Baillieu, Edward v Australian Electoral Commission

[1996] FCA 8

CATCHWORDS

ELECTIONS - Voting - Postal voting - Applications for postal vote - Application to be in form approved by Australian Electoral Commisison by publication in Gazette - Whether statutory licence to reproduce form.

COPYRIGHT - Literary work - Application for postal voting form approved by Australian Electoral Commission - Brochure published by Commission containing application form together with instructions to voters - Political party publishing brochure containing application form and part of Commission's instructions to voters - Whether instructions constitute original work - Infringement.

ESTOPPEL - Application for postal voting form approved by Australian Electoral Commission - Brochure published by Commission containing application form together with instructions to voters - Copyright in Commonwealth - Representations by Commission that political party could use form and part of information in its own brochure - Printing of brochures - Subsequent change of policy - Whether Commonwealth estopped from asserting infringement.

Commonwealth Electoral Act 1918 (Cth), ss.183, 184, 187, 193, 197, Schedule 2
Copyright Act 1968 (Cth), ss.10(3)(g) ("reprographic reproduction"), 32, 182A
Judiciary Act 1903 (Cth), s.64.

Kalamazoo (Aust) Pty Ltd v. Compact Business Systems Pty Ltd (1985) 5 IPR 213
Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964] 1 WLR 20
Warwick Film Productions Ltd v. Eisinger [1969] 1 Ch 508
Victoria Park Racing and Recreation Grounds Co Ltd v. Taylor (1937) 58 CLR 479
The Commonwealth v. Verwayen (1990) 170 CLR 394
Legione v. Hateley (1983) 152 CLR 406
Minister for Immigration v. Kurtovic (1990) 92 ALR 93
The Commonwealth v. Evans Deakin Industries Ltd (1986) 161 CLR 254
Asiatic Steam Navigation Co Ltd v. The Commonwealth (1956) 96 CLR 397
Deputy Commissioner of Taxation v. Moorebank Pty Ltd (1988) 165 CLR 55
Maguire v. Simpson (1977) 139 CLR 362

EDWARD BAILLIEU and PETER POGGIOLI for and on behalf of the Liberal Party of Australia (Victorian Division) v AUSTRALIAN ELECTORAL COMMISSION and COMMONWEALTH OF AUSTRALIA VG 970 of 1995

COURT:Sundberg J

PLACE:Melbourne

DATE:22 January 1996

IN THE FEDERAL COURT OF AUSTRALIA      )

VICTORIA DISTRICT REGISTRY  )  No VG 970 of 1995

GENERAL DIVISION  )

BETWEEN:EDWARD BAILLIEU and PETER POGGIOLI for and on behalf of the Liberal Party of Australia (Victorian Division)

Applicants and Cross Respondent

AND:AUSTRALIAN ELECTORAL COMMISSION and COMMONWEALTH OF AUSTRALIA

Respondents and Cross Applicant

COURT:Sundberg J

DATE:22 January 1996

PLACE:Melbourne

MINUTES OF ORDER

The Court declares that the Respondents are and each of them is estopped from asserting that the Applicants have infringed the copyright subsisting in the second Respondent in the form of application for a postal vote approved by the First Respondent pursuant to s.184 of the Commonwealth Electoral Act 1918 by publication in the Commonwealth of Australia Gazette No. GN 23 dated 14 June 1995 and in the brochure entitled "Postal Vote Application" being exhibit "DRM2" to the affidavit of David Roy Muffet sworn 21 December 1995.

The Court orders that:

1. The Cross-Application be dismissed.

1. The Respondents pay the Applicants' costs of the proceeding.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA      )

VICTORIA DISTRICT REGISTRY  )          No VG 970 of 1995

GENERAL DIVISION  )

BETWEEN:EDWARD BAILLIEU and PETER POGGIOLI for and on behalf of the Liberal Party of Australia (Victorian Division)

Applicants and Cross Respondent

AND:AUSTRALIAN ELECTORAL COMMISSION and COMMONWEALTH OF AUSTRALIA

Respondents and Cross Applicant

COURT:Sundberg J

DATE:22 January 1996

PLACE:Melbourne

REASONS FOR JUDGMENT

SUNDBERG J:

The proceedings
On 21 December 1995 the Commonwealth of Australia filed an Application seeking a declaration that Dr. Poggioli, the State Director of the Liberal Party of Australia (Victorian Division), had infringed its copyright in a form known as "Application For a Postal Vote", and injunctions restraining him for reproducing the form or a substantial part thereof without the Commonwealth's permission and from reproducing the form with any amendment.

On the same day Dr. Poggioli and Mr. Edward Baillieu on behalf of the Victorian Division of the Party filed an Application to which the Commonwealth and the Australian Electoral Commission ("the Commission") were respondents, seeking a declaration that copyright does not exist in the Commonwealth or the Commission in respect of "the form of application for a postal vote approved by the Commission pursuant to sections 184(1) and 4(1) of the Commonwealth Electoral Act 1918 (Cth) published in the Commonwealth of Australia Gazette No. GN23 dated 14 June 1995" or in "the brochure entitled 'Postal Vote Application'" published by the Commission in June 1995. Alternatively they seek a declaration that they have not infringed any copyright that might exist in the form or the brochure. In the further alternative they seek a declaration that the Commonwealth and the Commission are estopped from asserting any infringement.

On 22 December 1995 Ryan J. ordered that the two proceedings be consolidated and the Commonwealth's proceeding be treated as a cross-application in the other proceeding.

Postal voting
Part XV of the Commonwealth Electoral Act ("the Act") - "Postal Voting" - consists of ss.182 to 200. Section 183 provides that an elector may apply for a postal vote on any of the grounds set out in Schedule 2. The grounds include absence from the elector's State of residence, illness and imprisonment. Section 184(1) requires an application to be in writing in the approved form, to contain a declaration that the applicant is an elector entitled to apply for a postal vote, and to be signed by the applicant in the presence of an authorised witness. An "approved" form is one approved by the Commission by notice published in the Gazette: s.4(1). An "authorised witness" is an elector whose name appears on an Electoral Roll: s.193(1). An application is to be made to a Divisional Returning Officer: s.184(2). It
must reach the officer to whom it is directed by 6 p.m. on the day before polling day: sub-s.(5).

Section 187 deals with the duties of a witness to an application. A person must not witness the signature of an applicant unless the person is satisfied of the identity of the applicant, has seen the elector sign the application, and either knows the statements in the application are true or is satisfied they are true: sub-s.(1).

A Divisional Returning Officer who receives an application that is properly signed and witnessed must post to the applicant a postal ballot paper and a postal vote certificate printed on an envelope addressed to the Divisional Returning Officer for the applicant's Division: s.188.

Section 197 requires a person to whom an elector entrusts an application or an envelope apparently containing a postal ballot paper for posting or delivery to an officer to post or deliver it as soon as practicable.

The approved form
By notice published in the Gazette of 14 June 1995 the Commission approved a form headed "Application  for a Postal  Vote".  Immediately beneath the heading are the words "Important - applicant and witness should read the information adjacent".  There is in fact no adjacent information.  The body of the form is in three segments.  The first makes provision for information the elector is required to provide (name, enrolment address, phone number and signature), and contains a declaration that the elector is entitled to apply for a postal vote.  The second segment is to be completed by the witness (signature, name and
address).  The third is for official use, and provides for the insertion of information identifying the Division issuing the ballot paper, the certificate number, the date of issue, the elector's Division and the date the certificate was received in the Division for which the vote was claimed.  At the foot of the form appear the words "Copyright Commonwealth of Australia 1995".  The 1995 form superseded an earlier form approved in 1989 which differed from the 1995 form in that the elector's segment was arranged in a different fashion, and it did not contain provision for insertion of a postal address where that address differed from the enrolment address.  I will call the form gazetted in 1995 "the gazetted form" and that gazetted in 1989 "the 1989 gazetted form".

The Commission's brochures
In 1989 the Commission prepared a brochure called "Application for a Postal Vote" for the use of electors who were qualified to vote by post. It consists of a single sheet of paper. On the right hand side of what I will call the front of the sheet appear the words "Application for a Postal Vote" in large capital letters. Beneath them is a representation of a letter box and a letter addressed to the Commission. The reverse side is divided into three parts. The right hand part is a reproduction of the 1989 gazetted form. There is an instruction that this is to be completed and detached. The other two parts contain the adjacent information to which the form refers. This consists of "Information for an Applicant", which, amongst other things, paraphrases s.183 and Schedule 2 (qualifications for an application) and parts of s.184, and "Information for a Witness", which, amongst other things, paraphrases ss.193 and 187. Much of the information under these headings is presented in point form, with each point preceded by a heavy black dot. The document has been processed so it can easily be folded twice, with the result that the words "Application for a Postal Vote" and the graphic are the first things a reader sees, and the brochure
unfolds so as to disclose the form and the adjacent information.  I will call the 1989 brochure "the Commissions 1989 brochure".

The Commission produced a replacement brochure in 1995.  The structure is the same as that of the 1989 brochure, though the graphic on the front is more complex and eye-catching.  The form on the reverse side is the gazetted form.  The information for applicant and witness is the same as in the earlier brochure.  I will call the 1995 brochure "the Commission's brochure".

1993 election
For some years the Liberal Party has prepared its own brochures containing an application form and adjacent information for the guidance of electors and witnesses.  It has made them available to electors who are invited to complete and sign the forms and return them to the Party for transmission to the Commission.  The brochure used in the 1993 general election consists of a single sheet which folds up in the same fashion as the Commission's brochure.  The front of the page is in three segments.  The left hand segment contains the words in large capital letters "Your vote is important in the electorate of ...".  Underneath that are representations of four electors gathered around a post box, each elector holding an envelope which is about to be inserted in the box.  The electors are all smiling and apparently excited at the prospect of posting their letters.  Obviously none of them is in prison, they do not look ill, and so they must be holidaying out of their electorates and unable for that reason to vote in the customary manner.  The post box is also excited at the prospect of receiving the letters, because it is smiling, its eyes are twinkling, its eyebrows arched, and it is swaying on its pedestal.  When turned sidewards the middle segment is in the form of the front part of an envelope addressed to the Liberal Party of Australia.  In the area where one would
normally affix a stamp appear the words "No postage stamp required if posted in Australia".  The right hand segment contains the words in large capitals "Will you need to vote by post in the coming federal election?", a larger version of the smiling post box, and the Liberal Party logo.  The graphics are in the Liberal Party's blue and white colours.

The middle segment on the reverse side is an application form which is substantially the same as the 1989 gazetted form.  The right hand segment is another application form.  Except in two respects, the forms are the same.  The first difference is that the one in the middle segment has "(1st Person)" beside "Application for a Postal Vote" whereas that in the right hand segment has "(2nd Person)".  The second difference is that the form in the middle segment has instructions to "moisten and seal" and "complete and detach", the intention being that the applicant should tear off these segments, lick the left hand one, fold it, and thus produce an envelope addressed to the Liberal Party.

The remaining segment contains the adjacent information. It is in three parts. The first, headed "Postal Voting - What to do", tells the reader to fill in the form and return it no later than one week prior to election day. If only one postal vote is required, only one application form is to be completed. If two are required, each person is to fill in a form. The second part is "Information for an Applicant", and reproduces the paraphrase of Schedule 2 of the Act contained in the Commission's 1989 brochure. The third part is "Information for a Witness", and reproduces the paraphrase of ss.182 and 193 contained in the Commission's 1989 brochure. I will call this brochure "the Party's 1993 brochure".

It appears that in November 1992 the New South Wales Division of the Party asked the Commission for its view on the Party's 1993 brochure. The Commission saw "no problem with the form and content of the postal vote application you propose". In February 1993 the Secretary of the Richmond/Clarence Greens wrote to the Commission expressing concern about the Party's 1993 brochure. The Commission replied to the Secretary on 22 February 1993 advising that its long-standing view was that substantial compliance with the official form was acceptable. It went on to say that when the Commission first became aware that the Liberal Party was intending to publish a version of the "official postal vote application form", it sought legal advice. The advice was that so long as the verbiage of the Liberal Party "form" was substantially the same as that of the 1989 gazetted form, it would be a valid postal vote application form for the purposes of s.184 of the Act. The writer then said that the information printed on the Commission's "postal vote application form" was not "approved" by the Commission and did not "require substantial compliance as for the form itself". The Party's 1993 brochure was distributed during the 1993 election campaign, and many thousands of applications made on the form contained in the brochures were processed by the Commission without complaint to the Party.

Submission to Joint Standing Committee
In August 1994 the Commission made a submission to the Joint Standing Committee on Electoral Matters on the conduct of the 1993 election. In the section dealing with postal vote applications reference was made to the major political parties' use of brochures containing application forms. The Commission recommended that the Act be amended to prevent the general reproduction and distribution of application forms. As a fall back position it recommended that it be made clear by amendment that forms must be returned to Divisional Returning Officers and not to party campaign offices or candidates. The Committee reported in November 1994 and made two recommendations that are of present relevance. The first was that the Act be amended to prohibit a postal vote application form,
or a reproduction thereof, being incorporated with material issued by any body other than the Commission. The second was the Act be amended so that an application form and associated material sent to electors should nominate only the appropriate office of the Commission as the return address for the application form. The Government supported other recommendations made by the Committee, but deferred these two recommendations for further consideration.

Kooyong by-election
In the November 1994 Kooyong by-election the Party used basically the same brochure as that used in 1993, and applications made on the form contained in it were processed by the Commission without complaint to the Party.

Proposed variations to Liberal Party form
Shortly after the Kooyong by-election the Party contemplated making changes to the form in its 1993 brochure by adding a space containing the salutations "Mr", "Mrs", "Ms" and "Miss", and putting a dotted cutting line on the outside of the brochure.  On 1 December 1994 Dr. Poggioli wrote to Dr. Muffet, Australian Electoral Officer for Victoria, seeking "approval" of these changes.  Dr. Muffet referred the letter to Central Office in Canberra.  By letter of 16 February 1995 Dr. Bell, Deputy Electoral Commissioner, "denied" permission to make the amendments.  The letter began by referring to Dr. Poggioli's letter requesting approval of the changes.  The writer referred to the recommendations of the Committee which had apparently already been drawn to the Party's attention.  He then advised that the Commission would not be approving political parties' versions of the postal vote application form for the next election.  The letter concluded as follows:

... the Commonwealth of Australia claims copyright over the postal vote application form under the Copyright Act 1968. In the light of this, and in accordance with the recommendation made by the JSC, permission will only be granted to reproduce the form if it is identical to the approved form and is not attached to any other material.

Permission to reproduce the postal vote application form with amendments proposed by you is therefore denied.

In view of this response the Party did not proceed with the proposed alterations.

3 May meeting
On 3 May 1995 Dr. Poggioli and his Deputy, Mr. Conheady, met Dr. Muffet and a member of his staff, Mr. Glanville, to discuss matters that might arise during the next federal election, which at that time the Party thought might be announced in July. Dr. Poggioli gave evidence that postal vote applications were discussed, that Dr. Muffet referred to the Joint Committee's recommendations, and said it was possible the Act would be amended to prohibit the practice of political parties distributing application forms. According to Dr. Poggioli, Dr. Muffet said that in the absence of any such amendment, were the Party to issue brochures in the same form as those used in the 1993 election and the Kooyong by-election, his office would again accept and process applications lodged on the forms contained in the brochures. Dr. Muffet suggested that the brochures be printed on mat and not glossy paper to overcome minor processing difficulties. Dr. Poggioli agreed.

Dr. Muffet thought it was Mr. Glanville who had referred to the Joint Committee's recommendation, and did not recall having said that his office would again accept and process applications lodged on forms contained in the brochures.  He did not otherwise
quarrel with Dr. Poggioli's account of the discussion. Mr. Conheady also thought it was Mr. Glanville who had referred to the Joint Committee's recommendation, but otherwise supported Dr. Poggioli's account. Mr. Glanville recalled saying that the Act was likely to be amended to proscribe the use of forms other than the Commission's. He also recalled Dr. Muffet saying he did not like the type of paper used by the Liberal Party as it caused processing problems. He did not mention the part of the discussion that Dr. Muffet could not recall, but by implication he could not recall it either.

Dr. Poggioli was cross-examined, but was not challenged about what transpired at the 3 May meeting.  Indeed the cross-examination assumed that Dr. Muffet had said what Dr. Poggioli attributed to him.  In these circumstances I have no hesitation in accepting Dr. Poggioli's account of this part of the conversation.  Dr. Muffet accepts that he asked for the paper used in the brochure to be changed, and that Dr. Poggioli agreed to make the change, and that lends force to Dr. Poggioli's recollection of the conversation.  The paper type was to be changed because the old paper was difficult for the Commission to process.  Why discuss the change of paper to facilitate easier processing if there had been no discussion about future processing?

In June 1995 Dr. Poggioli, anticipating that the election would be held in August, had 900,000 brochures printed.  He said he did this in reliance on past practice and on what Dr. Muffet had said on 3 May.  The brochures were in the same form as those used in the 1993 election and the Kooyong by-election.  I will call the brochure printed in June "the Party's 1995 brochure".

June conversation
Dr. Poggioli gave evidence that later in June, shortly after the brochures were printed, he had a telephone conversation with Dr. Muffet in which he told Dr. Muffet that new brochures had been printed in the same form as those used previously. He claimed that Dr. Muffet reminded him of the possibility of a change in the Act following the Joint Committee's recommendations. Dr. Muffet did not recall this conversation. He said his first knowledge of the printing of the brochures was when Dr. Poggioli told him of this on 6 November 1995. Dr. Poggioli was cross-examined about the June telephone call. He conceded he had not made a contemporaneous note of the conversation, but was unshaken in his recollection that he told Dr. Muffet about the printing of the brochures in June and again in November. I accept his evidence on this point.

Dr. Poggioli said that following that conversation he was left in no doubt that in the absence of legislative change the Commission would process applications lodged on forms contained in the Party's 1995 brochure in the same manner as it had in the past.

October and November events
On 13 October Dr. Muffet wrote to Dr. Poggioli asking what he was doing in relation to postal vote applications for the forthcoming elections.  They met on 24 October and amongst other things discussed ways in which applications for postal votes made late in the campaign could be processed more quickly.  Dr. Poggioli suggested they exchange letters regarding the understanding reached at their 3 May meeting concerning the Commission's acceptance of the Party's 1995 brochure.  Dr. Muffet agreed.  Straight after the meeting Dr. Poggioli wrote to Dr. Muffet.  The letter asserted that one of the Party's 1995 brochures was enclosed.  It went on to say that the brochure was exactly the same as that used in 1993 with
the exception of the paper stock which had been changed from glossy to mat paper at Dr. Muffet's suggestion.  Voters were invited to return the form to the Liberal Party whence it would be immediately forwarded to the Commission by 4.00 p.m. each day.  The writer asked for Dr. Muffet's confirmation that those arrangements were acceptable to him.  The brochure was not in fact enclosed with the letter.  It was delivered later, and Dr. Muffet did not read the letter until he received the brochure some days later.

On Sunday 5 November Dr. Poggioli telephoned Dr. Muffet at his home asking for the confirmation sought in his 24 October letter.  According to Dr. Poggioli, Dr. Muffet said he could expect to get a confirmatory letter within the next day or two.  According to Dr. Muffet, what he said was that he would call Dr. Poggioli back the next day.  Dr. Poggioli's account of the conversation is supported by a file note made immediately after the conversation, and I accept his account.  Dr. Muffet telephoned Dr. Poggioli on 6 November.  He said approval would be needed from Central Office to distribute the "amended" forms, and he would contact that office to obtain further directions.  Aided by a file note he made at the time, Dr. Poggioli gave a more extensive account of this conversation.  According to him, Dr. Muffet said he had received correspondence from Central office regarding postal voting applications which he was required to copy to political parties in Victoria.  Dr. Muffet agreed that the "application forms" the Party had used in the 1993 election and Kooyong by-election were identical to the Commission's approved forms.  Dr. Poggioli said that as the Party had printed 900,000 brochures which were the same as those used in the earlier elections, the only question was whether the forms contained in them would be accepted and processed by the Commission.  Dr. Muffet said he had no problem with the Party's application forms, but would seek urgent advice from Canberra regarding acceptance
of the forms.  I accept Dr. Poggioli's account of the conversation, supported as it is by his contemporaneous note.

On 9 November Dr. Muffet wrote to Dr. Poggioli saying he had asked Central Office urgently to consider the acceptability of the Party's postal vote application.  He enclosed a copy of a letter and attachments sent by Central Office to the Party's Directorate in Canberra.  The letter is not identified by a date, and the 9 November letter was in evidence without the attachments.

Exchanges between head offices
While Dr. Poggioli and Dr. Muffet were dealing with each other in Melbourne, their respective head offices in Canberra were also corresponding.  On 4 October 1995 Mr. Robb, Federal Director of the Party, wrote to the Commission seeking confirmation that the postal voting application form accompanying the letter would be accepted by the Commission.  The letter and enclosure were not in evidence.  Mr. Dacey, Assistant Commissioner Development and Research, replied on 13 October, advising that the Commonwealth claimed copyright in the "postal vote application form", and that permission to reproduce it would only be granted if the reproduction was identical to the "approved form (including the copyright notice)" and was not attached to any other material.  He said that "attached to any other material" meant that the form could not be printed with or on the back of any other material.  The form could be enclosed in the same envelope as other material, provided it was not attached to that material.

On 6 November Mr. Dacey again wrote to Mr. Robb.  The letter enclosed a copy of the Joint Committee's recommendations on postal voting and a copy of the Government's
response deferring consideration of the recommendations.  The letter more or less repeated the contents of Mr. Dacey's 13 October letter.  There was some elaboration of what "attached to" meant.  It meant "printed as part of campaign or any other material, including on the reverse of such material".  It also meant "stapled, pinned, attached by perforation or in any other way".  The 6 November letter is probably the one referred to in Dr. Muffet's letter of 9 November.

The letter of demand
On 6 December the Party received a letter from the Commission's solicitor claiming that the Party's 1995 brochures were in breach of copyright and demanding delivery up of all copies.  The Party denied any breach and did not comply with the demand, and the parties issued their respective proceedings.

The Commonwealth's copyright
The Liberal Party did not dispute that the Commonwealth was the owner of copyright in the gazetted form and the Commission's brochure. For the purpose of determining whether it showed the requisite degree of originality in its compilation for the purposes of s.32 of the Copyright Act, the brochure must be considered as a whole. It is not permissible to dissect it into its component parts and determine whether a particular part would be protected if it stood by itself. See Kalamazoo (Aust.) Pty. Ltd. v. Compact Business Systems Pty. Ltd. (1985) 5 I.P.R. 213.

The Party contended that its 1995 brochure did not infringe the Commonwealth's copyright in the gazetted form or the Commission's brochure. As to the gazetted form, the Party had a statutory licence, derived from the Act, to reproduce it. As to the parts of the
Commission's brochure it had reproduced (i.e. sections of the information for electors and witnesses), there was no breach of copyright because those parts lacked the necessary degree of originality.

Statutory Licence
It was contended for the Party that Part XV of the Act, especially s.184, by necessary implication permitted reproduction of the gazetted form so long as it was to be used solely for the statutory purpose for which it had been created, namely to apply for a postal vote. It was said that an elector would not by copying the form for use in making an application commit a breach of the Commonwealth's copyright. Nor would a relative of a sick elector be in breach by copying the form for use by the elector. It was also said that there would be nothing to prevent a person making copies of the form for the use of those who lived in the same street and who qualified to apply. On the assumption that the Act by implication permitted this copying, it was said that what the Liberal Party had done was no different. It produced copies of the forms for the sole purpose of prospective voters applying for a postal vote. That was why the form had been invented.

The existence of s.182A of the Copyright Act, considered under the next heading, might bear on whether s.184 itself grants a licence to make a copy of the gazetted form. But assuming in favour of the Party that in the examples given the elector, the relative and the neighbour would not infringe copyright, it does not follow that the implied licence extends to what the Party has done. Any implied licence would not extend beyond the copying of the gazetted form itself. At the conclusion of the copying process the elector, relative or neighbour has a document that is either a photocopy or a manuscript copy of the original. But at the end of the Party's printing of the 1995 brochure, one has something quite
different.  I do not in this connexion attach importance to the minor differences between the gazetted form and the forms contained in the Party's 1995 brochure.  The important difference lies in the fact that on the back of one of the forms is the front part of an envelope addressed to the Liberal Party.  On the back of the other are the smiling electors and post box.  The back of the gazetted form would of course be blank.

One may well be able to attribute to the legislature an intention that an elector or someone acting on behalf of an elector is to be free to copy the gazetted form. But it would not be reasonable to attribute to it an intention that a political party should be at liberty to add to the form the information that is on the back of one of the Party's forms, namely the front part of an envelope designed to ensure that the postal vote is returned not to the Commission but to the Party. Sub-sections (2) and (3) of s.184 support this view. Section 197 does not assist the Party. That section contemplates that an elector may entrust the application to someone for transmission to the Commission. But it does not bear on whether s.184 carries with it the implication that a political party, a candidate, a trade union or any other organisation is to be at liberty to add to the approved form material designed to ensure that it is returned not to the Commission but to the party, candidate, union or other organization, or indeed any other material.

Section 182A
The Party also relied on s.182A of the Copyright Act as support for the view that its reproduction of the gazetted form involved no breach of copyright.  Sub-section (1) provides:

The copyright, including any prerogative right or privilege of the Crown in the nature of copyright, in a prescribed work is not infringed by the making, by reprographic reproduction, of one copy of the whole or of a part of that work by or on behalf of a person and for a particular purpose.

A "reprographic reproduction" of a work is the making of a "facsimile copy" of the work: s.10(3)(g). An instrument made under an Act is a "prescribed work": sub-s.(3)(a). So the gazetted form is a prescribed work. It was said that the Party makes only one copy of the form on behalf of "a person", namely a prospective voter, and that the copy is made "for a particular purpose", namely for use by that person to apply for a postal vote. Even if the section contemplates the making of multiple copies of documents each intended for the use of an identified person, I do not think it applies to multiple copying on behalf of persons the identity of whom is not known to the copier at the time of copying. I would be surprised if, at the time it printed 900,000 copies of its 1995 brochure, the Party was aware of the identity of each person who might in the future receive a copy. But I need not decide the point, because the Party's 1995 brochure is not a reprographic reproduction of the gazetted form. The word "facsimile" is not defined in the Act, but according to the Macquarie Dictionary it is an exact copy of something. Given that the section is concerned with statutes, regulations, rules and judgments in relation to the reproduction of which precision is of the essence, it is not surprising that the freedom to reproduce prescribed works is restricted to the making of an exact copy. Neither of the forms in the Party's 1995 brochure is an exact copy of the gazetted form. The gazetted form is printed in black and white. The Party's is in blue, black and white. The typeface differs between the documents. One of the Party's forms has "(1st Person)" and the other "(2nd Person)" added after "Application for a Postal Vote". The Party's form has provision for the date rendered as " / /19 ". The gazetted form omits the "19 ". The Party's form does not contain the copyright notice that is at the foot of the gazetted form. There are other differences on the face of the documents.
Furthermore, the gazetted form has nothing on its reverse side, whereas one of the Party's forms has the Liberal Party address on the back, and the other has the smiling voters and post box. What s.182A contemplates is that as a result of the reprographic reproduction the copier will have an exact replica of the original and no more. Accordingly, the section does not apply to the application forms contained in the Party's 1995 brochure.

Information pages - originality
The information in the Commission's brochure is more extensive than that in the Party's 1995 brochure.  In addition to the information I have already described, under the heading "Information for an Applicant", the Commission's brochure contains information about the mailing of application forms, making application in person, overseas applications, obtaining further information, and public inspection of applications after polling.  The Party's 1995 brochure does not contain any of this information.  Otherwise the material under this heading is essentially the same in the two brochures.  Under the heading "Information for a Witness", the Commission's brochure also contains information about overseas applications.  This is not included in the Party's brochure because it is not intended for use out of Australia.  Otherwise the material under this heading is the same in the two brochures.

The Party's contention that publication of the information parts of the Commission's brochure reproduced in its 1995 brochure does not involve a breach of copyright was developed as follows.  The Commonwealth's copyright in the brochure gives it the exclusive right to reproduce it: s.31(1)(a)(i).  That copyright is infringed by a person who does an act comprised in the copyright: s.36(1).  By s.14(1)(a) a reference to the doing of an act in relation to a work includes the doing of that act in relation to a "substantial part" of the work, and a reference to a reproduction of a work includes a reference to a reproduction of
a "substantial part" of the work.  The words "substantial part" refer to the quality of what is taken rather than the quantity.  It was said that the originality or otherwise of the part of the work reproduced was relevant to the determination of the quality of what had been copied.  If the part taken represents the application of a high degree of skill and labour on the part of the author, it may be regarded as substantial although slight in quantitative terms.  But if it involves little originality, it may not be regarded as substantial even though quantitatively it may form quite a large part of the work.  It was then submitted that the information parts of the Commission's brochure that had been reproduced by the Party were not original with the result that they were not a substantial part of the Commission's brochure.

In Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273, at pp.276-277 Lord Reid said:

... the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken.  One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data.  So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright.  But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs' work as a whole is "original" and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.

At p.293 Lord Pearce said:

Whether a part is substantial must be decided by its quality rather than its quantity.  The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected.  For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement.  It is this, I think, which is meant by one or two judicial observations that "there is no copyright" in some unoriginal part of a whole that is copyright.

Warwick Film Productions Ltd. v. Eisinger [1969] 1 Ch.508 is an interesting illustration. The plaintiffs claimed copyright in a book called "Oscar Wilde: Three Times Tried" which contained an account of the Wilde's trials, much of which was taken directly from transcripts of shorthand notes of the proceedings and newspaper reports. The defendants made or exhibited a film entitled "Oscar Wilde" which reproduced from the book parts of the speeches of counsel, the words of the judge and the questions put to Wilde and his answers. Applying Lord Pearce's observation in Ladbroke set out above, Plowman J. held that while the plaintiffs had copyright in the book, the film did not reproduce a substantial part of it.  Although considerable use had been made of material in the book, this had no originality and attracted copyright only by collocation with edited passages, and when robbed of that collocation could not constitute a substantial part of the book.   Accordingly what the defendants had done did not involve an infringement of copyright.

It was contended by the Liberal Party that the relevant parts of the Commission's brochure do no more than paraphrase Schedule 2 and ss.193(1) and 187 of the Act. A comparison was made between each part of the Act and each part of the relevant information. So far as concerns the information for applicants, this showed that apart from rendering "throughout the hours of polling on polling day" as "between 8 am and 6 pm on polling day" (derived
from s.222(b)), all the draftsman had done was to replace "the elector" by "you", and render the effect of each ground mentioned in Schedule 2 in a somewhat abbreviated way.

As Thomas J. pointed out in the Kalamazoo Case, there are conflicting judicial statements as to the degree of originality required by s.32. Is it sufficient that the author employs "more than negligible" skill and labour in the selection of words or other content (e.g. Ladbroke, at p.287)?  Or must the author display a "substantial" degree of skill (Ladbroke, at p.289)?  In Victoria Park Racing and Recreation Grounds Co. Ltd. v. Taylor (1937) 58 C.L.R. 479, at p.511 Dixon J. said:

... some original result must be produced.  This does not mean that new or inventive ideas must be contributed.  The work need show no literary or other skill or judgment.  But it must originate with the author and be more than a copy of other material.

Professor Ricketson expresses the view that where the work is a compilation or is of a purely factual or informational nature, a simple, unordered presentation will not be protected unless some greater coherence or order has been imposed upon it by the author: The Law of Intellectual Property, par.5.18.  In the Kalamazoo Case Thomas J. said:

If ... I looked piecemeal at various parts of the documents, it would be possible to say that such parts were either reproductions, paraphrases or minor variations of documents already in general use.  ... whilst, I refuse to find that the authors showed great skill, I do find that their preparations required a degree of concentration, care, analysis, comparison, and a certain facility in using and adapting the altered forms to a composite "one-write" system.

In the present case the relevant information is more than a mere copy of the statutory provisions. It assembles in one convenient place the general effect of provisions which are in different parts of the Act - s.183, Sch.2 and s.220(b). It renders Schedule 2 in simpler and shorter language. To use the current jargon, the draftsman employs more "user friendly" language than that contained in the Schedule. The reader is assisted to digest the grounds and test them against his own circumstances by the heavy black dots placed beside each ground. In Professor Ricketson's language, the author has not simply copied or paraphrased the statutory material, but has imposed some greater coherence or order upon it. Rendering the effect of the relevant provisions in one place, in composite form, and with the black dots, bestows both coherence and order on the statutory material.

To use Thomas J.'s language in Kalamazoo, the draftsman has neither merely reproduced nor merely paraphrased the statutory provisions.  Some degree of concentration, care, analysis and comparison went into the task.  The author had to locate the relevant provisions and mould them into a readily digestible form.  Care had to be taken to see that in rendering the grounds in simpler and shorter language, the meaning of the Schedule was not altered.

To the same end the author had to compare his language with that of the Schedule.  A degree of analysis, though not much, was involved in the exercise - an understanding of the statutory provisions, and a rendering of them in a shorter form without altering their meaning.

The information for a witness is closer to the line, but in my view just struggles over it.  The author's task was simpler here.  Nevertheless, it was necessary to locate the relevant
provisions (ss.193(1) and 187) and render their effect without distorting their meaning.  The black dots are again employed to facilitate an understanding of the witnesses' obligations.

All in all, I think the relevant information parts of the Commission's brochure originated with its author and were more than a copy of the statutory provisions.  Accordingly they had sufficient originality to be protected by copyright.  But this does not dispose of the issue because, as Lord Reid said in Ladbroke, while it may sometimes be a convenient short cut to ask whether the part taken could itself be the subject of copyright, the more correct approach is first to determine whether the Commission's brochure as a whole is original, and then to inquire whether the part taken is substantial. It is conceded by the Party that the brochure as a whole is original. On the view I have taken, neither s.184 of the Act nor s.182A of the Copyright Act entitled the Party to reproduce the gazetted form.  Accordingly, in determining whether what was taken from the Commission's brochure was substantial in the relevant sense, the Party not only reproduced parts of the information material (which I have held were original), but the application form itself.  That was certainly original.  In my view what was taken by the Party was a substantial part of the Commission's brochure.

Estoppel
The Party says that the Commonwealth is estopped from asserting that the Party's 1995 brochure infringes its copyright.  In The Commonwealth v. Verwayen (1990) 170 C.L.R. 394, at p.413 Mason C.J. said:

... there is but one doctrine of estoppel, which provides that a court of common law or equity may do what is required, but no more, to prevent a person who has relied upon an assumption as to a present, past or future state of affairs (including a legal state of affairs), which assumption the party estopped has induced him to hold, from suffering detriment in reliance upon the assumption as a result of the denial of its correctness.

At pp.444-445 Deane J. said:

2.The central principle of the doctrine [of estoppel by conduct] is that the law will not permit an unconscionable - or, more accurately, unconscientious - departure by one party from the subject matter of an assumption which has been adopted by the other party as the basis of some relationship, course of conduct, act or omission which would operate to that other party's detriment if the assumption be not adhered to for the purposes of the litigation.

...

4.The question whether such a departure would be unconscionable relates to the conduct of the allegedly estopped party in all the circumstances.  That party must have played such a part in the adoption of, or persistence in, the assumption that he would be guilty of unjust and oppressive conduct if he were now to depart from it.

His Honour went on to say that whether departure from an assumption a person has been induced to adopt will be unconscionable will depend on, amongst other things, the reasonableness of the conduct of the other party in acting upon the assumption and the nature and extent of the detriment he will sustain if departure from the assumed state of affairs is permitted.  His Honour said that in cases where the assumption has been induced by express or implied representations, a critical consideration will commonly be that the representor knew or intended or clearly ought to have known that the other party would be induced by his conduct to adopt, and act on the basis of, the assumption.
Dr. Muffett is and was at all relevant times the Australian Electoral Officer for Victoria.  He was, he said, the person with whom people would confer if they wanted to know what the attitude of the Commission was in Victoria, though sometimes they might confer with his staff rather than with him.  He was "the top man".  On 3 May he and Dr. Poggioli discussed postal vote applications.  While warning Dr. Poggioli that there might be a change in the law, Dr. Muffet said that in the absence of such a change his office would accept and process applications lodged on the forms contained in Party brochures similar to those used in the 1993 election and the Kooyong by-election.  Dr. Muffett suggested the brochures be printed on mat paper to overcome processing difficulties encountered by his office with the glossy paper used in the past.  In reliance on what Dr. Muffet had said, Dr. Poggioli arranged to have 900,000 brochures printed on mat paper.  Shortly after the printing, Dr. Poggioli told Dr. Muffet the brochures had been printed in the same form as previously, though on mat paper, and Dr. Muffet again warned him that there might be a change in the law.  Dr. Poggioli's belief that in the absence of legislative change the Commission would process application forms contained in the brochures as it had in the past, was an assumption as to the future which he was induced to hold by what Dr. Muffet had said.  Dr. Poggioli relied on the assumption by having 900,000 brochures printed.  It was clearly reasonable for Dr. Poggioli to have acted upon the assumption in that way.  Dr. Muffet either knew or clearly ought to have known that Dr. Poggioli would act on the assumption that, absent a change in the law, the Commission would process application forms contained in the old brochures, by having brochures printed in the same form as in the past except for the style of paper.

The Party would suffer detriment if the Commission or the Commonwealth were permitted to deny the correctness of the assumption.  The detriment is not just the effort and money
that would be wasted if the Party were not permitted to use the brochures.  As I have said, the proceedings commenced on 21 December, and they were heard as quickly as the parties' and the Court's circumstances would allow.  Despite the intervention of the Christmas period, a bare two weeks elapsed between the institution of the proceedings and the hearing.  That expedited hearing was sought and granted because of a perception by the parties that a federal election could be announced at any time.  The Party's planning for that election, in so far as it relates to postal votes, would be thrown into disorder if it suddenly had to cause new forms to be printed.

The only hesitation I have had on this aspect of the case arises from Dr. Bell's letter of 16 February. But I do not consider it prevents an estoppel arising. It is an ambiguous and confusing letter. Its opening and closing paragraphs would reasonably lead a reader to believe that the effect of the letter was to deny the permission the Party had sought to make the two amendments to the gazetted form. The bottom line was the statement - "Permission to reproduce the postal vote application form with amendments proposed by you is therefore denied". That was certainly how Dr. Poggioli read the letter, as appeared in the course of his cross examination. Further, the letter was evidently about the application form and not about the Party's brochure. See the reference in the fifth paragraph to "approval" of the form under s.184 of the Act. In addition, Dr. Muffet's 3 May assurance (qualified by the warning about the possibility that the Act might be amended) was more recent than Dr. Bell's letter, and was unambiguous.

A meticulous examination of Dr. Bell's confused and confusing letter might perhaps show that he was doing more than simply refusing the permission Dr. Poggioli had sought.  Be that as it may, a representation must be clear in order to found an estoppel: Legione v.
Hateley (1983) 152 C.L.R. 406, at pp.435-436. Dr. Muffet's assurance was clear. It cannot be robbed of its clarity by an earlier ambiguous utterance which Dr. Poggioli quite reasonably did not understand to be inconsistent with it.

Subject to the question whether the fact that it is the Commonwealth that is sought to be estopped alters the legal position, I would hold that the Commission and the Commonwealth are estopped from claiming that the printing of the Party's 1995 brochure is an infringement of copyright.

Is the Commonwealth estopped?
While counsel for the Commonwealth did not concede that the elements of an estoppel were made out, the only argument deployed against an estoppel was that the Commonwealth could not be estopped in a case such as the present.  In their written outline, the matter was put in absolute terms: estoppels are not binding on the Crown: Attorney-General (N.S.W.) v. Butterworth & Co. (Australia) Ltd. (1938) 38 S.R. (N.S.W.) 195, at p.224. This contention was quickly abandoned in the course of argument. Instead, reliance was placed on the proposition that where there is no question of illegality or ultra vires, estoppel may be raised in respect of the exercise of a statutory discretion only at the operational level as opposed to the planning or policy level. See Minister for Immigration v. Kurtovic (1990) 92 A.L.R. 93, at pp.115-117, per Gummow J.

It was said that the present case fell within the policy limb of the proposition.  The Commission had initially permitted the Party to reproduce the gazetted form and part of its brochure, but after the 1993 election had changed its policy.  That was why it sought to
have the Act amended. When it was unable to achieve its end by a change in the law, it decided to have its way by resorting to copyright.

I do not consider the case is to be resolved by resort to this distinction between policy and operational matters.  No statutory discretion is involved here.  This is not an administrative law case.  As the owner of copyright in the gazetted form and the Commission's brochure, the Commonwealth asserts its rights in the same way as any other copyright owner.

Judiciary Act, s.64
Whether the Commonwealth can be estopped in the present case depends, in my view, on s.64 of the Judiciary Act 1903: in a suit to which the Commonwealth is a party, the rights of the parties are to be "as nearly as possible" the same as in a suit between subject and subject. Since Maguire v. Simpson (1977) 139 C.L.R. 362 it has been established that in every suit to which the Commonwealth is a party s.64 requires the rights of the parties to be ascertained, as nearly as possible by the same rules of law, substantive and procedural, statutory and otherwise, as would apply if the Commonwealth were a subject instead of being the Crown. The Commonwealth acquires no special privilege except where it is not possible to give it the same rights and subject it to the same liabilities as an ordinary subject. See The Commonwealth v. Evans Deakin Industries Ltd. (1986) 161 C.L.R. 254, at pp.264-265.

In Asiatic Steam Navigation Co. Ltd. v. The Commonwealth (1956) 96 C.L.R. 397, at p.427 Kitto J. rendered the expression "as nearly as possible" as "as completely as possible", and went on to say that s.64 in effect requires the court "to put out of account any special position of the Crown, and so far as possible to decide all questions of right in the
same way as they would have been decided if the Commonwealth ... had been a subject": p.428.  In Evans Deakin, at pp.264-265, Gibbs C.J., Mason, Wilson, Deane and Dawson JJ. agreed that "as completely as possible" was the natural meaning of "as nearly as possible", and after quoting the passage I have just set out, said it was "unnecessary to consider whether in some cases at least it would be right to consider the special position of the Crown", as the Commonwealth in that case "was not performing a function peculiar to government".  In Deputy Commissioner of Taxation v. Moorebank Pty. Ltd. (1988) 165 C.L.R. 55, at p.68, the Court said it was not necessary to consider whether, and if so to what extent, s.64 would be ineffective to apply the provisions of State laws in circumstances where their application would interfere with the discharge of "an essentially governmental function such as the collection of taxes". See also Maguire v. Simpson, at pp.393-395. In the present case the Commonwealth did not contend that s.64 should not apply because of any "function peculiar to government" qualification. In those circumstances I need not decide whether there is such a qualification, and if there is, whether the present case falls within it. Cf. Verwayen's Case, at p.486.  Accordingly I hold the Commonwealth estopped from enforcing its copyright.  The Cross-Application for declarations and injunctions is dismissed.

I certify that this and the preceding 28 pages are a true copy of the reasons for judgment of the Honourable Justice Sundberg

........ ........ ........ ........ ........ ........ .

Associate

22 January 1996

Counsel for the Applicants and

Cross Respondent:  A C Chernov QC and D J Williams

Solicitors for the Applicants and

Cross Respondent:  Deacons Graham & James

Counsel for the Respondents and

Cross Applicant:  S Crennan QC and C Golvan

Solicitor for the Respondents and

Cross Applicant:  Australian Government Solicitor

Date of Hearing:  8-9 January 1996

Place of Hearing:  Melbourne

Date of Judgment:  22 January 1996