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[2001] FCA 841
Federal Court of Australia
2001-07-04
Conti J
Original judgment source is linked above.
REASONS FOR JUDGMENT Introduction 1 These Reasons for Judgment should be read in the context of and by reference to my Reasons for Judgment furnished on 20 February 2001 in the present proceedings (TCN Channel Nine Pty Ltd & Ors v Network Ten Pty Ltd [2001] FCA 108), which concluded with the finding that the causes of action of the Applicants ("Nine") for breach of television broadcast copyright on the part of the Respondent ("Ten") by way of re-broadcasting pursuant to s 87(c) of the Copyright Act 1968 (Cth) ("the Act"), were not sustainable within s 101(1) of the Act and should be dismissed, for the reason that there did not occur, as stipulated by s 14(1)(a) of the Act, any re-broadcasting by Ten of a substantial part of Nine's programmes the subject of each of such re-broadcasts. Each Nine cause of action related to episodes of the programme "The Panel" broadcast on television by Ten, in so far as such episodes contained re-broadcast excerpts from previously televised Nine programmes. As indicated in [11] of such earlier Reasons for Judgment, on the third day of the hearing Nine sought to further amend the Statement of Claim by propounding alternative causes of action based upon s 87(a) of the Act, and the amendments were allowed by consent upon the footing that such alternative causes of action would be litigated at a later hearing of the proceedings. Such subsequent hearing took place on 14 May 2001. In the context of the earlier proceedings based upon alleged breach of s 87(c) on Ten's part, I had made additional findings partly in favour of Ten, and partly in favour of Nine, in relation to the fair dealing defences raised by Ten in the alternative to Ten's denial of the causes of action for breach of s 87(c) television broadcast copyright (see my outline of such fair dealing defences and a summary of my fair dealing findings at [47] and [73] thereof). Such findings would be also applicable in the context of any alternative finding to which Nine might be entitled for breach of television broadcast copyright of Nine the subject of s 87(a) of the Act. Whether breach occurred of Nine's television broadcast copyright pursuant to s 87(a) 2 For ease of reference, I set out below the respective texts of ss 87, 14(1)(a) and 101(1) of the Act as in force at all times material to the proceedings: "87 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 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; (c) in the case of a television broadcast or of a sound broadcast - to re-broadcast it." "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;" "101 (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 license of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright." 3 Nine submits that irrespective of the meaning or scope of operation of s 87(c) of the Act upon the circumstances of Ten's re-broadcasting activities complained of, and in relation to which statutory protection I found no breach of television broadcast copyright to have occurred, s 87(a) of the Act is governed or controlled by s 25(4), and paragraph (a) thereof in particular, such that infringement occurred in any event in relation to each of Ten's "The Panel" programmes in issue by reason of the operation of s 87(a). The full text of s 25(4) of the Act reads as follows: "25 (4) 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." Nine points out that the text of s 25(4), unlike other interpretative provisions in the Act, is not expressed to have application subject to any contrary intention appearing elsewhere in the Act. Consequently, so Nine's submission continues, s 87(a) should be read and construed as if there was added at the culmination of the literal text thereof words to the following effect: [including… a cinematograph film… of any of the visual images comprised in the broadcast]. Nine places emphatic weight upon the inclusion of the words "of any of the [visual or those] images" in each of the paragraphs of s 25(4). Paragraph (a) of s 25(4) is that which directly applies to the circumstances of Ten's alleged breaches. I should add that the s 10(1) definition of "cinematograph film" is: "the aggregate of the visual images embodied in an article or thing so as to be capable by the use 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." 4 It is common ground that the above definition of "cinematograph film" encompasses the making of a video tape of a television broadcast. As to the making by Ten of video tapes in respect of each of the excerpts from Nine's television broadcasts which were reproduced on Ten's "The Panel" episodes, Nine explains its s 87(a) causes of action by reference to testimony given by Mr Hirsch, the chief executive officer of the corporate Executive Producer of Ten's said television programmes called "The Panel", being the testimony preceding that already extracted at [30(ii)] of my earlier Reasons for Judgment and to be read therewith, as follows: "Mr Bannon SC: In terms of the physicals of actually showing the footage on each show, does that mean that there's a tape which is specially prepared for the precise item of footage which is to be shown which is controlled by somebody at Channel Ten? Mr Hirsch: There's a series of tapes which are put on a Beta Cart machine or on a one inch machine to be played into the program. … Mr Bannon SC: In any event, before the show finally goes to air there are specially prepared one or more tapes prepared by Channel Ten which contain the precise pieces of footage which are going to be aired on The Panel that night? Mr Hirsch: It physically has to be done that way otherwise, how do you put the show to air? …." Nine then makes the critical submission that s 25(4)(a) so operates as to render each and every visual image of the excerpts so taken by Ten from Nine's programmes and incorporated into Ten's relevant videotapes the subject of television broadcast copyright within s 87(a) of the Act. The identification of such relevant videotapes set out in Mr Hirsch's foregoing cross-examination is further explained from [11] below. The issue thus arising for present determination is whether irrespective of the conclusion reached in my earlier Reasons for Judgment of 20 February 2001 in relation to the operation of s 87(c) of the Act upon Ten's re-broadcast of excerpts of Nine television footage in the course of Ten's television production of "The Panel" episodes, the making by Ten of the videotapes of those excerpts from each of the Nine programmes identified in [3] of such earlier Reasons amounted to an infringement of copyright within ss 14(1)(a) and 101(1) of the Act in combination of the subject matter of Nine's television broadcast copyright pursuant to s 87(a), that is to say as contended by Nine, copyright in a substantial part of each visual image of each such excerpt. It is by reason of the impact of s 25(4)(a) upon s 87(a) that Nine contends that television broadcast copyright enjoys such a comprehensive scope. Such was Nine's principal and preferred submission in relation also to s 87(c) - see [29] of my earlier Reasons for Judgment. 5 In partial support of its emphatic reliance upon s 25(4)(a), Nine referred to paragraph 295 of the Spicer Report, which was extracted at [21(iii)] of my previous Reasons for Judgment. In that regard I record in particular however the expressions in such paragraph 295 "provided no two photographs constitute a sequence of images", and "the taking of a photograph of any part of a television broadcast". The former cited expression seems to me to more likely reflect Spicer's concern, as I think Ten rightly points out, for copyright protection against lengthy but disjointed taking, whilst the latter refers imprecisely to "a television broadcast" and in any event does not express or reflect the infringement conduct the subject of Nine's s 87(a) case: see again the pleading thereof set out in [11] of my previous Reasons for Judgment. 6 In [41] of my Reasons for Judgment delivered on 20 February 2001, I provided a number of reasons why I concluded that the television broadcast copyright held by Nine in its twenty programmes the subject of the proceedings did not extend to each and every visual image as a discrete subject matter for protection, in so far as such copyright comprised the exclusive right to re-broadcast each of such Nine television broadcasts pursuant to s 87(c). It was necessary for me to do so because just as Nine relies chiefly on s 25(4)(a) for establishing breach of television copyright pursuant to s 87(a), so in the earlier proceedings, it relied chiefly on s 25(4)(a) for establishing breach of television copyright pursuant to s 87(c). I expressed the view in my earlier Reasons for Judgement that the appropriate means for measuring the subject matter of television broadcast copyright, in order for the "substantial part" provisions of s 14(1)(a) to sensibly operate, should involve the ascertainment of what constitutes the television programme in relation to which the alleged taking or breach of copyright has occurred. That conclusion was contrary to the primary positions of both Nine and Ten, Nine contending for copyright protection of each and every visual image of a television broadcast, which as indicated in [41(iv)] of my previous Reasons for Judgment would involve a copyright duration of broadcasting time of less than 0.001 per cent of the total of an average television feature film, and Ten contending by way of contrast for the duration of a broadcaster's television signal which, in this modern age of virtually continuous twenty-four hour broadcasting provided by commercial television broadcasters (such as Nine) and some pay television broadcasters, would extend to an indefinite opposite extremity to Nine's postulation in effect of a split second. I considered that to adopt as a general rule the measurement of a programme exclusive of advertising segments for television broadcasting, subject to debate in cases of lengthy programmes involving different segments, would provide the Legislature's most likely intended benchmark for the determination of television broadcast copyright, and I referred in that regard to the terminology of "programme" used in extrinsic materials preceding the Australian legislation, as cited in [34] of my earlier Reasons for Judgment. I considered to be significant the need to accommodate the "substantial part" provisions of s 14(1)(a) of the Act. I considered to be further significant the circumstance that the statutory notion of "visual image", where used in the Act, appeared always in the plural rather than the singular number, and in that regard, I referred to the s 10(1) definition of "television broadcast", and to the text of ss 22(5), 25(4) and 101(4) of the Act, as well as s 87(a) itself which now falls for critical consideration. 7 Whether my conclusion as to the scope of television broadcast copyright stipulated by s 87(c) should be of similar or of different dimension in relation to s 87(a) now arises for determination. Ten has submitted that the scope of protection should not be less than what I have found in my earlier Reasons for Judgment, for the reasons set out in sub-paragraphs (i), (ii), (iii), (v) and (vi) of [41] thereof. Ten submits that the Legislature could not have intended that s 87(a) protection, as in the case of s 87(c) protection, should comprise or extend to a single visual image, because "… to hold otherwise would be to grant to television broadcast copyright, a copyright which is attracted by the mere act of switching on a transmitter, [being] a status (in the sense that it would be easy to infringe) far above that granted to other copyrights which are, in general, the outcome of greater creativity, skill, labour and involvement: for example, works under s 31, sound recordings under s 85 and films under s 86". I would add the observation that if s 87(a) applies to a single visual image the subject of a television broadcast, it would follow that s 87(b) would apply to a single sound the subject of a sound broadcast, an equally unlikely matter of legislative intention. Moreover, how the statutory scheme concerning fair dealing defences could accommodate a single visual image has never been explained on behalf of Nine. It is a long established principle of statutory construction that where in a statute, words are used which are capable of more than one construction, the results which would follow the adoption of any particular construction are not without materiality in determining what construction ought to prevail: see Pearce and Geddes Statutory Interpretation in Australia (4th ed, 1996) pp 40-41 headed "Consequences of a particular construction", and the authorities there cited including Brunton v Acting Commissioner of Stamp Duties [1913] AC 747 (PC) at 759. Particularly would that be so in the present case, given the correctness of my conclusion in the earlier Reasons for Judgment upon the scope of operation of s 87(c), and the unlikelihood that s 87(a) would be intended to operate to the extent of any materially different dimension. 8 Although Nine's contention that s 25(4) of the Act, and paragraph (a) thereof in particular, so operates upon the construction of s 87(a) as to require the outcome for which Nine contends, is by no means bereft of some arguably literal force, my conclusion is that such contention must be rejected as not reflecting the impact of the overlay which s 14(1)(a) would permit s 25(4)(a) to have upon s 87(a). Ten submits that the impact of s 25(4)(a) upon s 87(a), as in the case of its impact upon s 87(c), is to ensure that single images are capable of leading to infringement, but without detracting from the need for there to be a sufficiency of them to amount to a substantial part of an identifiable television broadcast, and further that s 25(4) and paragraph (a) thereof in particular does not use the words "any one" or "any one or more", as do ss 79, 83(b), 184(1) and 248U(1) of the Act. In my opinion, Ten's submission upon the relevant scope of operation of s 87(a) is correct, albeit that the latter legislative examples do not relate to visual images, and is not inconsistent with those aspects of the Spicer Report and of the Second Reading Speech to the House of Representatives reproduced at [21(iii)-(iv)] of my Reasons for Judgment of 20 February 2001, both of which may be readily understood in the light of the construction for which Ten contends. 9 I should record that Nine has sought support for its construction of s 87(a), as it did in relation to s 87(c) in the previous proceedings, from the decision of the Court of Appeal in England in Spelling Goldberg Productions Inc v BPC Publishing Ltd [1981] RPC 283, which I discussed and summarised in [28(iii)-(iv)] of my Reasons for Judgment of 20 February 2001. As I there indicated, that litigation concerned the unauthorised taking of a photograph of a single frame of a cinematograph film (not being of course a cinematograph film of a television broadcast), the latter being a longstanding cognisable form of breach of copyright in such traditionally characterised copyright works (see extract from judgment of Buckley LJ in Spelling Goldberg in [15] below), which is not rightly comparable with breach of copyright in visual images broadcast by television, having regard to the ephemeral or evanescent nature of television visual images, in contrast to the permanency of those of a cinematograph film: see again in that regard [41(v)] of my said earlier Reasons for Judgment. Whilst the provisions of s 14(1)(a) concerning the need (at least in Australia) to establish a substantial part of the work or other subject matter of copyright operate subject to any contrary intention elsewhere to be found in the legislation, I am unable to comprehend why any contrary intention should relevantly prevail from any aspect of the Australian legislation. Irrespective of the extent of application of Spelling Goldberg to the provisions of s 86 of the Australian legislation relating to cinematograph films, which may be a matter for debate on another day, I am unable to accept that the same applies to the notion of visual images explicitly within s 87(a), or as I have earlier held, to those implicitly the subject of s 87(c) re-broadcasting. In my opinion, the persistent references in the extrinsic materials extracted in [21] of my earlier Reasons for Judgment to the description "programme" demand what seems to me to most reasonably and realistically accommodate the subject matter of television broadcast copyright, as well as the impact of s 14(1)(a) in relation to such copyright. 10 In the course of oral submissions, Nine sought to place more emphasis upon the operational differences involved between making a cinematograph film of a television broadcast, or a copy of such a film, as addressed by s 87(a) of the Act, and the re-broadcasting of a television broadcast, as addressed by s 87(c) of the Act. Nine sought to confine the ephemeral and evanescent nature of a television broadcast, and thus the implications thereof to copyright, to a television re-broadcast the subject of s 87(c), and to contrast the reference in s 87(a) to the making of a cinematograph film of a television broadcast (see again the definition of "cinematograph film" in [3] above). The submission, which I do not think is sustainable, seems to me however to confuse the nature or manner of breach of television broadcast copyright, that is to say, making a cinematograph film (or a copy of such a film) and making a re-broadcast, with the subject matter of a television broadcast apparent from the s 10(1) definition of "television broadcast" as follows: "… means visual images broadcast by way of television, together with any sounds broadcast for reception along with those images." 11 Nevertheless it is appropriate that I refer to the background material in evidence which supposedly bears materially upon Nine's submission, in order that the full implications of Nine's attempt to distil a contrast of relevance between the means of s 87(a) infringement and that of s 87(c) infringement. In the context of resolving the issue of implied license raised in the alternative by Ten, which I am yet to address, testimony was provided by both Nine and Ten as to the technical capacity of an Australian television broadcaster to obtain material from another Australian television broadcaster, with or without permission, for rebroadcasting by either one of two ways as follows: (i) making a copy on video tape directly from the sending station's off-air or satellite signal; or (ii) redirecting or "pulling down" of a signal from the sending station's off-air or satellite signal through the receiving station's transmitter. 12 The evidence adduced by Ten concerning industry practices as to making such video tapes and using footage therefrom appears in paragraphs 11 to 16 of the Affidavit of its Corporate Relations Manager Mr Carroll, which are reproduced below for ease of reference (which may be read with the testimony of Mr Hirsch to which reference is made in [4] above): "Tapes used in the production process 11. The equipment and tapes used in free to air television production are usually a system known as "BETA". This system is a proprietary system developed by the Sony Corporation and is of a higher quality than "VHS" systems which are used by members of the general public. BETA in its standard SX, digital and digital SX form provides broadcast quality vision and sound. BETA is the term used to identify the system, thus free to air broadcasters use BETA video tapes, BETA video cameras etc. 12. In summary, in my experience, each television station records, uses and retains BETA video tapes in the following ways: (a) "First BETA tapes" - is the tape used by the news exchange operator to record other broadcasts of feeds, footage from overseas agencies, or previous original broadcasts. Footage recorded on this tape is retained for up to a month, before being recorded over. (b) "Second BETA tape" or "Edit tape" - is the tape compiled in the "edit suite" by editing vision, interview excerpts, graphics and the journalist's voiceover form various sources, to complete the story ready for broadcast. After broadcast, these tapes are checked by an editor each evening who is given the task of compiling them onto another tape for library purposes. The second tape is often retained for no more than one day, before being erased and recorded over. (c) "Library Compile tape" - is the tape kept in the station's news library where particularly newsworthy footage from the first or second BETA tapes are copied onto for storage (before the first and second BETA tapes are recorded over). These tapes are either compiled chronologically or by subject or topic, and may include footage from various locations, spanning a period of time - for instance, one set of Library Compile Tapes could be of "Federal Politics interviews." Use of footage in the production process 13. Once the news exchange operator has recorded the footage from an overseas feed or from other "off air" broadcasts at the production desk, the footage ("First BETA tape") is then taken to an "edit suite" to be used in the editing process (an "edit suite" is a desk of electronic equipment used for the purposes of editing both vision and sound). The exact footage required for the particular story is then identified, cut and copied onto a second BETA video tape ("Second BETA tape"), together with the journalist's voiceover (and possibly original footage of the journalist on either side of the footage), other graphics, or library footage to complete the story. Once this process is undertaken, the Second BETA tape is then ready for broadcast. 14. Even though the Second BETA tape footage is usually of the same picture quality as the First BETA tape (due to digital technology), the Second BETA tape is used as a convenient step in the production process as it isolates the required material and there is the opportunity to improve the quality of the audio of the tape (especially from overseas feeds) or to add journalist's vision or audio over the top of the visual images. In my opinion, it is very rare in the television industry to use the First BETA tape for broadcast. 15. As soon as the Second BETA tapes are ready for broadcast, the tapes are taken to a BETA Cart Room that houses the "BETA Cart Machine". A BETA Cart Machine is like a CD stacker in that it can hold a large number of video tapes in a stack that can then be played in any order for inclusion in broadcasts. For any one particular program, the BETA Cart Machine may hold approximately 30 BETA video tapes - each tape will hold one edited story or piece of vision or audio. It would be vary rare for an edited story on a short piece of vision and audio to be entirely sourced from a material broadcast by a rival network. Usually a network will use short excerpts from important interviews, sporting events, or "action" footage (such as a violent demonstration) to illustrate, or report on, a news story. 16. During the broadcast, the BETA Cart Machine is controlled by the Director in the control room. The Director, working from the rundown sheet, determines when the BETA tape will be used in the broadcast." 13 Nine then made the following submission upon the significance, in terms of s 87(a), of such usage on the part of Ten of excerpts from Nine's programmes as I have summarised in [3] of my previous Reasons for Judgment, in order to seek to establish a contrast between the taking of television broadcast copyright pursuant to s 87(c) and the taking thereof pursuant to s 87(a): "…by making a permanent record of a broadcast one has moved from the ephemeral or the evanescent, the difficulty to identify and perhaps study and analyse the contemporaneous broadcasting material. One is now in a position to go with the benefit of a film to study in detail the precise images. One can, by replays or by study of the film or stop starting or pausing, examine and take the full benefit and employment or full study of every precise image. There is in one's hands therefore the weapon of using the broadcast for what it is, which is image by image, if one so chose… with the benefit of the film they have been able to take a part which suits their particular purposes and be quite precise about it by a process of analysis and cutting. They have been able to take just the part they thought was right for their purposes with just the right length and… they have used those parts with the benefit of that permanent copy to project the precise images or seconds of images which they want for their purposes… … there is quite a difference between a permanent record which one can pore over and study, and in this case make a highlighting use, as they have, compared to or contrasted with the ephemeral nature of a broadcast where a few seconds does not occupy in the overall context the sort of attention, in our broadcast, as it does in their broadcast…. … We say that if one needs a difference between C and A, its in the permanent records. Notions of evanescence and ephemerality no longer apply and we ask rhetorically is there a substantial difference between a painting or a photograph. A single photograph enjoys complete copyright. A TV image is a series of individual images. Now they are evanescent and ephemeral on a TV but on a tape you can pause at every single image… If I took a series of photographs of everything which happens on The Panel, I'd have copyright on each, if I was in the studio or any of the Channel Nine shows, perhaps the Today Show. If I took a copy of each one of those images, if Channel Ten was to copy any single one of those images that would be an infringement, a plain infringement of copyright… … In form and substance, what you are there doing is taking advantage of the benefit of each individual image, which is otherwise protectable as a photograph if it wasn't a broadcast…" 14 The affidavit material provided by Ten as extracted in [12] above demonstrates that it is the second BETA tape embodying only the intended excerpt which is physically broadcast per medium of the cartridge inserted at the appropriate time into the Beta tape machine. As has been already indicated in [4] above, Nine's case for breach of television broadcast copyright the subject of the proceedings concerns Ten's use of excerpts of the visual images forming part of Nine's "programming" (to use here a neutral expression), being the excerpts contained on such second BETA or edit tape which has been transferred to the Beta tape machine for broadcasting by Ten in the course of "The Panel" episode. Nine does not seek to make out its case for breach of television copyright by reference to Ten's prior video-taping of the whole or the substantial proportion of the Nine programmes per medium of the first and lengthy BETA tape. Senior Counsel for Nine explained why it did not seek to make complaint in that latter regard at transcript pages 14 and 15, albeit in the course of outlining Nine's reasons for rejecting Ten's alternative defence of implied licence, which explanation I extract below: "Insofar as there is intermediate copying, which is as a step to possible exercise of one's rights under the fair dealing defences but which doesn't eventuate or result in a further rebroadcasting, then to the extent that stations are aware of what precisely other stations do, and there is no evidence that they are and there's no way that they could be but let's assume that they had a general belief, there is no commercial point in suing somebody for that internal copyright process which may be justified on the basis that we haven't made any decision to re-broadcast any of this, we have only copied it generally to have a look at it as a whole for the purposes of exercising our fair dealing rights and (a) there is no point in suing on that and (b) there may well be a very good defence to it, not based on implied license of a positive consent but based on saying we have a fair dealing right and this is the step in the exercise of that right. No station has a particular interest in seeking to test that. It's one thing to say there may be a good and proper step in the exercise of the statutory fair dealing defence, it's a far cry from that to say that amounts to a positive license authorising the act as being a non-infringing act… the next step is they exercise a specific judgment and say in relation to that part, we are going to make a specific copy for the sole purpose of rebroadcast. At that point they have committed themselves to identifying the part which they are going to rely on for fair dealing purposes and they take the risk." 15 Consistently with what I have already found in [10] above, I am unable to accept Nine's submission advanced in [13] above that "… by making a permanent record of a broadcast one has moved from the ephemeral or the evanescent", such as to exclude the latter characteristic attributable to television broadcast copyright (as mentioned in [10] above), including that the subject of s 87(a). As I indicated in [10] above, Nine makes that submission in order to endeavour to demonstrate that s 87(a) copyright protection, and irrespective of the scope of s 87(c) copyright protection, relates to circumstances akin to traditional cinematograph film protection. As was observed by Buckley LJ in Spelling Goldberg at 296: "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… ." What Nine thus fails to acknowledge by its foregoing submission is that the process of "capture" by one television station of another television station's signals, whichever of the technical processes are adopted (as to which see again [11] above), relates to the ephemeral and the evanescent nature of such signals, irrespective of what the "capturer" thereafter does with the signals by way of storage for possible future use or by way of immediate use. 16 I should add for completeness that what Ten undertook in any event by its presentation of excerpts from Channel Nine programmes in the course of the Ten Panel programmes constituted conduct within the description of re-broadcasting within the meaning of that expression contained in s 87(c), notwithstanding that prior to re-broadcasting, Ten engaged in the video-taping processes (ie cinematograph filming processes) to which reference has been made above. Nine's Technical Operations Manager Mr Greenwood drew the operational distinctions which I have summarised in [11] above in his affidavit evidence, but agreed under cross-examination that at no time during his preceding association of twenty years with the television broadcasting industry had he ever experienced the second process there referred to, namely the redirection or "pulling down" by a television broadcaster of another television broadcaster's signal and the re-broadcast of the same forthwith. While his evidence was to the effect that such activity was technically possible, there were programming reasons "as well as other reasons" why that particular method of re-broadcasting would not be followed. "Re-broadcasting" is not of course a defined expression, and in the context of Division 2 of Part IV of the Act, simply means broadcasting again what another television broadcaster has already broadcast on television. Yet if I understood Nine's further contentions correctly, Nine sought to contend in this second stage of the proceedings that one view of s 87(c) of the Act was that it applied to the re-direction or "pulling down" process, and not to the video taping process, alternatively referred to in [11] above. I am unable to comprehend how any such distinction can justifiably be drawn. Whichever process referred to in [11] above might be adopted, the subsequent step (if any) which would be taken would be that of re-broadcasting. Nine has of course raised its case based upon breach of s 87(a) by way of alternative to that which it originally pleaded for breach of s 87(c), and may well not have consigned its s 87(c) case to such relative insignificance, had both causes of action been litigated contemporaneously. 17 Incidentally, the only reported judicial precedent to which I have been referred involving one television station rebroadcasting the visual images of another is Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605, to which I made reference at [52-53] and [60] of my previous Reasons for Judgment in the context of fair dealing defences. Nothing contained in the leading judgment of Robert Walker LJ in the UK Court of Appeal in Pro Sieben (see in particular p 607-609 of the Report) requires any contrary view to be expressed to that which I have indicated in these Reasons for Judgment.
18 I conclude that there is no viable basis for the proposition that s 87(a) of the Act should be so construed as to attract television broadcast copyright to each and every visual image of any such broadcast which is made the subject of a cinematograph film (or copy of any such film). The consequence therefore is that television broadcast copyright within s 87(a) of the Act is relevantly of similar dimension as that the subject of s 87(c), in that both must relate to significantly more than a single visual image of a television programme, and further that in order to afford to television broadcast copyright a sensible operation, particularly in the light of s 14(1)(a) of the Act in relation to which s 87 neither expresses or nor implies any contrary intention, the same should normally be related to a television programme or an identifiable segment thereof, as I postulated in for instance [43] of my earlier Reasons for Judgment, and what amounts to a television programme (or any identifiable segment) and a substantial part thereof within the scope of s 14(1)(a) must be a matter for judgment in each case. 19 I would add that as in the case of alleged breach of television broadcast copyright pursuant to s 87(c), I cannot identify any reason in principle why the object or purpose of taking may not be material to the resolution of proceedings for alleged breach of the same matter of copyright pursuant to s 87(a) and in particular to the impact of s 14(1)(a) in relation thereto. I would repeat and adopt as here also applicable in terms of principle what is set out in [46] of my abovementioned Reasons for Judgment of 20 February 2001. 20 In the result, I would dismiss the causes of action for breach of television broadcast copyright brought by Nine based upon s 87(a) of the Act, in addition to the causes of action for breach of s 87(c) which I dismissed on 20 February 2001. In the light of that conclusion, it becomes strictly speaking unnecessary to determine Ten's defence propounded in the alternative to breach of television broadcast copyright, namely that of implied license based upon trade practice and usage. Nevertheless it is appropriate that I determine that alternative issue. Whether Ten was authorised to contravene s 87(a) by implied license 21 Ten's pleading of this alternative defence was in the following terms: "9B … the making of the video tapes of parts of the Nine Programs for subsequent rebroadcast by [Ten] in the course of The Panel program was carried out with the implied license of [Nine] based upon trade practice and usage in Australia. Particulars Australian television stations including [Nine] and [Ten] regularly make video tapes of television broadcasts on BETA format cartridges as a step in preparation for possible rebroadcast of such material for the purposes of criticism, review or the reporting of news. The making of those video tapes without more is within the implied license constituted by the usage and practice of the television industry." The defence is thus directed to the assembly of the "Second Beta" or "Edit" tape, and not the "First Beta tape", referred to in the extracts from Mr Carroll's affidavit set out in [10] above. I should mention that Nine made the following objections to such extracted paragraphs, namely to the whole of paragraph 12, to the words "or from other 'off-air' broadcast at the production desk" in paragraph 13, to the last sentence of paragraph 14 and the last two sentences of paragraph 15, upon the ground that Mr Carroll's experience in the television industry had been confined to Seven (from 1988 to the beginning of 1992), to Nine (from February 1992 to June 2000), and thereafter to Ten (as from July 2000), and that therefore he was not qualified to speak of television industry practices among all Australian television stations for the entirety of that period. I indicated that I would read the objected material, subject to relevance being established in address. Senior Counsel for Ten accepted in any event that Ten had to establish that up until the moment of rebroadcast, the technical steps which must necessarily be in position for re-broadcasting are by consent of the television industry treated as "innocuous copyings". Up until that time, so Ten contended, there was no competitive advantage to be obtained by making and holding for the time being such in-house tapings, and it was only after that time that infringement was otherwise to be evaluated. Moreover thus far, so the contention continued, no unilateral notice had been given by any Australian television station to bring this asserted usage to an end. 22 Nine's position was essentially as extracted in [13] above, and further that contrary to Mr Carroll's assertion, Nine did not copy the news programmes of television stations other than those produced by Channel Seven. Cross-examination of Mr Carroll confirmed and/or revealed the following circumstances: (i) His experiences at Channel Seven and Nine in relation to copying were confined to the areas of news and current affairs, usually of a sporting nature. (ii) All "feeds" or "splits" with which he was personally involved at Seven and Nine involved the use of Beta equipment, and took place in the context of obtaining "the specific consent of the rival network for the split". (iii) It was not uncommon in his experience for television stations to make complaints to other television stations "about improper use of material" (transcript page 31). (iv) The quantities of footage of news the subject of "feeds" were only obtained "in small quantities". (v) He was not fully conversant with the current practices of Seven, ABC and SBS concerning Beta recordings of other programmes. (vi) He was unsure of Ten's precise current practices concerning the recording of the programmes of other networks on at least a daily basis. (vii) Whilst he had been involved at Nine with the use of footage provided on an agreed "split feed" basis by other networks, he had understood that such use "… was constrained by fair-dealing requirements" based upon "a news judgment factor". (viii) He had recognised that if he involved Nine "… beyond the fair dealing requirements, the station could be in trouble for copyright infringement". 23 For completeness as to Mr Carroll's evidence, I should set out below the following paragraphs 22 and 23 of his affidavit: "22. In the 13 years I have been in the television industry: (a) I have never made a complaint to another network regarding copying or usage of footage; and (b) I have never received a complaint from another network regarding copying footage in the manner I have outlined above. 23. However, during the 8 years I worked for Channel Nine, I recall receiving a couple of complaints from the ABC regarding Channel Nine's use of certain ABC footage from the 'World at Noon' program. Channel Nine had copied the footage from the ABC program at 12pm and rebroadcast it on its 6pm News. The ABC complained about this use as Channel Nine had shown the 'exclusive ABC' footage prior to the ABC showing it on its 7pm News." 24 The only other potentially material evidence or the issue of implied license, beyond the confined nature of Mr Carroll's testimony, comprised certain affidavit testimony from Nine's Director of News Mr Fenn, to the effect as follows: (i) Nine's practice had been to review Ten's 5.00pm news, but not to alter Nine's "run down sheets" as a consequence for the purposes of its 6,00pm news; nor would it so do as a result of viewing Channel 7's promotions. (ii) Nine's News Department would record Channel 7's 6.00pm news bulletin for the purposes of reviewing Channel 7's stories, and to "quality check the footage that Nine camera men had taken"; such recording was not made for the purpose of re-broadcasting. (iii) Nine's New Department did not record the news broadcasts of Ten or the ABC, nor did it keep a news library for the news programs of Ten, or of Channel 7 or of the ABC; to the extent that Channel 7's recorded news was kept, this was only for about a week and only Nine footage was forwarded to the news library. (iv) Nine had made a number of complaints to other television stations in relation to their use of Nine news footage; since his involvement, he has "endeavoured to ensure that Nine does not use other television stations' news footage in its news programs". (v) To the extent that footage from other television stations is to be rebroadcast by Nine, a specific purpose copy of the proposed rebroadcast footage is made, upon the footing that Nine would have to rely on fair dealing defences for rebroadcasting such copy; in the absence of a specific request and approval, which was not made in relation to Nine footage excerpts which have been displayed by Ten on The Panel programme, Nine has not consented to re-broadcasting. 25 Nine has referred me to a number of authorities concerning implied licensing of copyright material, but many of which are of marginal assistance because their context was a prior contractual relationship, and the issue was one of implication of a contractual term, rather than as trade usage per se. Copinger and Skone James on Copyright (14th ed, 1999) p 321 encapsulates the principle potentially here applicable as follows: "It is clearly possible that a trade custom or practice may exist whereby works are accepted on all sides as being liable to be copied etc. The usual difficulty will be to show that the usage or custom is invariable, certain and general, as opposed to mere common practice." In a passage often cited from Walter v Steinkopff [1892] 3 Ch 489 at 499, the foregoing precept is illustrated: "The attempt to show that the Times agreed to this journalistic practice of copying, from the fact of its having taken extracts from other papers than the St James' Gazette, is a ludicrous failure; for the Times has shewn that in thirteen out of sixteen instances adduced by the Defendants the explanation is complete, most of them being cases in which the matter was inserted in the Times at the express request of the other papers, specially communicated to them in order that they might insert it; and the few others are trivial matters, doubtless susceptible of easy explanation at the time." Further in Avel Pty Ltd v Multicoin Amusement Pty Ltd (1990) 171 CLR 88 at 123, McHugh J relevantly observed to not dissimilar effect as follows: "… in the context of the correspondence between the distributor, its lawyers and Williams, I think that the proper conclusion to draw is that Williams had no objection to the importation of its machines into Australia. It is another question, however, whether lack of objection to the importation of Williams machines into Australia constitutes a license from the owner to import those machines into Australia. No doubt indifference may reach a stage where authorisation or permission may be inferred… But a failure to object or even an intention not to take any action to object to the importation of articles does not necessarily constitute a license to import them." 26 Another illustration of the potential shortcomings of common business practice in relation to the copyright is the case of Banier v News Group Newspapers Limited [1997] FSR 812, which involved a photograph of Princess Caroline of Monaco taken by the plaintiff, being a photographer of international repute, which was published in The Times under license but in circumstances as to dispute of the terms of the licence. News for its part published the photograph without any asserted license or permission, not having been able to make contact with the plaintiff's agent before the deadline for publication. Lightman J at 815 observed: "This may be common newspaper practice and one which newspapers normally get away with. The risk of infringement proceedings may from a business and circulation point of view be worth taking: it may be economic to 'publish and be damned'. But it is plainly unjustified and unlawful and the sooner this is recognised the better for all concerned. The adoption of this practice is not a passport to infringe copyright." 27 The conclusionary inferences which may be drawn from the evidentiary material adduced in the proceedings are as follows: (i) It is the practice of at least the majority of the major Australian television broadcasters, if not all of them, to make video-tape recordings (which may be taken to equate with the statutory description of cinematograph films) of televised broadcasts made by their respective competitors, and to store such recordings in their respective libraries; there is insufficient material to establish implied mutual agreements between telecasters to such effect, which is understandable, since in the absence of any subsequent use made of such video-tapes of the broadcasts of one station by another station which was recorded the same, the television station copyright owners' basis for complaint would presumably be academic. (ii) It is also the practice of at least the majority of Australian television broadcasters, if not all, to occasionally re-broadcast some relatively minor parts (in terms of length) of such video-tape recordings, being a practice to which I would refer by the description "excerpt re-broadcasting", upon the footing that by so doing, the re-broadcast would fall or be likely to fall, in the view of the re-broadcaster, within one or more of the fair dealing defences stipulated by the Act. (iii) By undertaking the re-broadcasting step described in (ii) above, the television broadcaster would be likely to recognise and appreciate that there was some risk of not sustaining a fair dealing defence if its conduct was to be subsequently challenged by the copyright holder of the television broadcast, though in the case of re-broadcasting for the purpose of or in association with the reporting of news, such risk would tend to be less than the circumstance where the only defence conceivably open to be established was that of having a purpose of criticism of review. (iv) There does not exist in Australia, at least among the major television broadcasters, such as those the subject of the present proceedings, any established trade practice or custom constituting a mutually implied license to the effect that a television broadcaster is entitled to make a video tape of a programme, or an excerpt of a programme, previously broadcast by another television broadcaster, for any purpose, and that the second-mentioned television broadcaster would consider itself uninhibited from making complaint or seeking redress, unconstrained by any supposed existence of any custom or usage to the contrary, by such processes as it may judge to be appropriate in the circumstances of the case, where the infringement of copyright has occurred in circumstances outside what it may consider to be the perceptibly justifiable protection of applicable fair dealing defences. 28 I therefore would have held that had Nine been able to sustain its cause of action against Ten for breach of s 87(a) of the Act (and also of s 87(c)), a defence of implied license or usage would not have been rightly available to Ten. I certify that the preceding twenty-eight (28) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Conti.
Associate: Dated: 4 July 2001 Counsel for the Applicant: Mr AJL Bannon SC Dr DT Kell
Counsel for the Respondent: Mr JM Ireland QC Mr R Cobden
Solicitor for the Respondent: Blake Dawson Waldron
TCN CHANNEL NINE
NETWORK TEN
(1990) 171 CLR 88