TCN Channel Nine Pty Ltd v Network Ten Pty
Limited [2002] FCAFC 146
FEDERAL COURT OF
AUSTRALIA
SUNDBERG,
FINKELSTEIN & HELY JJ
SUNDBERG
J:
1
For the reasons given by Hely J and the additional reasons given by
Finkelstein J, with which I agree, the respondent has breached copyright
in each of the broadcasts in suit.
2
Except as to Simply the Best (the Ray Martin
rebroadcast) I agree with Hely J’s conclusions on the
fair dealing defences. I deal specifically with the three broadcasts upon which
Hely J and Finkelstein J differ. They are sufficiently described in their Honours’ judgments, and
I do not need to repeat that exercise. My approach has been to uphold the
primary judge’s decision on the availability of the defences in relation to a broadcast
unless convinced it is wrong. Fair dealing involves questions of degree and
impression, on which different minds can reasonably come to different
conclusions.
The
Today Show ‑Boris Yeltsin rebroadcast
3
The primary judge observed,
correctly, that there can be considerable difficulty in distinguishing news
from entertainment, and concluded, as a matter of judgment and impression, that
the purpose of this rebroadcast was to entertain rather
than report news. Having watched the broadcast several times, on each occasion
thinking it could reasonably be concluded either that the s 103B(1)(b)
defence was made out or that it was not, I cannot bring myself to say that the
primary judge was wrong in deciding it was not.
Simply
the Best ‑ Ray Martin rebroadcast
4
On each of my viewings of this broadcast I had the clear impression that what was involved
was criticism of the set and of the fact that it was not possible to determine
the basis on which the audience was being asked to vote. I am satisfied that
the primary judge’s decision that the s 103A defence was not made out
because of the paucity of evidence which left no “viable basis for
comprehending, much less resolving, what was the true nature of the alleged
criticism and what was the purported basis therefor” was wrong.
Midday ‑
John Howard singing rebroadcast
5
On each occasion on which I
viewed the broadcast my impression was that the Panel was not engaged in
criticism or review of the Midday
presenter (s 103A), and that showing the Prime Minister singing Happy
Birthday to Sir Donald Bradman was not for the purpose of reporting news
(s 103B(1)(b)) but for its entertainment value. That was the primary
judge’s view.
6
I would make the orders
appearing in pars 133 to 135 of Hely J’s
judgment, save that I would uphold the respondent’s Notice of Contention as to Simply the Best and exclude it from the
list of infringing broadcasts.
FINKELSTEIN
J:
7
It is usually apparent whether
a particular work may be the subject of copyright. The precise identification
of that work will also cause no difficulty in most cases. Speaking generally,
copyright subsists in a work of a particular kind, generally a literary,
dramatic, musical or artistic work. But a work cannot
be copyright unless it is fixed in some material form: Tate v Fullbrook [1908] 1 KB 821,
832-833. So the work can be seen and its character and
scope identified. There are, however, some exceptions, and this case deals with
one of those exceptions. This appeal is concerned with copyright in a
television broadcast. The issue is whether Channel Ten
has infringed copyright in a number of television broadcasts made by Channel
Nine. To resolve this dispute it is necessary to identify the precise subject
matter in which Channel Nine claims copyright. The
reason why the subject matter must be identified with
some precision is that copyright can be infringed if either the whole of the
subject matter in which there is copyright or a substantial part of that
subject matter has been copied: s 14 of the Copyright Act 1968 (Cth). Thus the first step in a copyright infringement case is to
identify the work or subject matter of copyright. The second step is to
determine whether the whole or a substantial part of that work or subject
matter has been copied without permission. In some cases there will be a third step. There are exceptions to
the monopoly rights given to copyright owners. Fair dealing is one of those
exceptions. The Copyright Act confers a privilege on third parties to use
copyright material without the consent of the owner in certain circumstances.
The doctrine developed to resolve the tension between, on the one hand, the
monopoly granted to the owner and, on the other hand, the public interest.
8
A television broadcast differs
from most other subject matter in which there is copyright because it does not
exist in any tangible form. According to s 91 of the Copyright Act,
copyright subsists in a television broadcast made from a place in Australia.
Section 99 provides that the maker of the broadcast is the owner of that
copyright. But what is a “television broadcast”. The
answer is to be found principally in two definitions
in s 10. First there is the definition of
“television broadcast” which means “visual images broadcast by way of
television, together with any sounds broadcast for reception along with those
images.” The second is the definition of “broadcast” which means “a
communication to the public delivered by a broadcasting service within the
meaning of the Broadcasting Services Act
1992.” Channel Nine is such a service.
9
I will return to these
definitions in a moment, but before doing so I wish to draw attention to some
other provisions in the Copyright Act. The first is s 101
which sets out what conduct will infringe copyright in a television
broadcast. The section relevantly provides:
“(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 authorizes the doing in Australia of, any act comprised in the
copyright.
…
(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.”
10
This takes us to s 87 where there is an explanation of the nature of copyright that
subsists in a television broadcast. Section 87 provides that
copyright in relation to television 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 or communicate
it to the public otherwise than by broadcasting it.”
11
These provisions show that in so far as a television broadcast is concerned copyright
subsists in visual images (and any accompanying sound). To understand what
these images are, it is instructive to refer to another subject matter of
copyright, namely a cinematograph film. Copyright in a cinematograph film is conferred by s 90. In s 10 a cinematograph film
is defined to mean:
“[T]he 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.”
12
One can immediately see a
distinction between what constitutes a television broadcast and what
constitutes a cinematograph film. A television broadcast is
defined by reference to the visual images that are broadcast, whereas a
cinematograph film is more than a series of visual images. It is the aggregate
of those images when they are embodied in an article
or thing.
13
The distinction between, on the
one hand, visual images and, on the other hand, an aggregate of visual images
is important when one is attempting to identify precisely the visual images
that constitute a television broadcast. It will be
appreciated that what appears on a television screen is a sequence of
still images of pictures which, when shown in rapid succession, give the
appearance of a moving scene. Once it is seen that the visual images that
constitute the broadcast need not be an aggregate of images it follows, in my
opinion, that there is copyright either in each and every
still image which is transmitted or in each and every visual image that is
capable of being observed as a separate image on a television screen.
14
This position may be contrasted with that in the United States. There
copyright is given to a television broadcast as an
original work provided it be “fixed in any tangible medium of expression”: 17
USC § 102(a). Section 101 of the Act, containing definitions, provides “[a]
work consisting of sounds, images, or both, that are being transmitted, is
‘fixed’ for the purposes of this title if a fixation of the work is being made
simultaneously with its transmission”. Accordingly, if the whole work is not taken, it is necessary to decide whether a
substantial part has been. See eg New Boston Television Inc v
Entertainment Sports Programming Network Inc 215 USPQ 755 (1981), where the court was required
to consider whether highlights of a football game, although of a relatively
short duration, were a taking of the substantial part of the game.
15
For these
reasons, together with the reasons given by Hely J,
with which I agree, I would hold that Channel Ten has breached copyright
in each of the broadcasts in suit, unless Channel Ten can show that it
made use of those broadcasts “for the purpose of criticism or review”
(s 103A) or “for the purpose of, or [in association] with, the reporting
of news” (s 103B). These are the “fair
dealing” defences.
16
On this aspect of the appeal it
is necessary to consider the tentative findings of the trial judge (he was not
required to decide whether the defences applied as he found that there was no
copyright infringement), to see whether any error is disclosed. In this regard,
it needs to be acknowledged that we are in the realm
of decision-making where there is room for legitimate differences of opinion as
to the correct answer. In some instances it might be
impossible to say whether one view is demonstrably right and another view is
demonstrably wrong. It has been said of such a case that the appeal court
should not interfere with the conclusion reached by the trial judge unless it
is satisfied that the trial judge proceeded upon some erroneous principle or
was plainly and obviously wrong: George
Mitchell (Chesterhall) Ltd v Finney Lock Seeds Ltd (1983)
2 AC 803, 815-816 per Lord Bridge. On the other
hand where, as here, not only are the relevant facts not in dispute, but the
appeal court is in precisely the same position as the trial judge to decide
upon proper inferences to be drawn from the relevant evidence (which consists
solely of the alleged infringing broadcasts), then cases such as Warren v Coombes (1979) 142 CLR 531 and Taylor v Johnson (1983)
151 CLR 422 suggest that there is no reason why findings made by the
trial judge should be regarded as especially immune from appellate review: see Antonovic v Volker (1986) 7 NSWLR 151, 155.
That is not to say that respect and weight should not be given to the conclusions which the trial judge has drawn from the
evidence. However, once the appeal court has reached its own conclusions on the
facts, it should not shrink from giving effect to those conclusions: Lend Lease Development Pty Ltd v Zemlicka (1985) 3 NSWLR
207. This is not a case of the type referred to by
Lord Hoffmann in Biogen Inc v Medeva PLC (1997) RPC 1
at 45, which requires appellate caution in overturning a judge’s evaluation of
the facts “because specific findings of fact, even by the most meticulous
judge, are inherently an incomplete statement of the impression which was made
upon him by the primary evidence. His expressed findings are always
surrounded by a penumbra of imprecision as to emphasis, relative weight, minor
qualifications and nuance (as Renan said,
la vérité est dans une
nuance), of which time and language do not permit exact expression, but
which may play an important part in the judge’s overall evaluation.” It is not
such a case because the primary evidence only consists of the alleged
infringing broadcasts, and we are able to consider that evidence as well as the
trial judge.
17
On the question of fair
dealing, I agree in the reasons of Hely J except
with regard to three broadcasts. To understand our differences, I need to say
something about the program on which they were broadcast.
The program is styled The Panel. The Panel is a late night television program,
screened weekly on Channel Ten. The regular members of The Panel are Tom Gleisner, Rob Sitch, Kate Langbroek, Glenn Robbins (some viewers refer to him as
“Uncle Arthur”) and Santo Cilauro. They are well known personalities. The program’s production
company, Working Dog Pty Ltd, has also produced The Castle and The Dish, two
highly successful comedy feature films. The Panel adopts an unusual format.
Members of The Panel (not always all of them) sit around an oval desk, often
with one or more invited guests, and discuss in a humorous way a variety of
topics including, but not limited to, current affairs, sport, the arts and
other items which they think are of interest. Although
there is some serious discussion, the items are usually
presented in an entertaining manner. The Channel Ten
website invites people to “[t]une into The Panel for
an irreverent look at the week’s events, featuring news, views and reviews.”
The discussion is, or at least appears to be, largely unscripted, though the
choice of topics must have been settled in advance. The show is punctuated by pre-recorded excerpts of other television
programs. While there appears to be no evidence on this point, a casual
observer of the show might conclude that Channel Nine
programs are a favourite target.
18
Let me now deal with the
broadcasts where I am in disagreement with Hely J.
The Today Show
19
The context is a discussion
about Australia as a republic. The issue is whether the republican cause was
doomed. Reference is made to the fact that a number of popular personalities,
Thomas Keneally (a well-known author), Billy Thorpe
(an aging rock star) and Bryan Brown (an Australian actor), had climbed Mt
Kosciuszko in aid of the republican cause. Then the discussion moves to the
powers that could be conferred on the president of a
republican Australia. In this context
Boris Yeltsin is mentioned. Santo says that there should be some
limitations on the powers of a president in case a person like
Boris Yeltsin is appointed. There is then shown
an excerpt of Boris Yeltsin shaking hands with three former Russian Prime
Ministers. Glenn asks, by reference to Yeltsin, at what point a person would be
too old to take on the office of president. The suggestion is
made that regardless of Yeltsin’s actual age, he is probably too old to
be president because, as Santo put it, “he feels like your grandad”. The
Panel’s consensus seems to be that it is necessary for a president to have
experience, wisdom and memory, at least to “remember what you know”. The
discussion then moves to the age of other world leaders.
20
When the segment was broadcast, the question whether Australia should become
a republic was a significant political issue. The referendum for constitutional
amendments had been announced, and the segment must be
considered in that context. The discussion whether there should be an age limit
imposed on a president, while considered in a humorous way because of Yeltsin’s
known drinking and memory problems, was newsworthy. That is all that is
required for fair dealing under s 103B(1)(b).
Midday
21
The Midday Show, as its title
indicates, is a show Channel Nine formerly broadcast
at midday each day. It had a studio audience and was, or purported to be, a
live to air program catering for people who happen to be at home at that time
of day. The presenter, Ms Kerri-Anne Kennerley,
is a well-known television presenter. A feature of the Midday Show was that it
dealt with topical events and often had invited guests. During the program in
question, the Prime Minister was an invited guest and was
interviewed by Ms Kennerley. She asked
the Prime Minister to sing happy birthday for Sir Donald Bradman, Australia’s
greatest cricketer.
22
The Panel replayed the Prime
Minister singing. Members of the Panel then made humorous, but disparaging,
comments about the manner in which the Prime Minister performed. It was suggested that Ms Kennerley
must be a Labor supporter because during a previous
show she had also made the Treasurer “look like an idiot”. Fair dealing is made out in two respects. First the Panel is undertaking
a review of sorts of the Midday Show. Indeed, after the excerpt was shown, there was a general discussion about Ms Kennerley’s talents as the program’s host. Second, and more
obviously, an incident where the Prime Minister of a country has behaved in a
way which some might call “silly” is certainly newsworthy. It
is not only the political activities of a person such as a Prime Minister that
make the news. His or her perceived indiscretions or other unusual
actions warrant reporting. In a sense, all behaviour of a Prime Minister can be regarded as “political” because it may affect voters’
perceptions and is newsworthy for that reason.
Simply the Best
23
Simply the Best was a evening television program
hosted by Ray Martin, who is yet another well-known personality. The precise
nature of the program is not apparent, but it seems that minor celebrities were invited to appear before a live audience. During the
course of the show, the audience was asked to cast a
vote on which is the “best” of a variety of things. In this particular program
the Panel broadcast a segment showing Mr Martin walking on to the studio
set and another segment where the audience was asked to vote on how much they liked
“Bandstand” and “Countdown”, each of which was a television program in which
rock ‘n roll music was performed.
24
The Panel introduced the first
excerpt by commenting on the studio set. Tom said that it was a cross between
that used on the television programs “Who Wants to be a Millionaire” and “The
Footy Show”, and “an inner city brothel”. While the excerpt was
being played, Tom commented “[t]hey’ve
recycled a few sets there”. Clearly this was criticism
about the production side of the program. The second excerpt
was introduced by Kate with the comment that it was not possible to
understand the basis on which the audience was being asked to vote. It was said that the voting had no context. Immediately after
the excerpt was broadcast, other members of The Panel
said, in effect, that one could not tell what the voting was about. Various
possibilities were discussed. From the segment of the
show that I was able to see, the criticism, for that is what it was, about the
show’s format appears to be justified. The defence of fair dealing under
s 103A is made out.
25
I agree in the orders proposed
by Hely J save in respect to the three programs
which in my view are not infringing broadcasts.
HELY J:
26
Part IV of the Copyright Act 1968 (Cth)
(“the Act”) provides for copyright in subject matter other than works. Part IV
extends copyright protection to sound recordings, cinematograph films,
television broadcasts and sound broadcasts and to published editions of works.
27
This case is concerned with
television broadcasts, and with the Act in the form which
it took prior to the Copyright Amendment
(Digital Agenda) Act 2000 (Cth), which made some alterations to some of
the sections which will fall for consideration. Copyright in television
broadcasts is of relatively recent origin, having been
created by the Copyright Act 1956 (UK),
which was the model for the 1968 Australian legislation.
28
Section 87 of the Act provided
as follows:
“87 Nature of copyright in television broadcasts
and sound broadcasts
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.”
29
The appellant (“Nine”)
unsuccessfully contended at first instance that the re-broadcasting by the
respondent (“Ten”), as part of its programme “The Panel”, of excerpts from
other programmes previously broadcast by Nine, constituted an infringement of
Nine’s broadcast copyright conferred by s 87(c) of the Act. The excerpts
from the Nine programmes which were re-broadcast by Ten (the “Panel Segments”)
were of various lengths, ranging from eight seconds up to forty-two seconds in
duration.
30
Nine also contended at first
instance that the making by Ten of video tapes of the
Panel Segments for the purpose of re-broadcasting constituted an infringement
of Nine’s copyright conferred by s 87(a) of the Act. That claim also
failed. The s 87(a) claim was added to the
Statement of Claim by amendment made during the hearing. Accordingly, it was agreed that the s 87(a) claim should be heard
separately from and after the hearing of the s 87(c) claim. That was the course which was followed, and the primary judge decided the
s 87(c) claim before determining the s 87(a) claim.
31
An Australian television
broadcaster has the technical capacity to obtain material from another
Australian broadcaster for re-broadcasting by either one of two ways:
-
making a copy or
video tape from the sending station’s off-air or satellite signal; or
-
redirecting
or “pulling down” a signal from the sending station’s off-air or satellite
signal through the receiving station’s transmitter.
Whilst
the second activity is technically possible, the evidence was that this method
of re-broadcasting was not followed in practice for
programming reasons “as well as other reasons”.
32
It was common ground that shortly
prior to the broadcast of each of the Panel Segments Ten prepared a video tape,
referred to in the primary judge’s reasons as “the second BETA tape”, so as to
enable the particular Panel Segment to be re-broadcast as part of Ten’s
programme. Nine’s alternative case was that the making by Ten
of these video tapes constituted an infringement of Nine’s s 87(a)
copyright in the source broadcasts from which the Panel Segments were taken.
33
Television broadcast means
“visual images broadcast by way of television, together with any sounds
broadcast for reception along with those images”: s 10. It is
impermissible to construe a definition by reference to the term defined: Owners of ‘Shin Kobe Maru’
v Empire Shipping Co Inc (1994) 181 CLR 404, 419.
“Television broadcast” is given a particular meaning by the Act, whether or not
it accords with its ordinary meaning. There is no reference in this definition
to any notion of a television programme. Nor does the definition follow the
form of the definitions of “cinematograph film” or “sound recording” which are expressed in terms of the aggregate of visual images embodied in an article or thing or the aggregate of the sounds involved in a
record. Television broadcasts and sound broadcasts differ from works and from
the other subject matter protected under Part IV, in that there is no
requirement that the subject matter of the broadcast be
reduced into a material form or fixed, in order that copyright protection may
be attracted. “Broadcast” means transmit by wireless telegraphy to the
public: s 10. “Wireless telegraphy” means the emitting or receiving,
otherwise than over a path that is provided by a
material substance, of electromagnetic energy: s 10. It is the
transmission of images and sounds over non-material paths of electromagnetic
energy to the public which attracts copyright
protection: cf Ricketson The Law of Intellectual Property: Copyright,
Designs and Confidential Information at par [5.50]. A television broadcast
is essentially of an ephemeral nature.
34
Copyright will subsist in a
television broadcast once the subject matter of the broadcast is made, provided the connecting factors
referred to in s 91 of the Act are satisfied. The requirement of originality which is imposed by s 32 of the Act in the case of
works does not apply in relation to a television broadcast. Copyright
continues to subsist in a television broadcast until the expiration of 50 years
after the calendar year in which the broadcast is made. Section 99 of the Act
specifies the owner of copyright subsisting in a television broadcast,
depending on the circumstances in which it was made. Regarding the making of a work or other subject
matter (including a television broadcast), s 22(5) of the Act provides:
“... 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.”
35
The Copyright Act 1956 (UK) (“the 1956 UK Act”) implemented many of the
recommendations of the report of the Copyright Committee (the “Gregory
Committee”), which was presented by the President of the Board of Trade to
Parliament in October 1952. The Gregory Committee favoured copyright protection
being granted to a broadcasting authority in relation to its own programmes
which it assembles and transmits at considerable cost and skill. Recommendation
31 was as follows:
“31. That a broadcasting authority should have the
right to prevent the copying of its programmes
either by re-broadcasting, or by the making of records for sale and subsequent
performance.”
(emphasis added)
36
Section 14 of the 1956 UK Act
was a new section which dealt with copyright in
television broadcasts and sound broadcasts. Section 14(10) defined “television broadcast” so as to mean
“visual images broadcast by way of television, together with any sounds
broadcast for reception along with those images”. Section 14(10)(a) provided
that for the purpose of the Act a television broadcast shall be taken to be
made by the body by whom, at the time when, and from the place from which the
visual images or sounds in question, or both, as the case may be, are broadcast.
37
Section 14(1) provided for
subsistence of copyright in every television broadcast made by specified
authorities in specified circumstances. Subsections (4) and (6) were 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 either 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 subsection (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
such copyright, it shall not be necessary to prove that the act in question
extended to more than such a sequence of images.”
38
Thus although
the Gregory Committee recommended in favour of copyright protection for a
broadcaster’s programmes, the subsequent legislation was couched in terms of
copyright subsisting in the visual images broadcast by way of television,
together with any sounds broadcast for reception along with those images, it
being sufficient to constitute infringement for there to be the making of a
cinematograph film of, or a re-broadcasting of, any sequence of images
sufficient to be seen as a moving picture.
39
In Australia, the Copyright Law
Review Committee (“CLRC”) was appointed to consider
whether and to what extent the amendments recently made to the law of copyright
in the United Kingdom should be incorporated into Australian copyright law. The
CLRC produced its report in 1959 (the “Spicer Report”). The following
provisions of the Spicer Report were set out by the primary judge as being of
potential relevance:
“286 ... However, there can be no doubt that
broadcasting authorities are properly entitled to protection against the
pirating of their broadcasts, whether by rebroadcasting or recording, and there
seems to us, at least in the case of television, to be a case for 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 of 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 photograph.”
Section
25(4)(a) of the Act gives effect to par 295.
40
The Second Reading Speech of
the Attorney-General, Sir Nigel Bowen, relating to the introduction of the
Australian legislation to the House of Representatives, included 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.”
(emphasis added). Clause 87 of the Bill became s 87 of
the Act.
41
To establish infringement of
s 87(c) of the Act, Nine needed to show that Ten
re-broadcast a “television broadcast” the copyright in which was owned by Nine.
Alternatively, Nine needed to show that s 14(1)(a)
of the Act applied, and that Ten re-broadcast a substantial part of a “television
broadcast”. The resolution of either of these questions required identification
of the subject matter which constituted the relevant
television broadcast.
42
Nine’s
primary contention at first instance was that each visual image which is
broadcast constitutes a television broadcast; and that the definition of television broadcast is couched in
terms of “visual images broadcast by way of television” and accompanying
sounds, without identifying any number of images, or a cut-off point, or a
requirement that the visual images constitute a discrete or complete story or
programme. If that submission had been upheld,
considerations of substantiality would not arise on the facts of this case, as
the Panel Segments were visual images which had been
previously broadcast by Nine by way of television.
43
Alternatively, Nine contended that a television broadcast relates to the
whole of each programme, or else to the whole of each segment of a programme
where the programme breaks down into segments. Whether a programme breaks down
into segments is a factual question. On this construction, considerations of
substantiality would arise, as in no case did Ten re-broadcast the whole of one
of Nine’s programmes, or the whole of a segment of such a programme. It would
therefore be necessary to determine whether each Panel Segment was a
substantial part of the programme, or a substantial part of a segment of the
programme of which it was an excerpt.
44
Ten’s primary contention at
first instance was that a television broadcast commences when the transmitter is switched on such that visual images and sound are
transmitted by the broadcast waves. The television broadcast continues until
the transmitter is switched off, such that visual
images and sounds are no longer broadcast. The visual content of the broadcast
changes throughout the day as different programmes, news items, station
identifications and other subject matter are broadcast.
45
In 1968
television broadcasters in Australia did not transmit continuously. They began
each morning and closed each night. In due course broadcasters extended their
hours and now generally broadcast twenty-four hours per day, seven days per
week. Television broadcasters issue their programming in roughly 6.00 am
to 6.00 am days in seven day bundles. This is the form in which the programming is reprinted in
newspapers and TV guides. Accordingly, Ten submitted that the best
definition of the copyright subject matter is what is transmitted in the
twenty-four hour period of broadcasting during the period chosen by Nine itself
in the formulation of its programming, namely from 6.00 am one day to
6.00 am the next. On this construction, the benchmark against which the
issue of substantiality is to be tested is a television broadcast
which continues from 6.00 am one day to 6.00 am the next.
46
The primary judge rejected the
primary contention advanced by each party. His Honour rejected Nine’s
submission that Nine’s broadcast copyright relates to each
and every single visual image as a discrete subject matter. His Honour
also rejected Ten’s submission that the broadcast relates to the aggregate of
all visual images broadcast by Nine over a period of not less than one day,
irrespective of the number of programmes thereby involved. His Honour said that
it followed that “the only feasible candidate” for the subject matter of a
television broadcast must be a television broadcaster’s programme, or segments
of a programme, if a programme is susceptible to subdivision by
reason of the existence of self-contained themes.
47
His Honour found that an
advertisement should be treated as a separate programme; and that “station
breaks” and “station logos” should also be excluded
from programmes or segments of programmes for the purposes of copyright
protection, as they do not bear in any relevant sense an essential relationship
to the programmes or segments of programmes any more than advertisements.
48
His Honour held that none of
the Panel Segments amounted to a substantial part of the programmes or segments
of programmes which had been broadcast by Nine. His
Honour also held that in the case of some (but not all) of the Panel Segments,
Ten would have made out a defence of fair dealing under either s 103A or
s 103B of the Act if breach of copyright had otherwise been found to have
occurred.
49
Nine sought support for its
primary contention in the decision of the United Kingdom Court of Appeal in Spelling Goldberg Productions Inc v BPC Publishing Ltd [1981] RPC 283. The Court
there found that a photograph of a single frame of a cinematograph film was an
infringement of the copyright in the film because a single frame is part of a
film within s 13(10) of the 1956 UK Act, even though it does not itself
possess the characteristics of a film.
50
The definition of
“cinematograph film” in s 13(10) of the 1956 UK Act was as follows:
“Cinematograph
film” means any sequence of visual images recorded on material of any
description (whether translucent or not) so as to be capable, by use of that
material –
(a)
of being shown as a
moving picture, or
(b)
...”
The
acts restricted by the copyright in a cinematograph film were specified in
s 13(5) of the 1956 UK Act, and included (s 13(5)(a))
making a copy of the film. “Copy” was defined in
s 13(10) in relation to a cinematograph film as meaning:
“any
print, negative, tape or other article on which the film or part of it is recorded.”
(emphasis added). The definition refers to any part of a
film, rather than a substantial part.
51
The substantiality provisions
of the 1956 UK Act, equivalent to s 14(1) of the Australian Act, were
contained in s 49 of the 1956 UK Act. Section 49(1) provided that except
insofar as the context otherwise requires, any reference in the Act to the
doing of an act in relation to a work or other subject matter shall be taken to
include a reference to the doing of that act in relation to a substantial part
thereof.
52
In Spelling Goldberg (supra),
Buckley LJ said that it did not make very much difference whether one
eliminates s 49(1) from application in relation to s 13(5)(a) on the
ground that there is a context which “otherwise requires”; or whether
s 49(1) applies, not so as to impose a requirement that a copy of a part
of a film has to be a copy of a substantial part of the film, but so as to
render it an infringement of copyright to reproduce a substantial part of a
part of a film, ie a substantial part of a frame from
a film. Templeman LJ
and Donaldson LJ agreed with Buckley LJ, but were inclined to the
view that s 49(1) had no relevant application as the context “otherwise
requires”.
53
The provisions of the 1956 UK
Act in relation to cinematographic films may be contrasted
with the provisions of s 14 of that Act in relation to television
broadcasts. “Television broadcast” was defined so as to mean “visual images
broadcast by way of television, together with any sounds broadcast for
reception along with those images”. The acts restricted by
the copyright in a television broadcast were as set out in s 14(4), and,
as earlier noted, s 14(6) provided that the s 14(4) restrictions
apply to “any sequence of images sufficient to be seen as a moving picture”,
and for the purpose of establishing infringement of copyright in a television
broadcast, it shall not be necessary to prove that the act in question extended
to more than such a sequence of images.
54
Thus doing one of the acts
restricted by the copyright in a television broadcast in relation to a single
image would not ordinarily constitute an infringement of copyright created by the
1956 UK Act, which defines infringement in terms of a sequence of images
sufficient to be seen as a moving picture.
55
I should record, if only for
the sake of completeness, that the provisions of the Australian Act in relation
to cinematograph films are different from those contained in the 1956 UK Act.
Under the Australian Act “copy”, in relation to a
cinematograph film, means any article or thing in which the visual images or
sounds comprising the film are embodied. “Cinematograph film” means (inter alia) 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 of being shown as a “moving
picture”. These definitions suggest that in the context of the Australian Act,
a copy must itself have the characteristics of a cinematograph film and could
not comprise a single frame.
56
As noted above, Spelling Goldberg is a decision on the
operation of s 13(5) of the 1956 UK Act in relation to films. There is no
comparable provision in the 1956 UK Act or the Australian Act in relation to
television broadcasts. Thus the decision cannot and
does not establish any principle which support Nine’s primary contention. The
contrast between the terms of s 13 and s 14 of the 1956 UK Act make
it clear that under s 14 a single image could not itself constitute a
television broadcast in which copyright might subsist, as a single image is not
a sequence of images sufficient to be seen as a moving
picture. Nonetheless, some assistance may be derived
from Spelling Goldberg, particularly
from the observations of Buckley LJ at 296, as discussed hereafter.
57
The making of a cinematograph
film of a television broadcast, insofar as it consists of visual images, or a
copy of such a film, is an infringement of copyright in the television
broadcast by virtue of s 87(a) and s 101. Section 25(4) of the Act
provides as follows:
“(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.”
58
The catalyst for the enactment
of s 25(4) was par 295 of the Spicer Report, quoted above. Paragraph
295 of that report explicitly recommended that the taking of a photograph “of
any part of a television broadcast” should constitute an infringement of
copyright, unless done for the private use of the photographer.
Section 111(1) of the Act provides that the copyright in a television
broadcast insofar as it consists of visual images is
not infringed by the making of a cinematograph film of the broadcast, or a copy
of such a film, for the private and domestic use of the person by whom it is
made.
59
Section 25(4)(a)
does not directly play a part in the definition of the subject matter of a
television broadcast. The subsection is in the nature of a deeming provision,
which gives an expanded meaning to the notion of a cinematograph film of a
television broadcast beyond that which would otherwise flow from the s 10
definition of cinematograph film. This has the indirect effect of defining one
of the exclusive rights in relation to a television broadcast.
60
Thus s 25(4) of the Act deems a photograph of any of the visual
images comprised in a television broadcast to be a cinematograph film of that
broadcast. Consistently with par 295 of the Spicer Report, the provisions
of s 14(6) of the 1956 UK Act as to any “sequence of images sufficient to
be seen as a moving picture” have not been taken up in
s 25(4).
61
The effect of s 25(4) is
thus that a cinematograph film or photograph of any of the visual images
comprised in a television broadcast is an exclusive right of the copyright
owner, subject to specific statutory exceptions such as s 111.
62
Lahore Copyright & Designs 1996 at [8030] and Ricketson
(supra) at [8.50] suggest that there may be some room for argument as to
whether a video tape consists of visual images, and thus some room for argument
as to whether a video tape is a cinematograph film as defined in s 10 of
the Act. It was common ground at first instance that the video tapes made by Ten of the Panel Segments are cinematograph films as
defined, hence it is not necessary to pursue this question. However, I note
that Galaxy Electronics Pty Ltd v Sega
Enterprises Ltd (1996-1997) 37 IPR 462 and Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd
(2001) 50 IPR 29 at 44 suggest that the approach adopted by the parties in this
respect accords with the law. Both Lahore and Ricketson
conclude in the paragraphs noted above, that a video tape does come within the
definition of cinematograph film.
63
Nine contends
that the effect of s 25(4)(a) of the Act is that the making of a
cinematograph film of any of the
visual images of a broadcast (in the sense of any one or more of those images)
is taken to be a cinematograph film of a television broadcast, thus giving rise
to an infringement of copyright by virtue of s 87(a) and s 101 of the
Act.
64
Nine relied upon par 295
of the Spicer Report in support of the construction which it placed on
s 25(4)(a). In his second judgment, the primary
judge dealt with par 295 of the Spicer Report as follows (at par 5):
“... 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 ...”.
65
The primary judge rejected
Nine’s contentions as to the effect of s 25(4). His Honour upheld Ten’s
submission that the impact of s 25(4) upon s 87(a) 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. His Honour noted that s 25(4)(a) of the Act 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, albeit those sections are concerned with a different subject
matter.
66
I do not agree, with respect,
with the conclusion reached by the primary judge on this issue. In my view, s 25(4) should not be regarded as being subject to
an unexpressed qualification that 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,
but only if the visual images constitute a substantial part of the broadcast.
67
Section 25(4) applies to both a
photograph of any of the visual images comprised in a television broadcast, as
well as to a cinematograph film of any of those images. It is true that the
present case is not concerned with photographs. But
the fact that s 25(4) applies to a photograph of any of the visual images
comprised in the broadcast supports the view that the expression “any of the
visual images” encompasses any one or more of those images, without any
requirement that the images should amount to a substantial part of the
broadcast.
68
Ten’s response, as noted by his
Honour in par [36] of his first judgment, was that whilst s 25(4)(a) makes it clear that photographs can infringe, “there
would need to be sufficient photographs to amount to a substantial part of an
identified broadcast”. This response, which was repeated in Ten’s
written submissions in this Court is, to my mind, unconvincing. It assumes that
par 295 of the Spicer Report was only concerned with eliminating any
requirement that photographs must constitute a sequence before they could
amount to photographs of a substantial part of the broadcast. Par 295 is not expressed in those terms. Ten’s submission pays
insufficient regard to the terms in which the recommendation was
couched, namely a recommendation that the “taking of a photograph of any
part” of a television broadcast should be an infringement. Both Ricketson at [9.520] and Lahore at [34,075] express the
view that the taking of a single photograph of any image contained in a
television broadcast will fall within the control of the copyright owner of the
broadcast.
69
If what is
involved is a cinematograph film of any of the visual images contained in a
television broadcast, rather than a photograph of any of those images, the
definition of cinematograph film in s 10 may indicate that s 25(4)
would not be enlivened unless sufficient visual images of the broadcast are
embodied in the film, such that it can be shown as a moving picture.
70
On that basis s 25(4) would apply to a film capable of being shown as
a moving picture of any of the visual images comprised in a television
broadcast and to a photograph of any one or more of the visual images comprised
in the broadcast. A conclusion to that effect would be consistent with the
recommendation of the Spicer Report that provision should be
made for the protection of television broadcasts against the kind of
pirating envisaged by s 14 of the 1956 UK Act, but with a provision more
favourable to the broadcaster in relation to photographs of a television
broadcast.
71
The construction of
s 25(4) for which Ten contends is not supported
by the Spicer Report. Section 14(6) of the 1956 UK Act contained its own
prescription of the quantum of the “taking” of a television broadcast
which would constitute infringement, namely any sequence of images
sufficient to be seen as a moving picture. If what was taken was sufficient to
be so seen, then infringement was established whether or not
the sequence of images constituted a substantial part of the source broadcast or
not. In Spelling Goldberg (supra)
Buckley LJ said at p 296 in relation to a cinematograph film:
“... every part of a complete film which is itself of sufficient
duration to amount to a showing as a moving picture must itself answer to the
definition of a cinematograph film.”
These
observations are equally applicable to a television broadcast under s 14.
72
Paragraph 295 of the
Spicer Report makes it clear that s 25(4) was intended
to provide a greater protection to broadcasters than that contained in
s 14(6). That objective would be frustrated, rather than furthered, by the
adoption of the construction of s 25(4) for which Ten
contends.
73
In par [7] of his second
judgment, the primary judge made the following observation:
“... 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.”
74
Acceptance of Nine’s argument
based on s 25(4) does not impact upon the proper
construction of s 87(b). So far as fair dealing is concerned, it is
uncontroversial that, depending on the circumstances, a fair dealing can
reproduce the whole of the work in which copyright subsists: Hubbard v Vosper [1972] 2 QB 84 at 98.
The fair dealing provisions do not assist in the construction of s 87.
75
Nine submits that its construction
of s 25(4) can accommodate s 14(1) of the Act insofar as reproduction
of a substantial part of one of the images comprised in a broadcast may give
rise to an infringement. It is not necessary to decide this question in order
to resolve the present appeal. However, my view is that s 25(4) is in the
nature of a self-contained definitional provision, the terms of which are not
subject to further modification by reference to s 14.
76
As the video tapes of the Panel
Segments made by Ten are cinematograph films of the
visual images comprised in the source television broadcasts in terms of
s 25(4), it follows that, subject to the fair dealing defences, Nine has
established contravention of its s 87(a) copyright in the source
broadcasts. That conclusion follows from the application of s 25(4) to the
facts, without the need to determine what constitutes a television broadcast.
However, that issue has to be confronted in relation
to s 87(c).
77
The definitions of “television
broadcast” and “broadcast” are set out earlier in these reasons. There is no
definition of “re-broadcast”. I agree with the primary judge that in the
context of Division 2 of Part IV of the Act, “re-broadcast” simply means
broadcasting what another television broadcaster has already broadcast on
television.
78
Section 101(1) of the Act
provides that a person infringes another’s copyright
by doing acts “comprised in the copyright”. Section 101(4) of the Act provides:
“(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.”
It
follows from s 101(4) that the notion of “re-broadcasting” is not confined to the re-direction or “pulling down” by one
station of another’s signal. Ten’s transmission of the Panel Segments
which it had captured on video tape involved a “re-broadcasting” of the
Panel Segments. Section 95(2) of the Act accepts that a television broadcast
may be a repetition of a previous broadcast, made by broadcasting visual images
or sounds embodied in any article or thing.
79
Copyright subsisting in a television
broadcast arises when the broadcast is made
(s 91). A television broadcast is made when the
visual images and sounds constituting the broadcast, or both (as the case may
be), are broadcast. The definition of “television broadcast” and other sections
of the Act dealing with copyright in a television broadcast consistently refer
to the visual images and sounds (plural) comprised in the broadcast (eg s 25(4)) or constituting the broadcast (eg s 25(5)).
80
When is a
television broadcast made? A television broadcast is
made when the transmission of visual images and any accompanying sounds
begins. A television broadcast continues to be made as
the transmission of visual images and any accompanying sounds continues. Visual
images and accompanying sounds as they are broadcast,
themselves satisfy the definition of “television broadcast”: cf the observations of Buckley LJ in Spelling Goldberg at 296. One does not
have to wait until there has been a transmission of enough of the images and
sounds to constitute a programme, or any other subject matter, before
concluding that a television broadcast has been made.
81
The issue of infringement of
copyright is necessarily bound up with the way in
which the interest protected is defined. Thus if the interest protected is a
work, the doing of one of the acts comprised in the copyright in relation to
that work, or a substantial part of the work, will result in infringement.
Similarly, if the interest protected is the aggregate of the visual images
embodied in a cinematograph film, the doing of one of the acts comprised in the
copyright in relation to the aggregate of those images, or a substantial part
thereof, will result in infringement.
82
Here the interest protected by
the copyright is the visual images broadcast by way of television and any
accompanying sounds. It is the actual images and sounds broadcast which
constitute the interest protected. The interest protected is
not defined in terms of some larger “whole” of which the visual images
and sounds broadcast are but a part. The ephemeral nature of a broadcast, and the fact that copyright protection is
conferred by reference to a broadcaster’s output, rather than by reference to
the originality of what is broadcast, may also help to explain why the interest
protected is defined in this way.
83
In Aristocrat Leisure Industries (supra) at [65], Tamberlin J
quoted the following observations of Burchett J in Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1996) 69 FCR 268
at 273-274 (which concerned “video” games) with approval:
“... it is
appropriate to adopt a ‘liberal interpretation’ to intellectual property
legislation, including the present Act, and to avoid a narrow, literal approach
specific to a particular technology or unduly limited to the state of the art
as at the date when the relevant provisions were passed.”
84
It may be that in the mid-1950s
a television broadcast would be seen as consisting of
a series of discrete programmes of comparatively short duration. But today there is a continuous television broadcast,
although the subject matter of that broadcast may be so arranged as to be of
interest to different sections of the public at different times in the day.
There may be some spectacles or events, eg the Gulf
War, which might be the subject of a television broadcast continuing for more
than a day.
85
I conclude that a television
broadcast in which copyright may subsist is made
whenever visual images and accompanying sounds are broadcast by way of
television. Re-broadcasting of any of the actual images and sounds so broadcast
is an infringement of copyright under s 87(c), whether or not the subject
matter of the re-broadcast is characterised as a programme, a segment of a
programme, an advertisement, a station break or a station logo, or as a substantial
part of any of those things.
86
Accordingly, I do not agree,
with respect, with the primary judge’s conclusion that whether or not there has
been “re-broadcasting” of a television broadcast is to be
measured against those benchmarks. For the same reasons I would also
reject Ten’s submission that the benchmark is a day’s television, with the
added comment that where broadcasting is continuous, there is no more logic in
adopting a day’s output than, for example, a week’s.
87
On this view
there may be many collocations of visual images and accompanying sounds
broadcast during the space of a day all of which satisfy the definition of a
“television broadcast”. Thus, for example, the first minute of transmission may
be a television broadcast as much as the first five minutes. If there is a
re-broadcasting of the first minute by one competitor
and of the first five minutes by another, then each has infringed the initial
broadcaster’s copyright in a television broadcast which is of one minute’s
duration in the first case, and of five minutes duration in the second.
88
The fact that there may be
thousands of transmissions in any day which are a television broadcast as
defined does not lead to any inconvenience or absurdity given that copyright
protection is confined to the actual images and accompanying sounds broadcast.
89
This conclusion allows for a
limited role for s 14(1). If a broadcast consists of visual images and
sounds, but the re-broadcast is of one, rather than the other, or if the
re-broadcast is of images which have been cropped,
then issues of substantiality may arise. In any event, s 14(1) applies
“unless the contrary intention appears”. One should therefore not approach the
problem of identifying the interest protected by the copyright on the basis that
resolution of that problem should necessarily accommodate s 14(1).
90
The outcome of this case does
not depend upon whether a broadcast of a single image can itself be a
television broadcast, or whether a plurality of visual images is required. Each
of the Panel Segments consisted of a plurality of visual images. The Act is consistently expressed in terms of the plural. This may
be because the provisions of the 1956 UK Act applied to any sequence of images
sufficient to be seen as a moving picture. Copyright
will not usually be held to subsist in works which are
“insubstantial” in purely quantitative terms (see Ricketson
at [7.215]). A transmission which lasts for a fraction of a
second only may be of too insubstantial a nature to be regarded as a
television broadcast in its own right. Even if that is so, the Panel Segments
were not too insubstantial to qualify for copyright
protection, having regard to their duration.
91
In his second
judgment, the primary judge appears to have accepted Ten’s submission that the
s 87(a) protection (and presumably the s 87(c) protection) should not
comprise or extend to a single visual image (or presumably to a plurality of
images), 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”.
92
Ten’s submission overlooks, or
pays insufficient regard to, the fact that the interest protected by the
copyright is differently defined in the case of a
television broadcast. It also overlooks, or pays insufficient regard to, the
fact that there is no infringement of copyright in a television broadcast
unless the actual sounds or images which were broadcast by
the broadcaster are taken. A re-creation of those sounds or images may
infringe copyright in some underlying work, but would not constitute an
infringement of the copyright arising under Part IV of the Act. It is the
actual visual images or sounds which comprise the television
broadcast which are protected and not some imitation or reproduction thereof
produced by collateral means: Laddie et al, The
Modern Law of Copyright and Designs 2nd Ed. 1995 at
par 7.32.
93
It follows that subject to
“fair dealing” defences, the re-broadcast of the Panel Segments were an infringement
of copyright under ss 87(c) and 101.
94
Section 103A of the Act
provides:
“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.”
An
audio-visual item is defined in s 100A as meaning
a sound recording, a cinematograph film, a sound broadcast or a television
broadcast.
95
Section 103B provides:
“(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:
(a)
it is for the purpose
of, or is associated with, the reporting of news in a newspaper, magazine or
similar periodical and a sufficient acknowledgment of the first-mentioned
audio-visual item is made; or
(b)
it
is for the purpose of, or is associated with, the reporting of news by means of
broadcasting or in a cinematograph film.”
96
At first instance both parties
professed reliance on the decision of the United Kingdom Court of Appeal in Pro Sieben Media
AG v Carlton UK Television Ltd [1999] 1 WLR 605. The Court there held that
the test of whether an extract from a copyright work had been used for one of
the purposes laid down in the corresponding provisions of the Copyright, Designs and Patents Act 1988
(UK) is an objective one:
“The words ‘in the
context of’ or ‘as part of an exercise in’ could be substituted for ‘for the
purpose of’ without any significant alteration of meaning.”
(at 614)
97
That decision
was followed by the UK Court of Appeal in the subsequent case of Hyde Park Residence Ltd v Yelland (2001) Ch 143. In that case, whether a work was used
“for the purpose of reporting current events” was a matter to be ascertained by
a reading of the relevant parts of the work in question. However, both cases
make it clear that the intentions and motives of the user of the copyright
material are highly relevant in relation to the issue of fair dealing.
98
After reviewing the
authorities, and the submissions of the parties, the primary judge summarised
the principles emerging from the authorities involving fair dealing defences as
follows:
“(i) Fair dealing
involves questions of degree and impression; it is to be judged by the
criterion of a fair minded and honest person, and is an abstract concept;
(ii)
Fairness is to be
judged objectively in relation to the relevant purpose, that is to say, the
purpose of criticism or review or the purpose of reporting news; in short, it
must be fair and genuine for the relevant purpose, because fair dealing truth
of purpose (sic);
(iii)
Criticism and review
are words of wide and indefinite scope which should be
interpreted liberally; nevertheless criticism and review involve the passing of
judgment. Criticism and review may be strongly expressed;
(iv)
Criticism and review
must be genuine and not a pretence for some other form of purpose, but if
genuine, need not necessarily be balanced;
(v)
An oblique or hidden
motive may disqualify reliance upon criticism and review, particularly where
the copyright infringer is a trade rival who uses the copyright subject matter
for its own benefit, particularly in a dissembling way; ‘the path of criticism
is a public way’;
(vi)
Criticism and review
extends to thoughts underlying the expression of the copyright works or subject
matter;
(vii) ‘News’
is not restricted to current events; and
(viii) ‘News’
may involve the use of humour though the distinction between news and
entertainment may be difficult to determine in particular situations.”
99
Nine submitted on the hearing
of the appeal that the criticism or review must be of the work itself, but this
may include the doctrine or philosophy underlying the work. However,
s 103A expressly provides that the criticism or review may relate to “the
first-mentioned audio-visual item, another audio-visual item or a work”.
100
Nine’s written submissions on the appeal also challenged principle (ii) in
the summary of the trial judge quoted above. It was submitted that the
requisite purpose must be that of the respondent rather than some third party,
and there was no evidence before the trial judge that Ten
itself (as distinct from Working Dog Pty Ltd and its Executive Producer,
Mr Hirsh) had a relevant purpose of criticism or review or of news
reporting. Contrary to the position which it had adopted at first instance,
Nine’s submission then proceed upon the basis that it was incumbent upon Ten to
call evidence as to the actual purposes, intentions and motives of those who
produced the programmes.
101
Ten engaged Working Dog Pty Ltd
(“Working Dog”), referred to by the primary judge as “its contracted production
team”, to produce for it a television programme which
would, amongst other things, involve criticism and review and the reporting of
news events. The purpose of Working Dog in the production of these programmes
was the purpose of Ten. Consistently
with the decisions of the UK Court of Appeal earlier referred to, the “purpose”
referred to in s 103A and s 103B is to be ascertained objectively,
and it was neither necessary nor appropriate for officers of Ten or of Working Dog to give evidence that they had a
sincere belief that he or she was criticising a work or an audio-visual item or
reporting news.
102
Nine also submits that to the
extent that it is discernible, Ten’s purpose in re-broadcasting the Nine material was to entertain, provide programme content
and achieve ratings. This purpose is the same purpose that Nine,
its trade rival, had in broadcasting the material originally. It does not
ground a fair dealing defence.
103
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 denied that it had used any of the Panel
Segments in that way, and the primary judge found that
its denial was justified.
104
Ten’s purpose in broadcasting
its programme “The Panel” may have been, as Nine
asserts, to entertain and to achieve ratings. If it does so by means of a
programme involving or including criticism, review or reporting of news in
which there is fair dealing with material in which copyright would otherwise
subsist, then Ten is not disentitled from relying on
the s 103A and s 103B defences by reason only of the commercial
nature of its activities. Criticism may involve an element of humour, or
“poking fun at” the object of the criticism. The fact that news coverage is
interesting or even to some people entertaining, does not negate the fact that
it could be news: Nine Network Australia
Pty Ltd v Australian Broadcasting Corporation (1999) 48 IPR 333 at 340 pars
[34] – [37]. News may be reported with humour and
still fall within the ambit of s 103B.
105
The primary judge would have
upheld the fair dealing defence in relation to the following Panel Segments:
- “The 72nd Academy Awards”
-
“The
Sale of the Century” (lighting switched off)
-
“The
Today Show” (Opera House)
-
“Who
Wants to be a Millionaire” (ingredients of Xmas pudding)
Nine
has not appealed from any of those findings. That tends to confirm that the
availability of the fair dealing defence needs to be considered in relation to
individual Panel Segments on a case by case basis,
rather than by reference to some a priori
thesis that Ten is not entitled to rely upon the defence because its purpose
was to entertain and to achieve ratings. The issue is whether the means which Ten adopted in order to achieve those objectives included a
fair dealing with copyright material for the purpose of criticism or review or
of reporting news.
106 As I indicated earlier, the fair dealing defence would have been upheld by the primary judge in some cases but not in others. Not all of the findings of the primary judge in this respect were the subject of challenge on appeal. The programme segments which were the subject of challenge on the appeal are as shown in the following table:
|
Programme Title of original Nine broadcast |
Segment description |
Position on appeal regarding fair dealing defences |
|
1. The Today Show (Boris
Yeltsin) |
Boris Yeltsin
shaking hand with three former Russian Prime Ministers |
Ten pressing Notice
of Contention re trial judge’s rejection of news reporting defence |
|
2. Midday |
Prime Minister John
Howard singing Happy Birthday for Sir Donald Bradman |
Ten pressing Notice
of Contention re trial judge’s rejection of criticism/review and news
reporting defences |
|
3. A
Current Affair |
Patrons in a
brothel masquerading as an introduction agency |
Nine appealing
trial judge’s upholding of defence of criticism/review |
|
4. Days
of Our Lives |
Marlena standing on
balcony |
Nine appealing
trial judge’s upholding of defence of criticism/review |
|
5. Days
of Our Lives |
Marlena levitating
above bed |
Nine appealing
trial judge’s upholding of defence of criticism/review |
|
6. Simply
the Best |
(i)
Ray Martin walking
on to set (ii)
Audience votes for
“Countdown” |
Ten pressing Notice
of Contention re trial judge’s rejection of criticism/review defence |
|
7. The Inaugural Allan Border Medal Dinner |
Prime Minister John
Howard approaches cricketer Glenn McGrath |
Nine appealing
trial judge’s upholding of defence of reporting news |
|
8. The
Sunday Program |
Interview with Grant
Ellison about drugs in sport in Australia |
Nine appealing
trial judge’s upholding of defence of reporting news |
|
9. The Today Show (Prasad
interview) |
Steve Liebmann interview with Mr Prasad, manager of the Matthew
Talbot Hostel |
Nine appealing trial
judge’s upholding of defence of criticism/review |
|
10. Newsbreak |
Technical glitch |
Nine appealing
trial judge’s upholding of defence of criticism/review |
107
In Pro Sieben Media (supra)
the UK Court of Appeal said that a trial judge’s conclusions on fair dealing
should not be disturbed unless “they proceeded from some error of principle or
are clearly unsustainable”. That view was endorsed by
Conti J, sitting as a member of a Full Federal Court, in Aldi Stores Ltd Partnership v Frito-Lay
Trading Co GmbH [2001] FCA 1874
at [198]. The position that an appellate court will not interfere with a
finding of the primary judge in an area such as the present, unless it is
“clearly unsustainable”, may be a slight overstatement of the Australian
approach: Australian Capital Territory v Badcock (1999-2000) 169 ALR 585 at pars [37], [48]
and [51].
108
In Branir Pty Ltd v Owston Nominees (No 2 )Pty Ltd
[2001] FCA 1833 Allsop J (with whose reasons
Drummond and Mansfield JJ agreed) extracted the following propositions from a
review of decisions of the High Court:
“28. ... First, the appeal court must make up its
own mind on the facts. Secondly, that task can only be done
in the light of, and taking into account and weighing, the judgment appealed
from. In this process, the advantages of the trial judge may reside in the
credibility of witnesses, in which case departure is only justified in
circumstances described in Abalos v
Australian Postal Commission (1988) 171 CLR 167; Devries v Australian National Railways Commission
(1993) 177 CLR 472 and SRA
v Earthline, supra. The
advantages of the trial judge may be more subtle and imprecise, yet real, not
giving rise to a protection of the nature accorded credibility findings, but, nevertheless, being highly relevant to the assessment
of the weight to be accorded the views of the trial judge. Thirdly, while the
appeal court has a duty to make up its own mind, it does not deal with the case
as if trying it at first instance. Rather, in its examination of the material,
it accords proper weight to the trial judge’s views. Fourthly,
in that process of considering the facts for itself and giving weight to the
views of, and advantages held by, the trial judge, if a choice arises between
conclusions equally open and finely balanced and where there is, or can be, no
preponderance of view, the conclusion of error is not necessarily arrived at
merely because of a preference of view of the appeal court for some fact or
facts contrary to the view reached by the trial judge.
29.
The degree of
tolerance for any such divergence in any particular case will often be a
product of the perceived advantage enjoyed by the trial judge. Sometimes, where matters of impression and judgment are concerned,
giving ‘full weight’ or ‘particular weight’ to the views of the trial judge
might be seen to shade into a degree of tolerance of divergence of views:
compare S W Hart & Co Pty Ltd v Edwards Hot
Water Systems (1985) 159 CLR 466, 478 and 491; Turbo Tek Enterprises Inc
v Sperling Enterprises Pty Ltd (1989) 23 FCR 331; Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553; Allsop Inc v Bintang
Ltd (1989) 15 IPR 686; Dart Industries v
Decor Corporation Pty Ltd (1989) 15 IPR 403, 412; and Koninklijke Philips Electronics NV v Remington Products Australia
Pty Ltd (2000) 100 FCR 90 at [27]. In such cases
the personal impression or conception of the trial judge may be one not fully
able to be expressed or reasoned: see for example In Re Wolanski’s Registered Design
(1953) 88 CLR 278, 281 and Secretary
of State for Foreign Affairs v Charlesworth, Pilling
& Co [1901] AC 363, 391. However, as
Hill J said in Commissioner of
Taxation v Chubb Australia (1995) 56 FCR 557,
573 ‘giving full weight’ to the view appealed from should not be taken too far.
The appeal court must come to the view that the trial judge was wrong in order
to interfere. Even if the question is one of impression or judgment, a
sufficiently clear difference of opinion may necessitate that conclusion.”
See
also Windsor Smith Pty Ltd v Dr Martens
Australia Pty Ltd (2001) 49 IPR 286 at pars [15] and [16], a decision
of a Full Federal Court in the context of misleading and deceptive conduct, to
similar effect.
109
I turn, then, to the particular
Panel Segments that were the subject of submissions on the appeal whether on
the part of Nine as the appellant, or on the part of Ten
pursuant to its Notice of Contention.
110
At par 72(i), the primary judge said:
“... news may involve the use of humour, but … there can
nevertheless be considerable difficulty in distinguishing news from
entertainment (see [58] above). As
a matter of judgment and impression, I prefer the conclusion that the purpose
of this re-broadcast, evident from The Panel discussion, was that of
entertainment rather than the reporting of news ...”
Ten
submits that the primary judge reached this conclusion upon the erroneous basis
that there could be no overlap between news and entertainment. His Honour
specifically acknowledged that there could be such an overlap, but came to the conclusion, as a matter of judgment and
impression, that this Panel Segment fell upon one side of the line rather than
upon the other. This is a matter on which different persons
might legitimately hold different conclusions. I am not persuaded that
his Honour erred in coming to the conclusion which he
did.
111
At par 72(ii), the primary
judge found that:
“... the purpose of
Nine’s dealing with the subject footage of ‘Midday’ was to satirise aspects of
Ms Kennerley’s performance as presenter of ‘Midday’,
and certain supposed personality traits and political allegiances. I do not
think that on balance, and as an issue of fact and degree, it can rightly be
postulated that The Panel here engaged in criticism or review of ‘Midday’, and
that such was its purpose.”
112
In context, the issue is
whether the purpose for which the Panel Segment was shown was criticism or
review of the broadcast of which the Panel Segment formed part,
or criticism or review of some other broadcast of the Midday programme. An
appraisal of Ms Kennerley’s role as the
presenter of the Midday show could amount to criticism or review of the
television broadcast constituted by the “Midday” programme, but there was no
real connection between the Panel Segment and such discussion as there was of
Ms Kennerley’s role. The Panel Segment was shown for
its own sake, either as something worth seeing again, or for the benefit of
those who had missed it when it was originally broadcast by Nine.
I agree with the primary judge’s conclusions.
113
The primary judge also rejected
Ten’s claimed entitlement to a defence under s 103B(1)(b) on the purported
basis that the Prime Minister’s singing of “Happy Birthday” to Sir Donald
Bradman was “newsworthy”. It may be accepted that unusual or incongruous
moments in the life of a world leader may be “news”, and elsewhere in his
reasons, the primary judge accepted that “news” for the purposes of
s 103B(1) was not restricted to current events. But a
contention that The Panel was reporting an item of news, namely that the Prime
Minister had sung Happy Birthday to Sir Donald Bradman on the Midday show some
fourteen days earlier, and that the Panel Segment was shown for the purpose of
or in association with the reporting of that news is, to my mind, an
exaggeration or distortion of the facts. The Panel Segment was simply shown for its entertainment value. No error has been shown in the primary judge’s conclusion in this
respect.
114
The primary judge found that
there was a fair dealing for the purpose of criticism or review of the
programme from which the Panel Segment was taken, on the basis
that Ten was criticising Nine’s broadcast for inadequately protecting by means
of ineffective disguises the anonymity of interviewees who wished to keep their
identity secret. That was sufficient to “marginally weigh” the balance in
favour of Ten’s establishment of the s 103A defence.
115
In assessing whether a defence
of fair dealing exists, it is necessary to have regard to the true purpose of
the critical work. As Henry LJ said in Time
Warner Entertainment Co Ltd v Channel 4 Television Corporation PLC (1993)
28 IPR 459 at 468, the question to be answered is as follows:
“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 [1972] 2 QB
84 at 93, ‘it is not fair dealing for a rival in the trade to take copyright
material and use it for its own benefit’.”
What
is required in order to enliven the defence is that the copying take place as
part of and for the purpose of criticising or reviewing the broadcast in
question: Ashdown v Telegraph Group Ltd
[2001] EWCA Civ 1142 at par 61.
116
The Panel discussion did not
involve a criticism of Nine’s selection of disguises for the interviewees; the
discussion proceeded upon the basis that the interviewees chose their own
disguises. Thereafter The Panel attempted to poke fun at the disguises
which the interviewees wore. I agree with the submission of
Mr Bannon SC that The Panel were not criticising Channel Nine’s failure to protect people who wished to remain
anonymous, which might have amounted to a criticism of the television
broadcast. Rather, The Panel were simply poking fun at the disguises
which the people had chosen, and using the Panel Segment for the
purposes of entertainment.
117
For these reasons, in my
opinion, Nine has established that the primary judge
fell into error in upholding the fair dealing defence in relation to this Panel
Segment.
118
The primary judge found that these
Panel Segments would have attracted the defence of fair dealing for the
purposes of criticism or review on the footing of an innuendo of loss of
originality and novelty of theme. I agree with that conclusion. The fact that
humour was also involved is beside the point. I do not agree with Nine’s
submission that Ten re-broadcast melodramatic aspects
in order to entertain persons who did not see the material as originally
broadcast.
119
The primary judge held that the
s 103A defence of criticism or review was not made out.
He did so on the basis of a “paucity of evidence” which left no “viable basis
for comprehending, much less resolving, what was the true nature of the alleged
criticism, and what was the purported basis therefor”.
120
Ten contends that the comments
by The Panel members clearly reveal the purpose of criticism or review in
relation to the set (and underlying artistic work) used in Nine’s programmes;
and that once this is accepted, there is no need to enquire further as to the nature
or basis for the criticisms made.
121
Criticism or review may be
unbalanced or strongly expressed and nevertheless fall within s 103A.
Nonetheless, it has to be recognisable as criticism or review. As I read his
Honour’s decision the defence failed because the
so-called criticism or review in relation to the set was not recognisable as
such. I agree with his Honour’s conclusions in this regard.
122
The primary judge would have
upheld a fair dealing defence of reporting of news in respect of this
re-broadcast. However, was it news that Glenn McGrath did not notice the Prime
Minister’s attempt to congratulate him at the dinner? There is no suggestion
that Mr McGrath deliberately ignored the Prime Minister, or that on the actual
night anyone thought that the Prime Minister had been publicly embarrassed. The
only public embarrassment was created by The Panel’s publicising of a
background and unnoticed incident. It was done by
showing the footage in slow motion (unlike the original). Section 103B proceeds
upon the basis that the news exists independently of the Panel Segment, and the
defence is attracted if the Panel Segment is broadcast
for the purpose of or in association with the reporting of that news. Yet here,
if there is any news, it arises by reason of the
slowing down of the footage so as to display a hitherto unnoticed incident
which, had it been noticed, might have been a source of embarrassment for the
Prime Minister. I agree with Nine’s submission that it is not a fair dealing
for the purpose of reporting news to use footage in a particular way so as to
create the appearance of a public embarrassment and then to assert that the
re-broadcast of the footage was merely the report of a public embarrassment.
123
Nine’s appeal in relation to
this Panel Segment should be upheld.
124
The primary judge held that
this was “perhaps the clearest exemplification” of the s 103B(1)(b) defence. The theme of The Panel commentary on
this re-broadcast was that the allegations of drug-taking
made on the Nine footage by a so-called Sports Performance Consultant
constituted gross exaggeration, yet had been inappositely made in the context
of the pending Olympic Games in Sydney.
125
Nine submits that it was not necessary for Ten to re-broadcast
Nine’s copyright in the expansive manner in which it did for
the purpose of reporting the news that 70-80 per cent of elite athletes
take drugs. Whether excessive use was made of the material in which copyright
subsists so as to negative the fair dealing defence is
very much a matter of impression. I agree with the impression formed by the
primary judge. Nine has not established that the conclusion reached by the
primary judge in this respect was erroneous.
126
The primary judge held that
this Ten re-broadcast encaptures
the perils of live interviews on television, and on balance, found that the
purpose of using the Panel Segment was to lightly and humorously criticise the
Nine broadcast.
127
Ten’s re-broadcast involved the
“splicing” or “merging”, in a compressed fashion, of elements of the original
broadcast that were temporally separated. Nine submits that the splicing
distorted the impact of the background interference in the interview in order
to achieve a humorous result. Ten contends that the editing did not affect the
fairness of the dealing, but rather more plainly conveyed the criticism being made, although the nature and content of the so-called
criticism was never clearly identified.
128
The primary judge’s conclusion
was one which he reached “not without some
difficulty”. With respect, I do not agree with that conclusion. The broadcast
of the Panel Segment was made for its own sake, or, as Nine
put it, “watch this for fun” rather than as something shown as part of an
exercise of criticism or review. The Panel members giggled about homeless men
coming into the background of the interview. Any humour that existed in that
respect was accentuated by the splicing. In my view,
the fair dealing defence was not made out.
129
The primary judge would have
upheld a defence of fair dealing for the purpose of criticism or review. There
was a technical glitch in the source programme which
involved the appearance of the presenter of “Newsbreak” being accidentally
shrunk or abbreviated to a very small size. The Panel commentator showed the
Panel Segment in association with the commentary that live television is
fraught with peril.
130
Nine submits that the “content
of the re-broadcast (a technical glitch suffered in the Newsbreak programme)
may be humorous. But while criticism or review may be humorous, humour without
criticism or review does not ground a fair dealing defence”.
131
Whilst there is force in Nine’s
submissions, what Ten has done is to draw attention,
in a humorous way, to a fault appearing in the original television broadcast by
Nine. The primary judge characterised that as an exercise in criticism or
review. I agree with that characterisation. It has not been shown that his
Honour was in error in coming to the conclusion which
he did.
132
This issue was
not pursued on appeal.
133
Nine’s appeal should be upheld
in relation to the following Panel Segments:
-
“A Current Affair”
-
“The Inaugural Allan Border
Medal Dinner”
-
“The Today Show”
(Prasad interview)
but
should otherwise be dismissed. Ten’s Notice of Contention should
be dismissed.
134
In order to give effect to
these conclusions:
-
the
orders made by the primary judge on 20 February 2001, 4 July 2001 and 10
September 2001 should be set aside.
-
In lieu thereof it
should be declared that the making by Ten of a cinematograph film of the
undermentioned Panel Segments, and the re-broadcasting by Ten of those Panel
Segments is an infringement of Nine’s copyright in the television broadcasts
from which the Panel Segments were extracted:
·
“The Today Show”
(Boris Yeltsin)
·
“A Current Affair”
·
“The Inaugural Allan
Border Medal Dinner”
·
“The Today Show”
(Prasad interview)
·
“Midday” (Prime
Minister singing)
·
“Wide World of
Sports” (Grand Final celebration)
·
“Australia’s Most
Wanted” (ARIA Award)
·
“Pick Your Face”
(Kerrie-Anne Kennerley)
·
“Crocodile Hunter”
(Scuba Diving)
·
“Simply the Best”
(Ray Martin)
·
“The Today Show”
(Child yawning)
·
“Nightline” (Kevan Gosper)
-
The matter should be remitted to the primary judge for consideration of
any further or other relief consequential upon these declarations.
135
Ten should pay Nine’s costs of
the appeal. The costs of the proceedings at first instance should
be remitted to the primary judge for reconsideration in the light of the
result of the appeal.