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Thursday, August 07, 2008


CAL v NSW Analysis Part Two: Constitutional Validity of Free Uses of Works By Government

So at the end of my last post I suggested that, if the Government introduced new free use provisions, based on the UK legislative model, to deal with the decision of the High Court in CAL v NSW, then there may be some constitutional problems in doing so. I mentioned two provisions - section 51(xviii), the constitutional copyright power; and section 51(xxxi), the power with respect to acquisition of property on just terms.

Any arguments with respect to section 51(xviii) can arguably be easily dealt with. What's interesting about this power is that, for a long time, it was believed that the Parliament could actually do very little with respect to copyrights because of the narrow interpretation given in the decision of Attorney-General (NSW) ex rel Tooth & Co Ltd v Brewery Employees' Union of NSW [1908] HCA 94; (1908) 6 CLR 469. In that case it was found that the union label trade mark wasn't valid because such marks were not around in 1900, when the Constitution was framed. On that basis, for about eighty-five years it was believed that section 51(xviii) gave the Parliament very narrow power with respect to making IP laws. However, the 1994 decision Nintendo Co Ltd v Centronics Systems Pty Ltd [1994] HCA 27; (1994) 181 CLR 134 and then the subsequent 2000 decision Grain Pool of Western Australia v Commonwealth [2000] HCA 14; 202 CLR 479 - revealed that the HCA believed that section 51(xviii) was quite a wide power, leading to broader concerns that there might not actually be any limits on section 51(xviii).

As such, given this broad interpretation, it would be unlikely that such free use exceptions would fall foul of section 51(xviii), unless some sort of constitutional argument could be raised that the term "copyrights" as it appears in the Constitution requires that remuneration be given to the copyright owner. That, however, would probably cause all types of chaos, and is therefore unlikely. It would be interesting to run though...however, in light of the CAL v NSW decision, I am in no hurry to get another copyright case before the HCA.

It is the second provision, however, that may cause constitutional difficulties for these types of exception. Section 51(xxxi) has occasionally popped up in IP decisions over the last fifteen years (see Australian Tape Manufacturers Association Ltd v Commonwealth [1993] HCA 10; (1993) 176 CLR 480 and Stevens v Kabushiki Kaisha Sony Computer Entertainment [2005] HCA 58; (2005) 221 ALR 448). This constitutional section was actually mentioned at several points in the joint judgment of CAL v NSW:

At [57]: In any event, with an echo of s 51(xxxi) of the Constitution, the Spicer Committee made its recommendation for government use of copyright material in the following terms:[51]
"The Solicitor-General of the Commonwealth has expressed the view that the
Commonwealth and the States should be empowered to use copyright material for
any purposes of the Crown, subject to the payment of just terms to be fixed, in
the absence of agreement, by the Court. A majority of us agree with that view.
The occasions on which the Crown may need to use copyright material are varied
and many. Most of us think that it is not possible to list those matters which
might be said to be more vital to the public interest than others. At the same
time, the rights of the author should be protected by provisions for the payment
of just compensation to be fixed in the last resort by the Court." (emphasis

And then again at paras [68] - [69]:
The purpose of the scheme is to enable governments to use material subject to copyright "for the services of the Crown" without infringement. Certain exclusive rights of the owner of "copyright material" are qualified by Parliament in order to achieve that purpose. It is the statutory qualification of exclusive rights which gives rise to a statutory quid pro quo, namely a statutory right in the copyright owner (here a surveyor) to seek "terms" upon which the State (excepted from infringement by the legislature) may do any act within the copyright (s 183(5)) and to receive equitable remuneration for any "government copies" (s 183A). With reference to the use by the Spicer Committee of the constitutional expression "just terms", it may be added that CAL conducted its case in this Court on the footing that the statutory scheme afforded "just terms" to copyright owners.

Given that CAL proceeded on the basis that the Crown use of copyright statutory licence scheme was "just terms" under section 51(xxxi), then it is arguable that removing this financial aspect may put such a provision in breach of section 51(xxxi). This may particularly be the case if the government continued to charge for the use of the survey plans. Certainly, as the law currently stands, it is available to the Government to use the fair dealing and other exceptions provided in the 1968 Act (in fact, as noted in the CAL v NSW joint judgment, if these provisions apply, then the statutory licence scheme doesn't - see paragraph [11].) However, would the inclusion of provisions that give the government a free pass to use copyright-protected works created by others, for fulfilment of their statutory obligations and what reasonably flows from those obligations, be valid under section 51(xxxi)?

In conclusion, although I have dedicated a whole chapter in my doctoral thesis to determining the boundaries of the copyright power of the Constitution and the concurrent effect on the Australian public domain, I will admit that future intellectual property cases are less likely to be concerned with section 51(18) and more to do with section 51(31). And, to end on a lighter note, that makes The Castle required viewing for anyone involved in intellectual property!

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CAL v NSW Analysis Part One: Possible Statutory Exceptions to Allow This Use

Regular readers will know that I am somewhat inclined to overreaction when the legislature or the judiciary does something with respect to copyright law that I believe errs against reason, common sense, and all the laws of God and mankind. Yesterday's High Court decision in Copyright Agency Limited v State of New South Wales [2008] HCA 35 was possibly one of them, but rather than continue that rant I want to focus on the aftermath on the case.

In the course of the decision, the High Court referred to the position in other jurisdictions with respect to Crown use of copyright works. It cited the UK position under the Copyright, Designs and Patents Act 1988 (UK) and the different types of what it would describe as "free use provisions" under that law. These are exceptions to infringement on the grounds of different types of public administration:
My immediate response to the CAL v NSW High Court decision (admittedly after the initial shock) was that the Federal Government could introduce provisions along these lines that would allow it to use materials for certain circumstances for free, beyond the fair dealing provisions, which would allow it to get around the issues created by the statutory licence scheme. Yes, the statutory licence scheme is actually supposed to ensure that copyright owners get paid for many of these types of uses. However, surely we can distinguish between uses that are connected to the undertaking of a statutory requirement and other uses for which the copyright owner should be remunerated. For example, a department produces a fact sheet on the perils of sunburn and uses as part of that fact sheet copyright protected photographs of people enjoying themselves at the beach. There is arguably no reason why such photographs need to be included, and in this case it would be preferable for the government to be charged for the use of those particular photographs.

Even without that distinction, however, another argument rears its head: the constitutionality of introducing such free use provisions. Two sections of the Australian Constitution would arguably be involved: section 51(xviii), which gives the Federal Parliament the power to make laws with respect to "Copyrights, patents of inventions and designs, and trade marks"; and section 51(xxxi), which also provides power to the Federal Parliament to make laws with respect to "The acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws."

I have just realised that this post is getting very long, so it is going to be split into two. Constitutional analysis forthcoming!

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Monday, April 28, 2008


CAL v NSW in the High Court

Regular readers will know of my interest in all-things-Crown-copyright, so I have come out of my blogging hiatus* to let you all know that last week argument in the appeal of Copyright Agency Limited v State of New South Wales was heard before five members of the High Court (Gleeson CJ, Gummow, Heydon, Crennan, and Kiefel JJ). As you may recall, this case considers whether the Copyright Agency Limited (CAL) can collect money from the NSW Government for the use of certain copyright-protected surveyor plans. The Full Court of the Federal Court of Australia found that CAL could not collect on these plans on the basis an implied licence exists, permitting the NSW Government to do everything it needs to in relation to the plans, as dictated by statute.

A transcript for the hearing can be found on AustLII here. I will get some comments up within the next week.

* Self-imposed in a desperate attempt to actually write my thesis, and I am pleased to report that it's going well, in case my supervisors are reading this.

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Monday, June 25, 2007


Copyright Agency Limited v State of New South Wales

Some readers may be aware of my interest in all-things-Crown copyright, so when the Full Federal Court of Australia handed down its decision in one of the very few Australian cases on Crown copyright a few weeks ago, I knew that I should get blogging. I realise that just saying the words 'Crown copyright' means that I may have lost some readers entirely, so let's go back to basics...

What's Crown copyright? Crown copyright is essentially government-owned copyright. This means that the government owns the copyright in those particular works, like a company might own copyright, or I own copyright in this blogpost. In addition to general works, governments also own copyright in legislation and case law that is produced by the Parliament or judiciary in that particular jurisdiction. Pursuant to Division 1 Part VII of the Copyright Act, Crown copyright subsists in:

In 2005, the now-dissolved Copyright Law Review Committee released a report on the Australian Crown copyright provisions and made a number of significant recommendations, including the repeal of sections 176-178 and that copyright in primary legal materials (and a number of other government documents, for example, certain Committee reports) be abolished. The Federal Government is yet to reply to the recommendations made by the Committee.

Is Crown copyright available everywhere? Many countries do not have Crown or government copyright: for example, in the United States, "copyright not available any work of the United States Government" (17 U.S.C section 105). This means that all government produced works, legislation, case law etc is technically in the public domain (with some scholars arguing that, because of this fact, the 'public domain' takes on an additional significance, because copyright law cannot impede the use and wider reuse of these materials.)

What was CAL v State of New South Wales [2007] FCAFC 80 about? In two words: surveyor plans. Pursuant to a number of NSW statutes, survey plans have to follow certain requirements in order to be registered in NSW. These survey plans are also reproduced for certain purposes by the NSW Government and stored in a database. CAL went to the Copyright Tribunal seeking a determination pursuant to sections 183 and 183A of the Copyright Act as to the amount of royalties that the NSW Government should have to pay to the copyright owners for use of particular plans. However, the State of NSW argued that it was the copyright owner under sections 176 (the plans were made under its direction or control) and 177 (it was the first to publish the plans, therefore, under this section, it owned the copyright). The case was referred to the Federal Court of Australia, where the Full Bench made a determination.

What did the Court find about Crown copyright? The Federal Court found that Crown copyright did not subsist in the survey plans in question under either section 176 and 177. Therefore, the Crown did not own the copyright in these particular plans.

Does that mean the State of NSW lost? The Court found that while Crown copyright did not subsist in the plans, the State was entitled to a licence, beyond what was permitted under section 183 of the Copyright Act, allowing it reproduce and communicate the plan in question to the public. The Court found that the “State is licensed to do everything that, under the statutory and regulatory framework that governs registered plans, the State is obliged or authorised to do with or in relation to registered plans.” (at 158).

What was interesting about the case? To me, the glaring omission was the fact that the court did not discuss the recommendation of the CLRC in its final Crown Copyright report that sections 176 and 177 actually be repealed. There are two issues here. First, it is understandable that the Court may have been reluctant to engage in any discussion of whether the Federal Government should or should not repeal these provisions given that the Government is yet to respond to the review. Second, however, the Court did not even mention the fact that the CLRC had conducted a review into Crown copyright and made a recommendation regarding these provisions. While some may consider that irrelevant to the current point at hand, it seems to me that if you are discussing provisions of the Copyright Act that might not be around in a year, it may be worth mentioning that fact.

Will the decision be appealed? According to this CAL press release, "CAL is considering the decision and will decide on our next move in the next few weeks." Let's all chant softly, "High Court! High Court! High Court!"

How do you know all this?
Copyright Agency Limited v State of New South Wales [2007] FCAFC 80 (5 June 2007)
"Court decides surveyors own copyright in maps and plans", CAL News Release.
Catherine Bond, "Reconciling Crown Copyright and Reuse of Government Information: An Analysis of the CLRC Crown Copyright Review", (2007) 12 Media & Arts Law Review (forthcoming), available on SSRN as part of the UNSW Faculty of Law Research Series here.

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