University of NSW v Moorhouse [1975] HCA 26;

University of NSW v Moorhouse [1975] HCA 26; - HCA 1975 case summary — Zoe

[7]

GIBBS J. Mr. Frank Moorhouse (the first respondent) is the author of a number of short stories which were originally published at various times in different magazines and are now published together in the form of a book, under the title "The Americans, Baby". There are twenty stories in the book, and some of them are connected either in theme, or because the characters in one reappear in another. By a memorandum of agreement executed on 11th November 1971 Mr. Moorhouse granted to the second respondent, which is a publisher, the right (exclusive in Australia) to print, publish and sell that work on payment of royalties, together with certain additional rights. The present proceedings were commenced by the respondents in the Supreme Court of New South Wales. The proceedings appear to have been instigated, or at least supported, by the Australian Copyright Council, which is naturally concerned to protect the copyright of its members from infringement. In the belief that some of the copying of copyright material which is done within university libraries, by the use of photocopying machines, amounts to an infringement of the copyright, it was decided to commence a test case against a university, and for this purpose it was arranged that one Paul Brennan, a graduate of the University of New South Wales, should make an infringing copy of a literary work by the use of a photocopying machine in the library of the University of New South Wales. Accordingly on 28th September 1973 Mr. Brennan attended at the library of the University of New South Wales, obtained two books from the shelves, and made two photocopies of one chapter or story, of about ten pages, from each of those books, one of which was "The Americans, Baby". Mr. Brennan was not called as a witness and it was not established exactly what part of "The Americans, Baby" was copied. The other work copied was a book called "Happy Times" but no evidence was given that that work was subject to copyright. Mr. Moorhouse did not know beforehand that it was proposed to make a copy of part of his book but was later informed what had been done and agreed to join in bringing the present proceedings against the present appellant, the University of New South Wales ("the University"). (at p8)

[17]

8. The first question for decision on the cross-appeal is whether the copyright of Mr. Moorhouse was infringed by the University when Mr. Brennan made the two copies of part of "The Americans, Baby" on 28th September 1973. The combined effect of ss. 13(1), 14(1)(a), 31(1)(a)(i), 36(1) and 40 of the Act, so far as they are material to the present case, may be summarized as follows: the copyright in a literary work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, reproduces or authorizes the reproduction of the work, or of a substantial part of the work, in a material form, unless the reproduction is "a fair dealing" with the work "for the purpose of research or private study". In the circumstances of the present case it is impossible to hold that the University itself did the act of photocopying which was alleged to have infringed the copyright. Mr. Brennan was not the servant or agent of the University for the purpose of making the copies. Similarly it is impossible to hold that Mr. Brennan made the copies on behalf of the librarian of the University, and for that reason s. 49, which provides that copyright is not infringed by the making of a copy by or on behalf of a librarian under the conditions stated in that section, has no application to the facts of the present case. The University can only be liable if it authorized the doing of the act of photocopying by Mr. Brennan and if that act amounted to an infringement of copyright. In relation to the latter question no serious issue arises. The evidence that one chapter or story of the book was copied was not challenged and if the copyright was in the book as a whole, rather than in each separate story, each of the stories would have constituted a substantial part of the book, since although they formed part of what was called "a discontinuous narrative" each was a complete short story in itself. The copies were not made in circumstances that would give rise to the protection of s. 40; there was no evidence that Mr. Brennan made them for the purpose of research or private study but it appears to have been common ground that they were made simply to provide evidence in proceedings intended to be commenced against the University. It is accordingly unnecessary to discuss the meaning and scope of the expression "fair dealing" in s. 40. The only question that remains is whether the University authorized the act done by Mr. Brennan that infringed the respondents' copyright, namely, the making of the photocopies. (at p11)

[19]

10. The word "authorize", in legislation of similar intendment to s. 36 of the Act, has been held judicially to have its dictionary meaning of "sanction, approve, countenance": Falcon v. Famous Players Film Co. (1926) 2 KB 474, at p 491 ; Adelaide Corporation v. Australasian Performing Right Association Ltd. [1928] HCA 10; (1928) 40 CLR 481, at pp 489, 497 . It can also mean "permit", and in Adelaide Corporation v. Australasian Performing Right Association Ltd. [1928] HCA 10; (1928) 40 CLR 481 "authorize" and "permit" appear to have been treated as synonymous. A person cannot be said to authorize an infringement of copyright unless he has some power to prevent it: Adelaide Corporation v. Australasian Performing Right Association Ltd. (1928) 40 CLR, at pp 497-498, 503 . Express or formal permission or sanction, or active conduct indicating approval, is not essential to constitute an authorization; "Inactivity or 'indifference, exhibited by acts of commission or omission, may reach a degree from which an authorization or permission may be inferred'": Adelaide Corporation v. Australasian Performing Right Association Ltd. (1928) 40 CLR, at p 504 . However, the word "authorize" connotes a mental element and it could not be inferred that a person had, by mere inactivity, authorized something to be done if he neither knew nor had reason to suspect that the act might be done. Knox C.J. and Isaacs J. referred to this mental element in their dissenting judgments in Adelaide Corporation v. Australasian Performing Right Association Ltd. Knox C.J. (1928) 40 CLR, at p 487 held that indifference or omission is "permission" where the party charged (amongst other things) "knows or has reason to anticipate or suspect that the particular act is to be or is likely to be done". Isaacs J. apparently considered that it is enough if the person sought to be made liable "knows or has reason to know or believe" that the particular act of infringement "will or may" be done (1928) 40 CLR, at pp 490-491 . This latter statement may be too widely expressed: cf. Sweet v. Parsley [1969] UKHL 1; (1970) AC 132, at p 165 . It seems to me to follow from these statements of principle that a person who has under his control the means by which an infringement of copyright may be committed - such as a photocopying machine - and who makes it available to other persons, knowing, or having reason to suspect, that it is likely to be used for the purpose of committing an infringement, and omitting to take reasonable steps to limit its use to legitimate purposes, would authorize any infringement that resulted from its use. Cases such as Mellor v. Australian Broadcasting Commission (1940) AC 491 and Winstone v. Wurlitzer Automatic Phonograph Company of Australia Pty. Ltd. [1946] VicLawRp 53; (1946) VLR 338 are consistent with this view. Although in some of the authorities it is said that the person who authorizes an infringement must have knowledge or reason to suspect that the particular act of infringement is likely to be done, it is clearly sufficient if there is knowledge or reason to suspect that any one of a number of particular acts is likely to be done, as for example, where the proprietor of a shop installs a gramophone and supplies a number of records any one of which may be played on it: Winstone v. Wurlitzer Automatic Phonograph Company of Australia Pty. Ltd. [1946] VicLawRp 53; (1946) VLR 338 . (at p13)

[20]

11. In the present case the University made available to a section of the public the books in its library - at least those in the open shelves - and provided in the library the machines by which copies of those books could be made. It seems to me that the University must have known that it was likely that a person entitled to use the library might make a copy of a substantial part of any of those books. It is true that the machines were not used exclusively for the purpose of copying books; they were extensively used to copy lecture notes and other private documents. Moreover, not all of the books which might be copied were subject to copyright. However, in the nature of things it was likely that some of the books which were subject to copyright and which were in the open shelves might be copied by use of the machines in a manner that would constitute an infringement of copyright unless some means were adopted to prevent that from being done. It could not be assumed that persons making copies of works in which copyright existed would do so only in circumstances which amounted to a fair dealing for the purpose of research or private study, at least in the absence of any effective measures to ensure that any other copying of copyright works was forbidden. The University was aware of the assertions of the Australian Copyright Council that "unlawful and undesirable practices are commonplace within the universities", and although it may have regarded these claims as exaggerated, it had been given enough information to raise the suspicion that some infringing copies were likely to be made. In fact the Vice-Chancellor of the University wrote on 17th July 1972 to the Australian Copyright Council, in reply to a letter which claimed that some of the copying done in university libraries amounted to a clear infringement of the copyright in the work which was reproduced, saying that "there seems no reason to doubt that most photocopying in university libraries is within the spirit and meaning of the law"; the implication of course was that some photocopying at least amounted to an infringement. The learned trial judge went so far as to find that much photocopying of copyright material which was not a fair dealing for the purpose of research or private study was taking place in the library of the University, and that this, if not positively known by the University, was suspected. He said that he was assisted to the finding that many infringements were taking place by the fact that the University had failed to attach to the machines notices in a form prepared at the request of the Australian Vice-Chancellor's Committee and sent to the University in October 1969. The form set out an interpretation of fair dealing that had been accepted by the Australian Society of Authors and the Australian Book Publishers Association. This form may or may not have afforded useful practical guidance, but it certainly did not state the law as it stands. The failure of the University to use this form of notice was no evidence that infringements were taking place. I have considered carefully the whole of the material, and have come to the conclusion that this finding is insupportable. However, as I have said, the University had reasonable grounds to suspect that some infringements would be made if adequate precautions were not taken. The University had the power to control both the use of the books and the use of the machines. In the circumstances, if a person who was allowed to use the library made a copy of a substantial part of a book taken from the open shelves of the library, and did so otherwise than by way of fair dealing for the purpose of research or private study, it can be inferred that the University authorized him to do so, unless the University had taken reasonable steps to prevent an infringing copy of that kind from being made. (at p14)

[23]

The notice did not mention that copying for the purpose of research or private study was only permissible if it amounted to a fair dealing with the work, although to have said that and no more would not have proved enlightening to most users of the library. In fact a copy of the Act was available in the photocopying room but to provide a copy of a statute whose meaning would be obscure to the layman would not be an effective way of conveying to the users of the library advice as to how they should act to obey the law of copyright. There was, however, a notice on each machine. To place a clearly worded and accurate notice on each machine in a position where it could not be overlooked would be one measure which might be expected to have some value in informing users of the library of the limits which the University imposed on the permission which it gave them to use the machines. However, the notices in fact placed on the machines were ill adapted to that purpose. They merely set out the provisions of s. 49 of the Act. Those provisions, as I have said, apply only where a copy is made by or on behalf of a librarian: they have no application where a person using the library makes a copy for himself. The notices placed on the machines were irrelevant to the position of those persons to whose attention they were intended to be directed. A further step taken by the University was to appoint attendants whose duties included the supervision of the use of the machines. The University librarian was asked to tell the Court what instructions he had given to these attendants, and he replied that he had circulated the relevant provisions of the Act to all members of the staff. He continued: "I had asked those people to supervise the machines, to within their competence, in which it was with the Act, see that it was observed. In particular I asked them to watch out for people who were using the machine for an excessive time or who appeared to be copying old books." No attendant was called to give evidence as to the manner in which these duties were carried out. However, Miss Stockman, a student who had been at the University for about three years, gave evidence of her own experience in making photocopies; the only functions which she had ever observed performed by an attendant related to the maintenance of the machines. The learned trial judge found that the photocopying machines "were unsupervised in any practical and useful sense, with the knowledge of the University librarian". This finding seems to have been based in part on the fact that over a period of about four and a half years no supervisor had ever reported having observed any breach of copyright. The fact that no breaches were reported did not mean that the supervision was inadequate unless breaches had in fact been committed, and except in the case of Mr. Brennan this was not proved. However, on the evidence to which I have referred it is not possible to hold that the supervision was of an effective kind. (at p16)

[50]

14. In the circumstances it was of little importance whether or not the University authorities knew in fact that users of the machines were doing acts comprised in the authors' copyrights. This knowledge or lack of it would not change the terms of the invitation extended by the supply of books and machines. Knowledge could become important if the invitation were qualified in such a way as to make it clear that the invitation did not extend to the doing of acts comprised in copyright and if nevertheless it were known that the qualification to the invitation was being ignored and yet the University allowed that state of things to continue. Then it might be found as a fact that the University authorized the continued state of things, the continued use of its machines to do acts comprised in authors' copyrights, and thus to infringe those copyrights. But in this case the University did not qualify its invitation to users of the library to use its machines. It posted notices setting out s. 49 of the Copyright Act but this section related to copies made by or on behalf of the librarian, not to copies made by users on their own behalf. It published library guides of which those for the years 1971, 1972 and 1973 warned students that they had a responsibility to obey the law under the Copyright Act 1968 and stated that a copy of the Act was available in the photocopying room, but this could not be regarded as a limitation on the invitation apparently extended. The guides also stated that there was an extract from relevant sections on each machine but, as I have stated, this was in fact not so.It is clear to me that this failure was due to inadvertence and confusion on the part of the University authorities but on the facts of the present case it is an important factor. It might be said that the University was entitled to assume that users would obey the law, including the law of copyright, but such an assumption on its part would not qualify the invitation which it extended. (at p23)

[51]

15. Brennan, then, was a user of the library on the occasion in question. He apparently had sufficient right to be there to make him at least a licensee of the library's facilities. He was a graduate of the University and the library was not exclusively an undergraduate or student library. He went there and used the library book or books and the library copying machine in terms of the invitation apparently extended to him. In my opinion the appropriate finding in these circumstances is that the University authorized his acts. It was not necessary, as the learned trial judge thought, to find that he had studied the library guides or the notices attached to the machines or had been influenced by a lack of any supervision intended to prevent or deter breaches of copyright. I find no special relevance, in respect of Brennan's breach and of the question whether the appellant authorized it, in the contents of the library guides. The particular form of notice on the machines is a negative factor in that it did not in any relevant way limit the invitation which was implicitly extended to make use of the machines for photocopying as the user thought fit. The lack of supervision is also a negative factor in that there was no limit expressed by such a supervisor on the use of the machines to which the invitation extended. Brennan by his conduct accepted the invitation which had no relevant qualification to use the book "The Americans, Baby" and the copying machine. The unqualified nature of the invitation sufficiently caused him to do the acts which he did and which were comprised in the copyright of the respondent. It cannot be assumed that if the invitation had been qualified he would have made an unauthorized use of the machine. I am therefore of the opinion that the cross appeal should be allowed and that a declaration should be made that the appellant authorized the doing by Brennan of the act of reproducing the literary work "The Americans, Baby" in a material form and thereby infringed the respondents' copyright in the said work. I do not think that any declaration in a more general form can be made. Proof of an authorizing of a breach of copyright in certain circumstances does not entitle a plaintiff to a declaration that in other circumstances an authorizing of breach had occurred or would occur in the future. This case was frequently described by counsel for the first-named respondent as a test case but it could only be so described in relation to the circumstances proved in evidence. If it was intended to be in some way a test case then it is unfortunate that the occasion of testing was one where this University had inadvertently failed to qualify in any material way the invitation which it extended to make use of the photocopying machines to copy material in the University library. (at p24)

[52]

16. I turn now to the appeal. I find the declaration made in the Supreme Court of New South Wales insupportable. It was not founded on particular breaches of copyright proved to have occurred. It assumed for the purposes of the declaration that acts in breach of the respondents' copyright had occurred (other than the infringement by Brennan to which the terms of the declaration were inapplicable). It was then declared that by certain acts and omissions the appellant authorized such breaches of copyright as had occurred. But once the meaning of the word "authorized" in s. 36 of the Copyright Act is ascertained the question whether by certain acts or omissions a breach of copyright is authorized is a question of fact to be determined in all the circumstances of the case. A declaration of right based on facts found in the particular case can certainly be made but it is not permissible to make a declaration of right which amounts to a conclusion of fact from a hypothetical or assumed state of facts and thereby to enunciate or declare a rule of apparently general application as thought it were a declaration of applicable law. A declaration of right based on hypothetical or assumed facts may be made when the assumed facts can be certainly and exhaustively stated and when the conclusion flowing therefrom is truly a conclusion of law but not when it is itself a conclusion of fact. In the declaration made in the present case the Court has attempted an apparently exhaustive enunciation of the factual circumstances from which an authorizing of breach of copyright should be held to have occurred but this is an attempt to generalize on a factual situation the circumstances of which have not been proved. This cannot be done. I would therefore allow the appeal with costs and set aside the declaration. I would allow the cross appeal and make a declaration in the terms which I have stated above. I would make no order on the costs of the cross appeal as it was only lodged towards the conclusion of the hearing of the appeal. (at p24)

At a glance

Court

Decision date

Before

Source

Judgment (54 paragraphs)

University of NSW v Moorhouse [1975] HCA 26; (1975) 133 CLR 1 (1 August 1975)

Parties

Cases Cited (4)