Amalgamated Television Services Pty Ltd v Foxtel Digital Cable Television Pty Ltd
[1995] FCA 843
•20 OCTOBER 1995
C A T C H W O R D S
BROADCASTING - proposal for retransmission by subscription cable television service provider of free-to-air television broadcasts - proposed retransmission service part of multi-channel cable television package - whether s.212(1) Broadcasting Services Act 1992 exempts proposed retransmission from regulatory regime established by Act - meaning of "service" in s.212(1) - whether "service" in s.212(1) refers to multi-channel cable television package or is limited to a single channel provided under each subscription television broadcasting licence.
COPYRIGHT - whether retransmission of free-to-air television broadcasts constitutes breach of copyright owned by commercial television licensees - operation of s.199(4) Copyright Act 1968 - whether broadcast an "authorized broadcast" within the meaning of s.199(4) - whether reference to "Broadcasting Act 1942" in s.199(7) to be read as reference to "Broadcasting Services Act 1992" - s.10A Acts Interpretation Act 1901 - whether commercial television licences granted under s.81 Broadcasting Act 1942 and continued in force by Broadcasting Services (Transitional Provisions and Consequential Amendments Act 1992 as if allocated under Broadcasting Services Act 1992 are licences granted under Broadcasting Act 1942.
STATUTORY INTERPRETATION - whether reference in Act to short title of Act a reference to a re-enacted Act with or without modification - s.10 Acts Interpretation Act 1901.
TRADE MARKS - whether retransmission of trade marks contained in free-to-air television broadcasts constitutes an infringement of trade marks owned by free-to-air broadcaster - whether retransmission of trade mark creates inference of authority to use mark -Trade Marks Act 1955.
Acts Interpretation Act - s.10
Broadcasting Act 1942 (Cth) - s.89DA(1),(5),(9), s.122, s.199(7)
Broadcasting Services Act 1992 (Cth) - s.14, s.93(1), s.96(1),(2), s.212
Copyright Act 1968 (Cth) - s.199
Broadcasting Services (Transitional Provisions and Consequential Amendments) Act 1992 (Cth) - ss.5, 28
Trade Marks Act 1955 (Cth) - ss.6(1), 58, 62Champagne Heidsieck et Cie Monopole Societe Anonyme v. Buxton [1930] 1 Ch 330
Commissioner for Government Transport (NSW) v Deacon (1957) 97 CLR 535 at 546.
Fender Australia Pty Ltd v Bevk (1989) 25 FCR 161
Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326
Musidor BV v Tansing (1994) 52 FCR 363
Re Universal Distributing Co Ltd (In Liq) (1933) 48 CLR 171 at 173
Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89AMALGAMATED TELEVISION SERVICES PTY LTD; HSV CHANNEL 7 PTY LIMITED; SEVEN NETWORK LIMITED; TCN CHANNEL NINE PTY LIMITED;
GENERAL TELEVISION CORPORATION PTY LTD;
NINE NETWORK AUSTRALIA PTY LTD;
TELEVISION & TELECASTERS (SYDNEY) PTY LTD;
TELEVISION & TELECASTERS (MELBOURNE) PTY LTD;
TEN NETWORK LIMITED v
FOXTEL DIGITAL CABLE TELEVISION PTY LIMITED and
FOXTEL MANAGEMENT PTY LIMITEDDavies J
Sydney
20 October 1995IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No NG 734 of 1995
)
GENERAL DIVISION )BETWEEN: AMALGAMATED TELEVISION SERVICES PTY LTD
(ACN 000 145 246)
First Applicant
HSV CHANNEL 7 PTY LIMITED
(ACN 004 342 303)
Second Applicant
SEVEN NETWORK LIMITED
(ACN 052 816 789)
Third Applicant
TCN CHANNEL NINE PTY LIMITED
(ACN 001 549 560)
Fourth Applicant
GENERAL TELEVISION CORPORATION PTY LTD
(ACN 004 330 036)
Fifth Applicant
NINE NETWORK AUSTRALIA PTY LTD
(ACN 008 685 407)
Sixth Applicant
TELEVISION & TELECASTERS (SYDNEY) PTY LTD
(ACN 008 664 962)
Seventh Applicant
TELEVISION & TELECASTERS (MELBOURNE) PTY LTD
(ACN 008 664 953)
Eighth Applicant
TEN NETWORK LIMITED (ACN 052 515 250)
Ninth Applicant
AND:FOXTEL DIGITAL CABLE TELEVISION PTY LIMITED
(ACN 069 008 797)
First Respondent
FOXTEL MANAGEMENT PTY LIMITED
(ACN 068 671 938)
Second Respondent
CORRIGENDUM
Coram: Davies J
Date: 20 October 1995
Place: SydneyPlease amend the judgment as follows:-
Para 2 - p.9, 1st sentence - "In my opinion, s.212(1), the term ..." should read "In my opinion, in s.212(1), the term ..."
Stuart Simington
Associate to Justice Davies
23 October 1995
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No NG 734 of 1995
)
GENERAL DIVISION )BETWEEN: AMALGAMATED TELEVISION SERVICES PTY LTD
(ACN 000 145 246)
First Applicant
HSV CHANNEL 7 PTY LIMITED
(ACN 004 342 303)
Second Applicant
SEVEN NETWORK LIMITED
(ACN 052 816 789)
Third Applicant
TCN CHANNEL NINE PTY LIMITED
(ACN 001 549 560)
Fourth Applicant
GENERAL TELEVISION CORPORATION PTY LTD
(ACN 004 330 036)
Fifth Applicant
NINE NETWORK AUSTRALIA PTY LTD
(ACN 008 685 407)
Sixth Applicant
TELEVISION & TELECASTERS (SYDNEY) PTY LTD
(ACN 008 664 962)
Seventh Applicant
TELEVISION & TELECASTERS (MELBOURNE) PTY LTD
(ACN 008 664 953)
Eighth Applicant
TEN NETWORK LIMITED (ACN 052 515 250)
Ninth Applicant
AND:FOXTEL DIGITAL CABLE TELEVISION PTY LIMITED
(ACN 069 008 797)
First Respondent
FOXTEL MANAGEMENT PTY LIMITED
(ACN 068 671 938)
Second Respondent
MINUTES OF ORDER
Davies J
Sydney
20 October 1995THE COURT ORDERS THAT:
1.The claims made in paragraphs 1 to 36, 37 to 44 and 115 to 118 of the amended statement of claim be dismissed.
2.Costs be reserved.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
)
NEW SOUTH WALES DISTRICT REGISTRY ) No NG 734 of 1995
)
GENERAL DIVISION )BETWEEN: AMALGAMATED TELEVISION SERVICES PTY LTD
(ACN 000 145 246)
First Applicant
HSV CHANNEL 7 PTY LIMITED
(ACN 004 342 303)
Second Applicant
SEVEN NETWORK LIMITED
(ACN 052 816 789)
Third Applicant
TCN CHANNEL NINE PTY LIMITED
(ACN 001 549 560)
Fourth Applicant
GENERAL TELEVISION CORPORATION PTY LTD
(ACN 004 330 036)
Fifth Applicant
NINE NETWORK AUSTRALIA PTY LTD
(ACN 008 685 407)
Sixth Applicant
TELEVISION & TELECASTERS (SYDNEY) PTY LTD
(ACN 008 664 962)
Seventh Applicant
TELEVISION & TELECASTERS (MELBOURNE) PTY LTD
(ACN 008 664 953)
Eighth Applicant
TEN NETWORK LIMITED (ACN 052 515 250)
Ninth Applicant
AND:FOXTEL DIGITAL CABLE TELEVISION PTY LIMITED
(ACN 069 008 797)
First Respondent
FOXTEL MANAGEMENT PTY LIMITED
(ACN 068 671 938)
Second Respondent
Coram: Davies J
Place: Sydney
Date: 20 October 1995REASONS FOR JUDGMENT
INTRODUCTION
These reasons for judgment consider the issues raised in paragraphs 1 to 36, 37 to 44 and 115 to 118 of the amended statement of claim, which have been set aside for determination separately from the remainder of the issue on the proceedings.
It was submitted on behalf of the respondents that, if the Court found that the second respondent, Foxtel Management Pty Ltd ("Management"), was proposing that which would be a breach of the regulatory regime established by the Broadcasting Services Act 1992 (Cth), the applicants would have no standing to bring proceedings for an injunction. It was submitted that only the Attorney-General would be the appropriate person to sue. It was submitted that re-transmission of programs in circumstances which were in breach of the Broadcasting Services Act would constitute an offence which could be the subject of prosecution but would not be the subject of civil action other than one brought by the Attorney-General or by his fiat. In my opinion, however, the applicants have adequate standing. Their interest is not to prevent the commission of an offence but to prevent the use by the respondents of their broadcasts. In respect of the matters now claimed, the applicants have a special interest sufficient to sustain the relief which they seek. The applicants therefore have
standing in respect of the matters with which the Court is now concerned which were raised in the amended application and amended statement of claim.
The applicants include the proprietors of the Channel 7, Channel 9 and Channel 10 commercial broadcasting television stations in Sydney and Melbourne. The respondents, Foxtel Digital Cable Television Pty Limited ("Cable") and Management, propose to establish a Pay TV subscription service operating in Sydney and Melbourne. It is proposed that the service will commence next Monday, 23 October. Transmission will be effected by means of cable to subscribers' premises.
Cable is the holder of 20 subscription television broadcasting licences allocated under Part 7 of the Broadcasting Services Act 1992 (Cth) ("the Broadcasting Services Act"). Seventeen of those licences have been appropriated by Cable to provide 17 channels of a Pay TV service. Management does not hold a licence under the Broadcasting Services Act but proposes to re-transmit, without the consent of the applicants, the programs broadcast on Channels 7, 9 and 10.
The subscription agreement, into which each subscriber will enter, refers to Cable as "Foxtel" and provides, inter alia:-
" × FOXTEL will provide the Channels to you.
.Telstra Multimedia, on behalf of FOXTEL, will install and maintain the broadband transmission facilities; and
×FOXTEL Management will provide to you as a separate service Retransmitted Free‑to‑Air Broadcasts.
1.1 FOXTEL will provide the Channels and FOXTEL Management will provide the Retransmitted Free-to-Air Broadcasts to you. FOXTEL and FOXTEL Management will use reasonable skill and care in providing the channels and Retransmitted-Free-to-Air Broadcasts (as applicable). FOXTEL may vary Channel content or transmission times or stop providing Channels without notice. FOXTEL is not liable for any loss or disappointment you may suffer as a result.
...
1.3It is FOXTEL's policy to provide you with first class service in all matters relating to the provision of the Service, the efficient and trouble free reception of that Service by you and the prompt handling of all subscriber enquiries and complaints. FOXTEL Management makes the same promise in relation to the provision of the Retransmitted Free-to-Air Broadcasts. To enable this to be achieved, FOXTEL supervisory staff will from time to time monitor customers' telephone calls to the Customer Service Centre to ensure that all such calls are handled with expedition, efficiency and courtesy.
...
2.1 FOXTEL's Equipment will remain the property of FOXTEL.
FOXTEL may add or substitute equipment at its absolute discretion.
...
2.4You agree not to connect more than one television set to any outlet installed by FOXTEL.
...
3.1You must pay FOXTEL the subscription fees set out on the Rate Card every month in advance. You must pay the first month's subscription fees and the installation fee set out on the Rate Card before or when you sign this agreement.
3.2The subscription fees set out on the Rate Card relate to the Channels only. If you are being supplied the Retransmitted Free-to-Air Broadcasts these are supplied to you at no further charge.
...
4.1Telstra Multimedia, on behalf of FOXTEL, will install the broadband transmission facilities to your home and maintain those facilities. Telstra Multimedia will engage Telstra to perform these obligations.
...
9.1In addition to anything else FOXTEL, FOXTEL Management or Telstra Multimedia can do, FOXTEL, FOXTEL Management or Telstra Multimedia can terminate its obligations under this agreement at any time without telling you if:
(a) you break any of the terms of this agreement; or
(b)FOXTEL, FOXTEL Management or Telstra Multimedia believes that the Channels or Retransmitted Free-to-Air Broadcasts are being used in a way forbidden by paragraph 1.2."
...
12.1Any party can terminate its obligations under this agreement by notice to the others. If you terminate this Service, you must pay subscription fees to the date you nominate as the date you want to stop receiving the Channels.
...
13.1To the extent permitted by law, FOXTEL Management will provide to you as separate services and without further charge your local commercial television network(s) or station(s), the ABC and the SBS (if broadcasts in your area) ("Retransmitted Free-to-Air Broadcasts").
13.2THE RETRANSMITTED FREE TO AIR BROADCASTS WILL BE PROVIDED TO YOU BY FOXTEL MANAGEMENT BY RETRANSMITTING ON CABLE THOSE FREE TO AIR BROADCASTS.
13.3If for any reason beyond its control (for example, an order of the Court) FOXTEL Management is prohibited from providing to you the Retransmitted Free-to-Air Broadcasts then those services may be immediately terminated in the sole discretion of FOXTEL Management and FOXTEL Management is not liable for any loss or disappointment you may suffer as a result. Termination of those services will not affect the provision by FOXTEL of the Service."
It was only in the last few weeks that it was decided that Management should re-transmit the Free-to-Air broadcasts of Channels 7, 9 and 10, rather than that Cable should do so. The change was made because of the provisions of s.212 of the Broadcasting Services Act, to which I shall now turn.
Section 212
Section 212 of the Broadcasting Services Act provides, inter alia:-"(1) Subject to subsection (2), the regulatory regime established by this Act does not apply to a service that does no more than:
(a)re-transmit programs that are transmitted by a national broadcasting service; or
(b)re-transmit programs that are transmitted by a commercial broadcasting licensee or a community broadcasting licensee:
(i)within the licence area of that licence; or
(ii)outside the licence area of that licence in accordance with permission in writing given by the ABA.
(2) No action, suit or proceeding lies against a person in respect of the re-transmission by the person of programs as mentioned in sub-section (1) unless, at the time of the re-transmission, the person is also a licensee."
The Broadcasting Services Act, which came into force on 5 October 1992, replaced provisions of the Broadcasting Act 1942 (Cth) ("The Broadcasting Act"). Provisions of the Broadcasting Act which were comparable to s.212 of the Broadcasting Services Act were:-
"89DA (1) A person may apply to the Minister for the grant of a permit under this section.
...
(5) Where a person (who may be a licensee) applies for a permit under this section, the Minister may grant the person:
(a)a permit authorising the person to rebroadcast programs broadcast or transmitted by the Corporation, the SBS or a licensee;
(b)a permit authorising the person to use telegraph lines to transmit programs broadcast or transmitted by the Corporation, the SBS or a licensee; or
(c)a permit authorising persons to whom the permit holder transmits programs broadcast or transmitted by the Corporation, the SBS or a licensee by telegraph line to use telegraph lines to transmit the programs to other persons.
...
(9)In deciding whether to grant a permit under this section, the Minister shall have regard to:
(a)the desirability of ensuring that, as far as practicable, a technically adequate signal is available throughout the service area of a licence;
(b)the implications (if any) for the integrity of the service area of any licence if the permit were granted; and
(c)any other matters or circumstances that the Minister considers relevant."
"122. No action, suit or proceeding lies against a person who is the holder of a retransmission permit in respect of any matter transmitted by the person in accordance with the conditions of the permit unless, at the time of the transmission, that person is also:
(a)the holder of a licence; or
(b)the holder of an MCS permit;
pursuant to which that matter is being broadcast."
An effect of s.212(1) of the Broadcasting Services Act is that no permit or other authority under the Act is required for a service that does no more than re-transmit programs. Section 212(1) provides that the regulatory regime established by the Act does not apply to such a service. The limitation from action which had been contained in s.122 of the Broadcasting Act was again provided, in different terms, in s.212(2) of the Broadcasting Services Act.
It was submitted on behalf of the applicants that s.212(1) of the Broadcasting Services Act will not apply to what is proposed by the respondents as they propose together to provide a service that does more than re-transmit programs that are broadcast by a national broadcasting service. It was submitted by Mr T.F. Bathurst QC, with whom Mr M.R. Speakman appeared for the applicants, that in s.212(1) the word "service" is used in a broad sense and encompasses the type of service that the two respondents intend to provide to their subscribers.
It may be accepted that, from a subscriber's point of view, the subscriber will pay one fee for a service which will give access to 17 new channels and to the programs of Channels 7, 9 and 10. However, Mr D.K. Catterns QC, with whom Mr R. Cobden appeared for the respondents, submitted that the Broadcasting Services Act uses the word "service" in s.212(1) as referring to the output of one channel. Mr
Catterns submitted that, where the Act intends a broader denotation, the term "services" is used.
Section 96 of the Broadcasting Services Act provides, inter alia:-
"96(1) The ABA may allocate to a person, on application in writing by the person, a subscription television broadcasting licence other than a licence referred to in section 93.
(2)Licences under subsection (1) are to be allocated on the basis of one licence per service.
..."
It is under this regime that Cable will have one licence for each of the channels on which it broadcasts programs. Although there was no evidence about the matter, I assume that each licence defines the service or channel by reference to, inter alia, the frequency to be used and the area in respect of which the licence operates.
An exception to the general principle of one licence per service may be seen in a provision such as s.93(1) which provides:-
"The Minister is to determine in writing a price-based allocation system for allocating 2 licences (`licence A' and `licence B') each of which allows the provision of up to 4 subscription television broadcasting services with the use of a subscription television satellite."
Generally, the term "services" is used in the Act when the Act is referring to the broadcasting of programs. Thus, s.14 of the Broadcasting Services Act:-
"Commercial broadcasting services are broadcasting services:
(a)that provide programs that, when considered in the context of the service being provided, appear to be intended to appeal to the general public; and
(b)that provide programs that:
(i)are able to be received by commonly available equipment; and
(ii)are made available free to the general public; and
(c)that are usually funded by advertising revenue; and
(d)that are operated for profit or as part of a profit-making enterprise; and
(e)that comply with any determinations or clarifications under section 19 in relation to commercial broadcasting services."
See also ss.39(1)(a), 94(6) and 116A.
Sections 131 and 132 are examples of provisions to which the concept of one licence per channel is appropriate.
In my opinion, s.212(1), the term "service" has the meaning for which Mr Catterns contended. This reading finds general support from the manner in which the term is used throughout the Act. Particular support is found in the subsection. Thus, para (a) refers to "a national broadcasting service" and para (b) refers to "a commercial broadcasting licensee or a community broadcasting licensee". Moreover, between paras (a) and (b) is the word "or", so they are alternatives. This terminology would be inappropriate if the term "service" encompassed multi-channel services.
Mr Bathurst also submitted that Management would do more than retransmit. He pointed to the undertaking by Management to provide "efficient and trouble free reception," which appears in cl 1.3 of the subscriber agreement. In my opinion, however, such obligations are part and parcel of a retransmission and are within the legislator's contemplation of retransmission.
Mr Bathurst next submitted that there were technical reasons why the transmission proposed by the respondents will amount to more than re-transmission of the applicant's programs.
Evidence was given by Mr J.M. Blomfield, Director of Technology and Business Development, Foxtel Management, that the process to be used by the respondents was as follows:-
"6. FOXTEL occupies premises at Pyrmont (Network Diagram #1) where a range of administrative and production functions are carried out, including the origination and coordination of the programming material for FOXTEL Cable's service. FOXTEL Cable's multi‑channel service will be despatched from this site to the headend facilities referred to in paragraph 8.
...
8.Next in the transmission process is the "headend" facility. There is (or will be) a headend facility for each city in which FOXTEL Cable and FOXTEL Management propose to transmit to subscribers. I will describe the Sydney headend facility (Network Diagram #2): there is no difference in the equipment and technology to be used at the other headend facilities (except for an extra step to be followed in Melbourne, which is described in paragraph 26 below). In this description I will seek to use non‑technical terms, or to explain technical terms (where used) in lay terms. The terms I use will not necessarily be those that would be used in a discussion of the topics between experts or professionals in their field.
9.The Sydney headend facility is located at Telstra's facility at Homebush (the "Homebush headend facility". The Homebush headend facility is in a location which, due to geographical position relative to the transmissions of Seven Sydney, Nine Sydney and Ten Sydney (using the abbreviated names of those companies as they are used in the Statement of Claim) (the "Sydney Commercial TV Broadcasters") enjoys clear reception of the Sydney Commercial TV Broadcasters' television signals.
10.It is at the headend facility that the Free‑To‑Air Broadcasts of the Sydney Commercial TV Broadcasters are received for retransmission to FOXTEL Management subscribers. The equipment by which that reception and retransmission will be effected is described in the following paragraphs: all that equipment will be owned and operated by companies within the Telstra group, and made available to FOXTEL Management for the purposes of providing the retransmissions to its subscribers.
11.The Free‑To‑Air Broadcasts will be received by three antennas. One antenna will be a UHF (ultra high frequency) antenna and will capture only the SBS signal, as SBS broadcasts only on a frequency in the UHF band. Two further antennas will be used to receive the VHF (very high frequency) signals of the Sydney Commercial TV Broadcasters and of the ABC, all of whom broadcast on both VHF and UHF. The antennas are specifically tuned to receive the desired channels.
12.The degree of quality of a VHF signal received by an antenna can be responsive to the physical characteristics of the antenna. This is the reason, for example, for the arrangement of differently‑spaced cross bars on a typical domestic roof‑top TV antenna.
13.At the Homebush headend facility one VHF antenna (Network Diagram #3) will be specifically "tuned" to the VHF broadcasts of channels 7, 9 and 10 (which are close together on the VHF spectrum and allow optimum aerial design to receive all three), and one will be "tuned" to the ABC, which broadcasts on VHF channel 2, further away on the spectrum. This part of the headend facility, and the steps described in paragraphs 14 to 17 below, is depicted in greater detail in Annexure A‑1, using the same references (#3, #4 etc) where they appear, as are used on the Network Diagram (that is, Annexure A).
14.The antenna equipment to be used at the Homebush headend facility is professional, high‑quality equipment. A true summary of the technical specifications and features of the VHF antennas to be used is set out in Annexure B to this affidavit.
15.When received by the antenna tuned to the Free‑To‑Air Broadcasts of the Sydney Commercial TV Broadcasters each signal is a vestigial sideband television channel. It includes both video and audio content and, at this point, includes the transmission of all three Sydney Commercial TV Broadcasters. At the base of the antenna a high‑quality low‑loss feeder cable (Network Diagram #4) will carry the signal to an RF splitter (Network Diagram #5 ‑ only visible on Annexure A‑1). The signal is split three ways and carried by feeder cables of the same technical specifications to three professional broadcast demodulators. A true summary of the technical specifications and features of the feeder cable is set out in Annexure C to this affidavit.
16.The equipment and handling of the signals from the Free‑To‑Air Broadcasts is, after the reception by antennas as described in paragraphs 11 to 15 above, the same. By way of illustration, I will describe the process as it will apply to Seven Sydney's Free‑To‑Air Broadcasts.
17.One of the three professional broadcast demodulators (Network Diagram #6) referred to in paragraph 15 above will be tuned to the VHF frequency at which Seven Sydney broadcasts. (There is a separate, dedicated professional broadcast demodulator for each of the Sydney Commercial TV Broadcasters, the ABC and the SBS.) A true summary of the technical specifications and features of the professional broadcast demodulators to be used is set out in Annexure D to this affidavit. The professional broadcast demodulators are professional, high‑quality equipment similar to that used by the Sydney Commercial TV Broadcasters (and indeed Australian commercial broadcasters generally) at their UHF retransmission sites.
18.The video and audio signal from the demodulator is directly connected via shielded cables to a modulator (Network Diagram #7). At this time the signal is converted to a vestigial sideband 7 MHz television channel. This conversion process is called modulation and is in accordance with Australian emission standards. These emission standards are the same specifications to which the Sydney Commercial TV Broadcasters adhere.
19.From the modulator, the upconverter (also at Network Diagram #7) takes this modulated signal and elevates the channel to the nominated frequency that is required for the cable system and set‑top unit. The frequency allocated to Seven Sydney's signal for transmission on the Telstra cable used by FOXTEL Management will be 294.25
MHz. (The signals to be used in the case of Nine Sydney and Ten Sydney's signals will be 308.25 MHz and 315.25 MHz respectively.)
20.The modulator and upconverter are an integrated professional device supplied by either Barco or Philips. Annexed and marked E are the specifications issued by the manufacturer for the Barco equipment.
21.There are a number of key stages or components in the passing of the signals from the headend to each subscriber's house. They are:
°signal amalgamation, which occurs by the use of RF‑Optical Transmitters and Signal Monitors;
° optical fibre (Network Diagram #8);
° regional nodes (or local exchange nodes);
° optical‑RF hubs;
°amplifiers or line extenders; and
°tap.
Annexure G describes each of these in more detail. In each case, the equipment used will handle the Free‑to‑Air Broadcasts for FOXTEL Management in the same way as it will handle the multi‑channel cable transmissions for FOXTEL Cable, by preserving quality of the signal and minimising losses.
22.The frequency allocated at the re‑modulation of the signal, described in paragraph 19 above, is the signal that the FOXTEL set‑top units will be programmed to recognise as the Seven Sydney signal. The FOXTEL set‑top units (supplied under the FOXTEL Customer Contract which is exhibited to the affidavit of Richard Freudenstein to be sworn in these proceedings) are analogue cable tuners. A true summary of the technical specifications and features of the FOXTEL set‑lop units is set out in Annexure H to this Affidavit.
23.Each subscriber's FOXTEL set‑top unit will be uniformly programmed for the selection of frequencies from the overall transmission arriving at the subscriber's premises via the cable. The user of the subscriber's television set will access channels carried on the cable through the set‑top unit. The set‑top unit has the capacity to select any channel from 1 to 80.
24.The process of allocating channels, carried at particular frequencies on the coaxial cable, to one or two digit numbers selected by the user is known as "channel mapping". FOXTEL will channel map the FOXTEL sel‑top units to cause the Free‑To‑Air Broadcast received at the headend facility from Seven Sydney's broadcasts to appear at the user's set‑top unit when the user selects "7" on the remote control or the set‑top unit. (Similarly, "9" will select Nine Sydney's broadcasts and "10" will select Ten Sydney's broadcasts.)
Mr Blomfield also deposed:
"... the retransmission of the Free-to-Air Broadcasts referred to in my first affidavit will be scrambled (this is the preferable term to encrypted).
... the following process will occur:
...
(c)the video signal would be processed using an encoding device. ... This scrambled picture would be transmitted along the broadband system where it is presented to a set top unit in the customer's premises. The set top unit provides a number of functions including a de-scrambling function when it is authorised to do so. The de-scrambling function is essentially the reverse of the scrambling function and enables the picture to be reconstituted and made intelligible. This would be carried out by the de-scramblers incorporated in the set top unit. ... A smart card which incorporates a microprocessor and memory is inserted into the set top unit and receives a stream of data from the Customer Service Centre in Melbourne (via the headend) which would instruct that smart card to send the appropriate signal to the de-scrambler in the set top unit in order to effect the de-scrambling function."
As can be seen, it is not proposed that there will be a simple receipt and retransmission of a broadcast. To maintain quality and to cope with the technical differences between wireless transmission and cable transmission, a number of steps are to be taken. These include the division or splitting of signals, the passing of signals through de-modulators and modulators, the passing of signals at frequencies different from those at which they were received and the transmission of the signals into a set-top unit at the subscriber's premises. Those steps are taken for technical reasons and for the maintenance of quality. One further step, that of encrypting or scrambling the signal, will also be undertaken, presumably for the purpose of preventing use of the transmission which is not authorised by Management. Mr Bathurst pointed out that Management's transmission will be received not immediately by a subscriber's television set but first by the set-top unit owned by Cable.
In my opinion, s.212(1), when it uses the term "does no more than" does not refer to the techniques by which re-transmission occurs. It is beyond doubt that cable transmission was one of the means which Parliament had in mind for re-transmission. Parliament was not concerned with the techniques by which that re-transmission occurred. Section 212(1) does not deal with that sort of matter.
The Explanatory Memorandum to the Bill itself shows that Parliament intended to exclude the retransmission which included local news items or community announcements or significant delays between the broadcast and the retransmission.
The Explanatory Memorandum pointed out that, if those occurred, a licence would be required. Moreover, the Broadcasting Services Act intends to encompass a multitude of technologies. Section 4(1) of the Broadcasting Services Act provides that:-
"Parliament also intends that broadcasting services in Australia be regulated in a manner that, in the opinion of the ABA:
...
(c)encourages:
(i)the development of broadcasting technologies and their application; and
(ii)the provision of services made practicable by those technologies to the Australian community."
Section 6(1) of the Act defines "broadcasting service" as meaning:-
"a service that delivers television programs or radio programs to persons having equipment appropriate for receiving that service, whether the delivery uses the radiofrequency spectrum, cable, optical fibre, satellite or any other means or a combination of those means ..."
I am satisfied that s.212(1) will apply to the re-transmission of the programs of Channels 7, 9 and 10 proposed by Management. It is proposed that those programs will be received in a subscriber's television set at the time they are broadcast and without alteration. Although there were differences between the witnesses who have given evidence, it has not been established on the probabilities that there will be any difference between the receipt on a television set not attached to cable and its receipt by a television set receiving through the cable service which will be perceptible to the human eye or ear. As Management will use one channel for the broadcasts of each of the commercial broadcasting stations, Management will do no more than, on each channel, re-transmit programs that are transmitted by a commercial broadcasting service.
Mr Bathurst also submitted that Management will not engage in retransmission for most of its subscribers will be already able to receive the commercial broadcasting channels on their television sets. However, Management will retransmit. It will receive the broadcasts by wireless at one place and will send them on by cable to other places. That is retransmission.
It is probably unnecessary for me to discuss s.212(2) but, as the provision has been the subject of submission, I shall make some observations on it.
Section 212(2) prevents proceedings being brought against a person in respect of a re-transmission which satisfies the provisions of s.212(1) at the time of the re-transmission unless the person is also a licensee. It was to strengthen the argument that this provision applied that Management was brought into the arrangements and contracted to provide the Free-to-Air broadcasts to the subscribers.
In my opinion, the words "the person is also a licensee" refer to a person who holds a relevant licence, that is to say, to a person who is a licensee in respect of the broadcast. This will happen where, for example, the licensee obtains permission in writing from the ABA to re-transmit outside the licence area. To read the words "a licensee" as encompassing any person who holds a licence would be to give them a meaning which had no relevance in the context. The more limited meaning gives the term relevance in the context for it permits proceedings to be brought in respect of the broadcast and in respect of the re-transmission against a licensee who is responsible for both. Persons who are not responsible for the broadcast but who merely re-transmit are protected. Such a limitation was expressly stated in s.122 of the Broadcasting Act.
Two additional considerations support this conclusion. As the Explanatory Memorandum shows, Parliament in s.212(2) turned its attention to "the content of the services broadcast." Accordingly, it is appropriate to relate the term "licensee" to the content of the broadcast. The word "also" assists this reading. In the context, it means "in addition", and requires that, in respect of the transmissions the subject of a complaint, the person be not only the retransmitter but in addition the licensed broadcaster. The word "also" is a demonstrative adverb. Therefore, it is appropriate to relate it to the matter under concern, that is to say, the program complained of, rather than to a quite unrelated matter.
FREE-TO-AIR SERVICES
Mr Bathurst submitted that there was a breach of the principles of the Broadcasting Services Act in that Management will charge and receive a fee for the service provided by way of retransmission of the commercial broadcasting channels. I accept Mr Bathurst's submission that, as a matter of practicality, a fee will be charged for the services. Although the totality of the subscription fee is allocated in the subscriber agreement to Cable's services, there is only one fee charged. That fee gives entitlement to the services of Management and Management, in due course, will be remunerated therefrom.However, I do not think that there will be any breach of the principles established by the Act. As s.14 of the Broadcasting Services Act indicates, commercial broadcasting services are services that are to be made available free to the general public and are to be usually funded by advertising revenue. The retransmission will not impinge upon the services provided by the commercial broadcasting services. To retransmit broadcasts via cable to premises which include premises unable to receive the commercial channels or which receive them poorly is to provide an additional facility. There is nothing in the Broadcasting Act that suggests that a fee should not be charged to those wishing to take advantage of that facility.
COPYRIGHT
The applicants allege that there will be a breach of their copyright in the broadcasts of Channels 7, 9 and 10. The respondents concede that this would be so
but for the provisions of s.199 of the Copyright Act 1968 (Cth). That section provides, inter alia:-"(4) A person who, by the reception of an authorized television broadcast or sound broadcast, causes a literary, dramatic or musical work or an adaption of such a work, an artistic work or a cinematograph film to be transmitted to subscribers to a diffusion service shall be treated, in any proceedings for infringement of the copyright, if any, in the work or film, as if the person had been the holder of a licence granted by the owner of that copyright to cause the work adaptation or film to be transmitted by the person to subscribers to that service by the reception of the broadcast.
...
(7)A reference in this section to a broadcast shall:
(a)in the case of a television broadcast - be read as a reference to such a broadcast made by the Australian Broadcasting Corporation, by the Special Broadcasting Service Corporation, by any person with the use of facilities provided by the Special Broadcasting Service Corporation, by the holder of a licence or permit granted under the Broadcasting Act 1942 or by a person prescribed for the purposes of subparagraph 91(a)(iii); and
(b)in the case of a sound broadcast - be read as a reference to such a broadcast made by the Australian Broadcasting Corporation, by the Special Broadcasting Service Corporation, by any person with the use of facilities provided by the Special Broadcasting Service Corporation, by the holder of a licence or permit granted under the Broadcasting Act 1942 or by a person prescribed for the purposes of subparagraph 91(c)(iii)."
The general operation of s.199(4) was explained by Burchett J in Australian Performing Right Association Ltd v Telstra Corporation Ltd (unreported, Black CJ, Sheppard & Burchett JJ, 23 August 1995) at p.17 of his Honour's reasons for judgment.
The issue turns on the reference in s.199(7) to "the Broadcasting Act 1942". The applicants submit that they do not hold a licence granted under the Broadcasting Act but are deemed to hold licences allocated under the Broadcasting Services Act.
It is not in dispute that the applicants held licences under the Broadcasting Act. All their licences to broadcast were originally granted under the Broadcasting Act, the last of the licences being granted only a few days before the commencement of the Broadcasting Services Act. However, s.28 of the Broadcasting Services (Transitional Provisions and Consequential Amendments) Act 1992 (Cth) (the "Transitional Act") repealed the Broadcasting Act except for a very limited number of provisions including Part IIID, which was held by the High Court of Australia in Australian Capital Television Pty Ltd v The Commonwealth (1992) 177 CLR 106 to be invalid. Section 5 of the Transitional Act provided, inter alia:-
"5(1)On the commencement of this Act:
...
(b)each former commercial television licence continues in force as a commercial television broadcasting licence as if such a licence had been allocated to the holder under Part 4 of the new Act; ..."
Accordingly, from the coming into operation of the Broadcasting Services Act, the television licences granted to the applicants continued in force as if such licences had been allocated to them under the Broadcasting Services Act.
In my opinion, as from the repeal of the relevant provisions of the Broadcasting Act, the licences and permits which had been granted under it ceased to have effect except insofar as they were preserved by the Transitional Act. The effect of s.5(1)(b) of the Transitional Act was that the former commercial television licences continued in force as if they had been allocated under the Broadcasting Services Act. Therefore they had force by virtue of the Broadcasting Services Act. In my opinion, from the date of the repeal of the relevant sections of the Broadcasting Act, 5
October 1992, the applicants no longer held licences granted under the Broadcasting Act.
The issue therefore arises as to whether the reference in s.199(7) of the Copyright Act to the Broadcasting Act is to be read as a reference to the Broadcasting Services Act. Section 10 of the Acts Interpretation Act 1901 (Cth) provides:-
"10. Where an Act contains a reference to a short title that is or was provided by law for the citation of another Act as originally enacted, or of another Act as amended, then, except for so far as the contrary intention appears:
(a)the reference shall be construed as a reference to that other Act as originally enacted and as amended from time to time; and
(b)where that other Act has been repealed and re-enacted, with or without modifications, the reference shall be construed as including a reference to the re-enacted Act as originally enacted and as amended from time to time and, where, in connexion with that reference, particular provisions of the repealed Act are referred to, being provisions to which provisions of the re-enacted Act correspond, the reference to those particular provisions shall be construed as including a reference to those corresponding provisions."
The issue must be determined by seeking the intention and operation of the Copyright Act. Many references in legislation are not ambulatory in their operation. See Re Universal Distributing Co Ltd (In Liq) (1933) 48 CLR 171 at 173; Commissioner for Government Transport (NSW) v Deacon (1957) 97 CLR 535 at 546. In s.199(7) of the Copyright Act, however, it is plain that Parliament was not looking to a licence or permit having particular incidents but simply to a licence or permit to broadcast. The reference to the ABC, to the SBS, to licensees and to all those who hold permits under the Broadcasting Act demonstrates this point. It follows that s.199(7) was intended to be ambulatory in operation and to refer not
merely to provisions in force when s.199 came into operation but to those provisions as they might be amended from time to time.
It is in this light that s.10 of the Acts Interpretation Act should be applied. In my opinion, for the purposes of s.199(7) of the Copyright Act, there was a repeal and re-enactment with modifications of the Broadcasting Act. I need not deal with all the differences between the Broadcasting Act and the Broadcasting Services Act. There were many. But most concerned procedural matters, the manner in which the industry was to be controlled and the manner in which licences could be obtained rather than the substantive effect of the licences. The principal licences so far as television was concerned were the commercial broadcasting licences. They remained the principal licences under the Broadcasting Services Act, though they were to be allocated, not granted. The fact that one of the applicant's licences was granted only days before the coming into operation of the Broadcasting Services Act is illustrative of the point. All of the applicants' licences continued to have full force and effect under the Broadcasting Services Act.
In my opinion, no contrary intention to the operation of s.10 of the Acts Interpretation Act appears. Indeed, the provisions of s.199(4) and (7) express so clearly in relation to copyright the intent and effect of s.212 of the Broadcasting Services Act that one would conclude that the provisions were intended by Parliament to apply together, the provisions of s.199(4) and (7) making specific provision with respect to copyright to the same effect as the general provision appearing in s.212(2) of the Broadcasting Services Act. Retransmission has been the subject of much
debate internationally for some years. See International Copyright & Neighbouring Rights by S.M. Stewart, 2nd ed., pp.323-5. Had Parliament intended to change the position on the implementation of cable television, which the subscription television licences to be allocated under the Broadcasting Services Act allowed, one would have anticipated Parliament to have turned its attention expressly to the point.
Another factor supporting the conclusion is that the reference to the Broadcasting Act was not changed in other sections of the Copyright Act, such as s.152, notwithstanding that Parliament must have intended those sections to continue to operate with reference to the regulatory regime now laid down in the Broadcasting Services Act.
TRADE MARKS
The last issue arises with respect to trade marks. Channel 7 has the trade mark "Home and Away" registered with respect to Class 41. Channel 9 has a logo being the number 9 together with 9 dots registered with respect to Class 38 and Class 41. There are also registrations under Class 38 and Class 41 of the trade marks "Wide World of Sports", "A Current Affair", "Sunday" and "Today". These marks are used by Channels 7 and 9 in association with their broadcasts. The issue is whether, when the re-transmission occurs, there will be an infringing use of the trade marks. Should infringement be otherwise established, it would be necessary to examine whether the process of re-transmission falls within the goods and services described in Classes 38 and 41. That matter was not debated in the hearing before me but was left for further argument, should the point arise.The Trade Marks Act 1955 (Cth) provides, inter alia:-
"6.(1)In this Act, unless the contrary intention appears:
...
`trade mark' means:
(a)except in relation to Part XI, a mark used or proposed to be used in relation to goods or services for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods or services and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person; and
(b)in relation to Part XI, a mark registrable, or registered, in Part C of the Register .."
"58.(1) Subject to this Act, the registration of a trade mark in Part A or Part B of the Register, if valid, gives to the registered proprietor of the trade mark the right to the exclusive use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act."
"62. (1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user of the trade mark using by way of permitted use, uses a mark which is substantially identical with, or deceptively similar to, the trade mark, in the course of trade, in relation to goods or services in respect of which the trade mark is registered."
It is not in dispute that the use of which s.62(1) speaks is use as a trade mark. In Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326, Burchett J said at 342:-
"What is use as a trademark? In Estate of PD Beckwith, Inc v Commissioner of Patents 252 US 538 (1920) at 543, the Supreme Court of the United States described `the function of a trade mark' as being `to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied'. An acceptance of this view is the foundation of the well-known judgment of Kitto J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407. Kitto J (at 425) considered whether a mark had been used `as a trade mark' by asking whether it was used `for the purpose of indicating, or so as to indicate, a connection in the course of trade between the petrol [the product there in question] and the appellant' and whether representations of it had been used `as being marks for distinguishing Shell petrol from other petrol in the course of trade'. More colourfully, Whitford J in Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402 pictured the use of a trade mark (in the sense under discussion) as the planting of a flag `to identify the fact that you are in a particular trader's territory'. See also Pioneer Kabushiki Kaisha v Register of Trade Marks (1977) 137 CLR 670 at 683." (emphasis added)
This passage was cited with approval by Gummow & Heerey JJ at 372 in Musidor BV v Tansing (1994) 52 FCR 363. At 373, their Honours said:-
"As these authorities indicate, and as is significant for the present appeal, the position under the present Australian legislation that the phrase in s 58 `the right to the exclusive use of the trade mark ...' carries with it the implication of use of the mark as a trade mark to denote origin in the person using it, derives from the construction placed by the House of Lords upon s 39 of the British Trade Marks Act 1905 (UK) in Irving's Yeast-Vite Ltd v Horsenail (1934) 51 RPC 110 at 116." (emphasis added)
The dispute which arises in the present case has arisen in other contexts. The sale of second hand goods carrying the trade mark of the maker does not ordinarily constitute a use by the seller of that mark. See the discussion by Burchett J in Fender Australia Pty Ltd v Bevk (1989) 25 FCR 161 at 166-170. In Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89, this question arose with respect to goods to which the original trade mark remained attached, which had been substantially altered by and were resold by a person who was not the owner of the mark. Sheppard, Wilcox & Gummow JJ expressed general approval with the remarks of Burchett J in Fender's case but elaborated on some points. At 136-7, Gummow J said:-
"... his Honour (Burchett J) held that the connection in the course of trade, the denotation of which is the essential function of a trade mark, is broken by the retail sale of the goods and their use, so that when they re-enter the market as second hand goods they have entered upon a new commercial existence and the relevant connection in the course of trade is a new one. In the present case, Lockhart J (at 367-368) disagreed with the proposition of this width. I am of the same view as Lockhart J. I agree also with the contention that whilst a trade mark remains on goods, it functions as an indicator of the person who attached or authorised the initial use of the mark, and in that respect there should be no necessary dichotomy between new and second hand goods: see note by B Sullivan, `Trade Mark Infringement Decisions in Australia and New Zealand: Second Hand Goods' (1991) 2 AIPJ 44 at 45.
... his Honour held that a person who sells used goods does not represent that there is any connection in trade between the goods, in their character of used goods, and the
registered proprietor of the mark. The point was put somewhat differently, and in a manner with which, subject to some qualification, I would agree, by saying (at 169):
`A person who sells used goods, though by reference to a name they bore as a mark when sold new, does not by doing so represent that there is any connection in trade between him and the manufacturer or original distributor of the goods, nor that any goods so marked are wearing his badge ...'
The qualification is that each case requires an understanding of what Kitto J called `the purpose and nature' of the impugned use, including the manner in which the particular mark has been displayed in relation to the goods or services or advertisement of which complaint is made: the Shell case at 426; see also Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd. Thus, it is dangerous to frame in absolute terms any general proposition as to user in relation to `second hand goods'." (emphasis added)
An earlier example was Champagne Heidsieck et Cie Monopole Societe Anonyme v. Buxton [1930] 1 Ch 330. In that case, champagne carrying a registered trade mark was imported into the United Kingdom by a person who was not the proprietor of the trade mark. Clauson J held that there was no infringement of the trade mark by importing and selling the champagne bottled and labelled as it was by the owner of the trade mark. Clauson J set out at 338-9:-
"It was, in effect, suggested that, whereas before 1875 a trade mark, if established as a trade mark, was a badge of the origin of the goods, the effect of s. 3 of the Act of 1875 was to make a registered mark a badge of control, carrying with it the right in the owner of a registered trade mark to full control over his goods, into whosesoever hands they might come, except in so far as he might expressly or by implication have released this right of control. I do not so read the section. Nor am I aware that, until the present case, any such construction of the section or of corresponding sections in subsequent Acts has been adopted by any tribunal; or indeed that, until very recent times, any such construction has been propounded any tribunal. It would be astonishing, if in an Act to establish a register of trade marks, such a remarkable extension of the rights of owners of trade marks were intended to be enacted by the use of such terms as appear in the section. The section appears to me to mean that the proprietor of a registered trade mark is to have the right exclusively to use such trade mark in the sense of preventing others from selling wares which are not his marked with the trade mark. I do not believe that the legislature intended to say, or can fairly be held to have said, that the registration of a trade mark had the wide consequences suggested by the plaintiffs. ... In the Act of 1905 the word `trade mark' is defined as a mark used upon goods for the purpose of indicating that they are the goods of the proprietor of the mark, and reading this definition into s.39 it appears to me quite clear that the exclusive right to use the mark conferred on the registered proprietor by that section is the right to use the mark as a trade mark - i.e., as
indicating that the goods upon which it is placed are his goods and to exclude others from selling under the mark wares which are not his."
.
See also R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701.Similarly, as the trade marks of Channels 7 and 9 will apply in relation to programs which will be broadcast by those channels and retransmitted to subscribers who understand that what they see are the programs of the commercial broadcasting stations, I am satisfied that the trade marks will not be used by Management as marks connecting them with the programs.
It was submitted by Mr Bathurst that the subscribers will draw the inference from the use of the marks that Management has authority to use them. I doubt that that inference will be drawn from the mere use of the marks. However, the answer to Mr Bathurst's submission is that a trade mark is regarded primarily as a badge of origin, not of control. The inference the subscribers will be likely to draw from the use of the trade marks will be that the programs are programs of the proprietor of the marks, the relevant commercial broadcasting station. In that conclusion, they will be correct.
ORDERS
For the reasons I have given, the claims made in paragraphs 1 to 36, 37 to 44 and 115 to 118 of the amended statement of claim must be dismissed. I shall reserve the question of costs.I certify that this and the 26 preceding pages
are a true copy of the reasons for judgment herein of
the Honourable Justice Davies.Associate:
Date: 20 October 1995
Counsel for the applicants: T.F. Bathurst QC
Mr M.R. SpeakmanSolicitors for the applicant: Blake Dawson Waldron
Counsel for the respondents: D.K. Catterns QC
Mr R. CobdenSolicitors for the respondents: Allen Allen & Hemsley
Date of hearing: 11 & 13 October 1995
Date of judgment: 20 October 1995
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