantiality of the part of the material used, and the effect of the dealing on the commercial value to the copyright owner of the material.
(I interpolate to mention that the reference above to "hidden purpose" picks up the corresponding description "oblique purpose" used in Johnstone (see [50] above, and that once again, the overlapping of concepts of fair dealing with those of substantiality may be recognised).
26. Section 103A will permit fair dealing with an audio-visual item for the purpose of genuine criticism or review, whether of that or another audio-visual item or of a work. A "sufficient acknowledgment" of the item must be made. Existing section 41, and the proposed section 103A, have their basis in common law, which provided that a dealing would not be defensible as criticism or review if one person's material were used by another only to his or her own benefit. The purpose of this fair dealing defence is to allow use of parts of materials to carry out the criticism or review which is ordinarily expected or sought by the copyright owner, and which provides information and comment for possible consumers and audiences.
27. Section 103B will permit fair dealing with an audio-visual item for the purpose of, or associated with, the reporting of news. If the dealing occurs in a newspaper or the like a "sufficient acknowledgment" must be made."
In relation to the last sentence of the above para 26 of the Explanatory Memorandum, Ten submits "Where a broadcaster enters the arena, it expects and sometimes invites criticism. It hopes for criticism where what has been produced is good and it risks criticism where its efforts have been poor". Ten added in oral submission at transcript p435: "[Television Broadcasters have] got a strong and powerful asset and the public is entitled to have that scrutinised by criticism and review…" Such submission as to criticism needs to be qualified by reference to the adjective "genuine", in the contexts where used in the above extracts from the Explanatory Memorandum, and in the passage from the judgment of Henry LJ in Time Warner extracted in [51] above.
56 Ten accepted the proposition that if it had used the Panel Segments as a "potted" substitute for entertainment, so that a television viewer could obtain ready and easy access to the same in a shorter time, such kind of activity on its part would constitute an unfair dealing. Ten exemplified such proposition as follows (transcript p418):
"If I put up as a television station, if I broadcast snippets of another television station series so that I could round up in say 10 minutes what's taken them 5 hours to broadcast at the end of the week, the best of Days of Our Lives, the most interesting moments, that would be an unfair dealing because we would [be saying], don't bother spending a week watching it on there, look at it on Friday night on Channel Ten and we'll tell you everything that has happened during the week and if you missed it, catch up."
A further example may be illustrated from the passage cited from Hawkes in [49] above. Ten denied that it had so used any of the Panel Segments, and I think that its denial is justified. But it does not follow that Ten has qualified for fair dealing protection in relation to each of the television broadcasts in issue.
57 Ten next submitted that the purpose for which it had utilised Nine's footage by its Panel Segments had been by way of review and discussion of current issues, and in particular as such issues arose or emerged in the context of Nine's recent television programs. Ten added as follows (transcript p419):
"We submit your Honour will not reach the conclusion that this is simply an uncomplicated show, that there is a serious element in this show of commenting on how television is going and the way people are doing television, so that it's a commentary, at least to some degree, not taking entertaining footage for its own sake…the broadcast material which is being shown becomes in most of these examples a platform for comment and that comment… fits squarely within the limits of criticism [or] review in all of the cases."
I would agree with the generality of the foregoing descriptions, notwithstanding that Ten has publicly referred to its programs in terms of light entertainment and comedy themes, as appears from some of Ten's promotional material cited in [2] above.
58 Specifically in the context of its reliance upon s 103B, Ten drew attention to the conceptual difficulty of distinguishing between news and entertainment, and referred to the following dictum of Hill J of this court in Nine Network Australia Pty Ltd v Australian Broadcasting Corporation [1999] FCA 1864 at [36-7] as follows:
"[36] For my part I find the distinction between news and entertainment a very difficult one. It is not one I think which can be resolved by looking at the dictionary definition of the word. In some ways it may well be as difficult as the issue that has dominated the news press over the last few months of some suggestion of difference between commentary and info-tainment or entertainment…
[37] In my view the fact that humour is used does not necessarily negate the fact that what is being broadcast may be news. Hopefully the fact that news coverage is interesting or even to some entertaining likewise does not negate the fact that it could be news. As I have already said the celebrations of the City of Sydney this New Year's Eve are of both national and international significance. The reporting and showing of a part of them on TV by Channel Two as national broadcaster could well fall within s 42".
Section 42 is of course the Part III counterpart to s 103B.
59 Ten next drew attention to the inclusion within s 103A of the words "… whether of the first-mentioned audio-visual item, another audio-visual item or a work…," and submitted that "… providing that the segment is acknowledged, it may be… incidentally utilised by [Ten] in the course of criticism or review of another piece of television, or for criticism and review of a music work or other item for which the television footage is used". That submission as to the construction of s 103A, which picks up the part thereof reading "whether of the abovementioned audio-visual item, another audio-visual item or a work", is correct and not controverted by Nine.
60 A further submission of Ten was founded upon that part of the judgment of the UK Court of Appeal in Pro Sieben as has been extracted in [52(i)] above, and such submission was to the following effect:
But no matter how robust, no matter how excessive, once you're into genuine bona fide criticism it's protected. Otherwise one would have a provision that only allowed totally balanced and conservative criticism or review… it's the dealing that has got to be fair… the fair dealing is the use that's made by the putative infringer. But once you're into fair dealing, properly so-called, even excesses of taste or point of view are accommodated and that's the other main point we want to make about the section, and so it ought to be in a free society…" (transcript p423).
This is a significant submission, particularly because individual tastes obviously vary, and would do so in relation to at least some of the Panel Segments. However the submission tends to circularity in practice, and the critical task remains for Ten to demonstrate that its conduct was relevantly "into genuine bona fide criticism" and "… into fair dealing, properly so-called", as the submission contends. Ten further contended for the proposition that if a portion of a television broadcast is shown in order to provide a platform for discussion about the quality of that broadcast, or of some other work or subject matter addressed in the course of that broadcast, then the court ought to conclude that the dealing is fair. In that context, Ten further emphasised that unlike defamation, which is designed to protect reputation and standing, infringement of copyright has no kind of tortious operation; as was put by Ten in address at transcript p435: "… you enter the arena as a broadcaster and you expect within the limits of fair dealing, criticism will arise, part of the game. You've got a strong and powerful asset and the public is entitled to have that scrutinised by criticism and review…". The defences afforded by ss 103A and 103B, so Ten again emphasised, are not devalued in circumstances where the boundaries of taste or balance are exceeded. So much derives support from the passage extracted from Pro Sieben in [52(ii)] above.
61 Having made the foregoing general submissions, Ten advanced detailed submissions in relation to each of the twenty excerpts the subject of the proceedings, which I will shortly review. Nine has of course done likewise by way of response.