Copyright Agency Limited v State of New South Wales

[2008] HCATrans 174

Replacement Transcript

[2008] HCATrans 174

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S595 of 2007

B e t w e e n -

COPYRIGHT AGENCY LIMITED

Appellant

and

STATE OF NEW SOUTH WALES

Respondent

GLEESON CJ
GUMMOW J
HEYDON J
CRENNAN J
KIEFEL J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON WEDNESDAY, 23 APRIL 2008, AT 10.21 AM

Copyright in the High Court of Australia

MR D.K. CATTERNS, QC:   May it please the Court, I appear with my learned friend, MR M.R.J. ELLICOTT, for the appellant.  (instructed by Banki Haddock Fiora)

MR D.M. YATES, SC:   May it please the Court, I appear with my learned friend, MS J.R. BAIRD, for the respondent.  (instructed by Crown Solicitor’s Office – Sydney)

GLEESON CJ:   Yes, Mr Catterns.

MR CATTERNS:   May it please the Court.  Your Honours, I am sorry, there is a minor procedural matter that our friends drew our attention to and which is a matter by consent, but we think there is an error in the way the Full Court expressed its order.  May I just briefly take the Court to it?  We would consent to a variation of the order, both sides, and if your Honours thought it appropriate we would file a minute of that tomorrow.

Your Honours, if I can work backwards, in volume 2 at 945 in our notice of appeal, in paragraph (c), we submit that:

The Full Federal Court erred in holding that question 6 should be answered . . . that . . . the State is obliged to or authorised to do -

Your Honours, those words reflect the holding of the court but not the form of the order, and we agree that the holding of the court ought to have been expressed in the order.  Your Honours, the next place to go is 921 where, in answering question 6 in paragraph 158 his Honour Justice Emmett, with whom Justices Lindgren and Finkelstein agreed on these relevant questions, said – and it follows his Honour’s reasoning:

the State is licensed to do everything that, under the statutory and regulatory framework that governs registered plans, the State is obliged or authorised to do -

So that is the finding, your Honour.  But the orders are at 872, they begin at 870.  Relevantly, your Honours, at 872, question 6, the court ordered:

The licence is for the State to do everything that . . . the State is obliged to do -

The parties agree, your Honours, that it would say “or authorised to do”.  The way the case was run drew no distinction between, for example, an obligation to register, but authorised to do the broader activities that are discussed in the facts.  So if it convenient to the court we would consent to that amendment and file a minute tomorrow, if that is convenient, your Honour.

GLEESON CJ:   Thank you.

MR CATTERNS:   May it please the court.

GLEESON CJ:   Yes, take that course.

MR CATTERNS:   Thank you, your Honour.  Your Honours, I was going to go briefly to the facts, which were all found by the Tribunal when it referred the question of law to the Federal Court.  They are in volume 1.  The case stated begins at page 2 of volume 1 and if I could just briefly remind your Honours of the facts set out in the stated case.  First, the Copyright Agency has been declared under 153F to - I will take your Honours to these provisions:

be a collecting society for the purposes of Division 2 of Part VII –

Part VII being the Crown provisions, your Honours.  Its members include members of the Consulting Surveyors Association.  CAL made an application to the Tribunal under those provisions of the Act, including an application to work out equitable remuneration for the making of digital copies of works and also communication plans.

GUMMOW J:   Did the framework of the case involve an application by your client for remuneration on an assumption that the Crown use provisions applied?

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   On the basis that it did not, but nevertheless, there was an infringement?

MR CATTERNS:   No, your Honour, I think only the former.

GLEESON CJ:   That was Crown use?

MR CATTERNS:   Yes, your Honour, and our friends – we did not say it was infringement.  Our friends pleaded that they owned the copyright by virtue of section 176 or 177, not the subject of this appeal, or, alternatively that they had an implied licence.  As it happened, our friends also filed an application in the Federal Court for declarations to a similar effect.  It all got swept up, so to speak, into the Copyright Tribunal and led to the stating of this case to the Full Court to determine the question of law under 161 of the Copyright Act. 

GUMMOW J:   But the implied licence that was pleaded against you by the State, was that an implied licence arising from any particular one‑on‑one dealing or an implied licence arising globally? 

MR CATTERNS:   Your Honour, arising globally, and that is a way we seek to distinguish it from the one‑on‑one deal of the engagement of an architect for reward.  The submission and the holding of the Full Court, as we read it, is that it arises globally from surveyors lodging the plans or their clients lodging the plans, knowing, as it were, this system of registration, but also this, we say, comprehensive and full system of post‑registration acts comprised in the copyright will take place. 

GUMMOW J:   Globally, but gratuitously. 

MR CATTERNS:   Yes, your Honour, yes.  To put it shortly, our submission is implied licences arise in cases of necessity and so far they have tended to be in one‑on‑one situations, as your Honour puts it.  We say here where there is both a comprehensive use by the alleged licensee, but more importantly, where there is a comprehensive statutory scheme, which we submit is the only way this can all work, hold together, then there is just no occasion for an implied licence.

Your Honours, as paragraph 7 in the stated case says, we jointly requested the Tribunal to refer the questions of law.  We had a hearing of a few days.  Rather than agree on facts, we, for the usual reasons, had a hearing over a few days where the Tribunal made positive findings, as your Honours see in paragraph 8, and they follow and I was going to take your Honours just to a few of those findings from page 7 onwards, before coming to the structure of the Act.

May I remind your Honours of the questions.  The first question was a question relating to our friend’s submission that the State owned the copyright because these works were made by or under the direction or control of the State because of the detailed regulation of the forming which a plan must take.  The Full Court held no and there is no appeal against that by cross‑appeal.  So 2 did not arise.

Your Honours, our friend’s second argument, at least chronologically, was that they owned the copyright by reason of first publication under section 177.  The court held no, partly accepting an argument of ours, which was an alternative argument, that the State did not first publish because that could be said to occur at least in many cases when the surveyor gave the plans to his or her client, for example.

That leads to some intellectual difficulties, we respectfully agree – and take our share of the blame – the only way out of which is section 183(8), which we will come to, your Honours, which deems the acts of the State done under 183(1) not to be a publication.  So if it is not a publication by the State, it is not a first publication by the State, the State does not own the copyright and none of those problems arise, but they may arise in at least some cases if the implied licence route is the one that is adopted.  Your Honours, that is 3 and 4.

Then the questions on appeal, your Honours, are 5, which the Full Court answered yes in the passage of reasons – only by his Honour, Justice Emmett, the other judges agreeing – and then question 6 is the answer that I just took your Honours to when we discussed the slight error.  Questions 7, 8 and 9 related to the digital cadastral database and that was a question of reproduction of a substantial part when the data is entered into the plan, and special leave was refused on that point, so we do not need to trouble the Court with those parts of the facts.  Then there was a constitutional point which has gone away, your Honours.

GUMMOW J:   Where is that?

MR CATTERNS:   Your Honour, they were questions 10 and 11.

HEYDON J:   They fell with 1 and 2.

MR CATTERNS:   I beg your pardon, your Honour.

HEYDON J:   They fell with the answer to question 1.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   If the Crown use provision applies, what is the royalty section?

MR CATTERNS:   Yes, your Honour.  Section 183(4) and (5) - 183(4) provides for notice unless the Commonwealth or State considers it is “contrary to the public interest”.

GUMMOW J:   Does everyone accept, or has it been assumed throughout the case that 183(5) would satisfy just terms required by the Constitution?

MR CATTERNS:   Yes, your Honour, indeed.  Our argument is we avoid constitutional problems by getting into 183(5) but I am sure, with respect, your Honour is right when this was written in 1968, although the High Court was in the section, in the form it then took, it was intended to do what your Honour just said - paragraph 404 of the Spicer Committee.

GUMMOW J:   So one is construing that section with the idea that what comes out of it will be just terms and nothing less than just terms?

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   How does that then square – is there any attention in the Full Court as to how that would square with the implied gratuitous licence?

MR CATTERNS:   Not in their Honours reasons, your Honour, although I think it is fair to say that we have been asserting that a way of avoiding the constitutional difficulty is a reason for preferring the section 183 licences being the source of the authority.

GUMMOW J:   Does the implied licence come out of the Act?

MR CATTERNS:   Well, no, your Honour ‑ ‑ ‑

GUMMOW J:   Is it said to come out of the Act?

MR CATTERNS:   No, your Honour, it is said to be a licence in terms of section 15, which the Court discussed in Concrete v Parramatta Design.

KIEFEL J:   Implied by law?

MR CATTERNS:   Yes, your Honour, from the circumstances.

GUMMOW J: But the law includes the Constitution, I would hope.

MR CATTERNS: Yes, it includes the Constitution, your Honour, and it includes section 183. That is our submission in a nutshell. There is no necessity to imply a licence when the Act provides for a comprehensive statutory licence or compulsory licence.

GUMMOW J:   Yes, I am sorry, I took you off your course.

MR CATTERNS:   No, your Honour, thank you.  I was just going to go to a couple of those facts beginning at page 7 which are, your Honours know, findings of the Tribunal.  I can pass over the historical material, your Honours, and I would not presume to take your Honours’ time about the details of the Torrens System from paragraph 7 and following, but perhaps just to notice, as our friends would want us to, the last sentence of 9, that:

registration of a Survey Plan is central to the grant of title under the Torrens System -

of course.  Your Honours, what we used to call the Land Titles Office in Sydney is now called the Lands and Property Information Division, LPI, I get that from 13, of the Department of Lands, and I can skip past its functions but they are set out in detail.  In 17 it:

provides products and services to three specific segments of the market -

I will develop that in a little more detail.

GUMMOW J:   There is something called “the conveyancing community” in New South Wales.

MR CATTERNS:   Yes, your Honour.  I think we are all stakeholders now, your Honour.  Yes, the conveyancing community, your Honour, and “the planning and development community”.  Then, your Honours, in 18 there is the lists of tasks or activities performed by surveyors, part of which, but by no means all, relates to registered plans and they are listed in 18.

Your Honours, just on this question of whether we lose all our rights if 177 applies, which it might do if there is an implied licence, in 19, again, your Honours, there are the familiar functions of surveyors including builders and developers and on completion of a project they survey it to prepare for the instant subdivision plans to lodge at the LPI.  Then, your Honours, in 20 there are further details of surveyors’ tasks.  Your Honours, in 21 there are some findings about charging.

GUMMOW J:   Now, all of this is the Crown, is it not, for the purpose of the Act?

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   The Act binds the State, does it not?

MR CATTERNS: Yes, your Honour, section 7 of the Copyright Act - I am sorry, I hope I am answering your Honour’s question. Section 7 of the Act binds the Crown.

GUMMOW J:   “The Crown” is defined as including the Crown in right of a State.

MR CATTERNS: Yes, your Honour, and section 7 is subject to Part VII which is where section 183 is found. So, your Honours, we do not need to go into the history of the licensing of surveyors or their educations and qualifications. As your Honours know, they are skilled professionals with an important role in the Land Titles systems of the States and Commonwealth.

Your Honours, we could then skip to the lodgement sections from paragraphs 55 and following, and the plan is lodged in paragraph 56 either physically or electronically.  Then in 58, just to identify a term, your Honours, there the details are recorded on the Integrated Titling System, ITS.  Then there are a number of facts relating to all of the work done in house which were relevant to the making by or under the direction or control of the Crown, which we do not need to go to, your Honours.  Your Honours, at 67 we are coming to registration: 

If the Survey Plan is compliant, it proceeds to registration on the Register.

It is sealed, then your Honours, in (b)

the electronic plan records held on the Document and Integrated Image Management System -

Your Honours will see DIIMS several times.  Then, your Honours, in (c) it is scanned into the database “where it may be accessed by the public and government authorities”, copies are sent to councils, et cetera and 

an electronic copy of the Survey Plan is sent to LPI Bathurst.

Bathurst is where LPI does its work on the cadastral plans, which were the subject of the reproduction questions.  Your Honours, in 71 there is another reference to the act of registration.  Now, your Honours in 74 and following, and those acts we saw in 67 are all, or many of them, are acts comprised in the copyright.  They will have been acts of reproduction, and when we send it out, as the Court will see, to information brokers, as they are called, there will be authorisation of further reproductions and there will also be acts of communication and I do not think there is any dispute about any of that.

CRENNAN J:   Is there a question about whether all these uses are all uses for the services of the Crown?

MR CATTERNS:   Your Honour, we have accepted that they are all for the services of the State, but the question is by what right are they done, either an implied licence or 183.

GUMMOW J:   But there could be a question as to whether the acts said to be authorised by the implied licence are more extensive or less extensive or co‑extensive with the acts that would be covered by the Crown use provisions by the phrase “services of the Crown”.  You are saying there is not that question.

CRENNAN J:   You mentioned the public would access the documents.

MR CATTERNS:   That is right, your Honour.  There might be acts down the far end.  I now come back to 183(1), which allows the State to authorise a person in writing to do acts.  The State is entitled to authorise a third party in terms of 183(1), but it may be that at the far end there are further acts of infringement and the ordinary law of authorisation might ‑ ‑ ‑

GUMMOW J:   But that has not been investigated.

MR CATTERNS:   No, your Honour.  Then at 74 there is the fact that every time the plans are registered it is imaged electronically by the image capture section and is entered into DIIMS, as I mentioned before.  Your Honours, there is a description of how that is done.  It used to be on microfilm.  In paragraph 79, an exact image of the whole plan is recorded in the digital format.  They are stored as individual TIFF files.  Software programs allow the plans to be accessed and displayed.

Your Honours, I can skip over the next couple of sections, which were largely relevant to the digital cadastral database question and reproduction question, and ask your Honours to go to 127 at page 31.  Your Honours, there is an application program interface that allows the electronic images stored on DIIMS and other electronic products to be accessed by users, including LPI staff, government bodies, information brokers, and members of the public.  In addition, in 128, images are automatically made available to councils and other authorities through an internet delivery service and LPI Sydney makes images available to all those people, your Honours, including information brokers.  I was going to take the Court briefly to one of the information broker contracts.  There are fees set by the regulations.

Your Honours, in 130, most plans are accessed electronically these days, although you can still get them over the counter.  You can go to the website and there are other forms of electronic service deliveries discussed, your Honours, over the next few paragraphs.  Then, your Honours, at 137 there is entering into licence agreements with information brokers, who are direct‑access clients of LPI, may have thousands of clients, and the LPI acts as a wholesaler to the information brokers.  We use the term “commercial activities”.  They are all done for the State but they are of a commercial character and we submit that is relevant to whether or not the surveyors are taken to have impliedly licensed what goes on.

Your Honours, in 139, the brokers can access the images seven days a week, 17 hours a day.  They get the documents and then they onsell them to their clients.  Your Honours, I do not need to take the Court to any more of those facts.  The only document I seek to take the Court to is – I am sorry, there are two more – the information broker document in volume 2 at 695.  Your Honours, this was a confidential document, but nothing I am going to take the Court to would cause any difficulty with that. 

Your Honours, at 696 - this is called document 49 - your Honours can see it is an agreement between what became the Director General of the Department of Lands and an information broker, and there is a recital in B, “legal custodian of the Property Information”, and in D, the Department has agreed to provide access to the information.  Your Honours will see at 697, there is a definition of “Property Information”, and that includes land title information, your Honours ‑ ‑ ‑

GUMMOW J:   What is the purpose of this in practical day‑to‑day conveyancing terms? 

MR CATTERNS:   You can get all of ‑ ‑ ‑

GUMMOW J:   You being a solicitor or member of the public?

MR CATTERNS:   A member of the conveyancing community, your Honour, yes, can get online a copy of a plan.  Your Honour, of course there is more than just ‑ ‑ ‑

GUMMOW J:   For a fee? 

MR CATTERNS:   Yes, your Honour.  The broker is charged a fee, as your Honour will see in a second, and they impose a further fee on their customer.  It can be just for conveyancing purposes, but much broader purposes such as, if you are a property developer making a plan to do something in a certain area, long before there is any exchange of contracts or a settlement of a conveyance, - your Honours, just skipping through it, your Honours, at 699, paragraph 4, access is given to the information broker.  In 4.2(a) they may “copy the Property Information”, “store on the server”, “combine the Property Information with information” and “supply the Property Information to Customers”.  Then, this is perhaps something Justice Gummow put to me earlier, and your Honour Justice Crennan, there is then some control that they are obliged to put on their customers in 4.3(a).

Your Honours, at 5.1 on page 702, you can have reseller customers, in other words, there can be two wholesale levels, so to speak.  In 7, your Honours, the information broker might have made available to it “printing services for delivery . . . by hard copy”.  In 8, it deals with searches, 9 imposes on the information broker an obligation to:

use reasonable endeavours to actively market and promote its role and business as an Information Broker with a view to maximising its number of Customers –

In 10, it has to provide customer data to the department.  In 13, there is the provision for the fees, in the schedule, which I will take your Honours to.  In 17, there is an acknowledgement that:

all copyright, trademark and other intellectual property rights in:

(a)      the Property Information . . . 

are the property of either DITM, the State of New South Wales -

Your Honour, we do not criticise that.  That was done when the State was putting forward an idea that it owned the copyright.  Your Honours, finally, Schedule A is the list of information you can get.  That is on page 722.  Page 730 is the schedule of fees.  For example, item 2.2 there is a fee per transaction for an image request. 

So, your Honours, how we got here is Copyright Agency Limited acting on behalf of surveyors and being the declared society for government copies in relation to surveyors makes application to the Tribunal.  We fully accept that there might be a range of rates, if we were to succeed, that the Tribunal might fix.  It might say zero for the act of making a copy that you put the stamp on but say five cents out of this $4 that we see on this page.  As your Honours know, the idea of a collecting society is it receives the money, pays its own costs – it is non‑profit – and distributes the money to surveyors or whoever the copyright owners might be.

I will take your Honours to the mechanism in section 183A which came into the Act in 1998, the idea being that there is no comprehensive system for sampling, for example, and so on.  Your Honours, just finally, the last factual matter, this dispute has simmered for a number of years and at page 811 there is a letter from one of the members of the New South Wales Association of Consulting Surveyors to the chairman saying, “We’ve got a problem with our copyright with the Land Titles Office” and at 812 there is a letter from that firm to the director of the Land Titles Office referring to a particular strata plan where the surveyor had attempted to bring the matter to a head by putting a copyright notice on the plan and the Land Titles Office saying, “We won’t register it unless you take off the copyright notice”.  Your Honours see that from that first paragraph and the fourth paragraph.

Your Honours, there are a couple of other documents internally and at 816 there is a letter saying:

I duly received your letter of 11 September 97 . . . requesting me to acknowledge surveyors’ copyright…

Before making any such acknowledgement . . . I have thought it appropriate to seek the NSW State Crown Solicitor’s advice generally –

After various steps in the journey here we are, your Honours.  As we submit – starting from scratch – I will come to the Act in one second, your Honours.  If I could just restate our proposition, the surveyor or his or her client owns the copyright.  There are certainly some acts done here which would constitute infringement.  They are acts comprised in the copyright and they would otherwise constitute infringement.  The Full Court held there was an implied licence to do all of the acts that the States are obliged or authorised to do under this scheme.  We would respectfully ask why. 

In cases like the architect’s plans cases referred to in the Concrete v Parramatta Design Case and in the very particular facts of that case – they were remarkable facts where the architect was part of the vendor joint venture, consenting to the sale of the land DA approved yet holding on to his copyright.  In those sort of cases it is either necessary, leaving aside the fiduciary or joint venture elements of that case, or it otherwise flows from the circumstances of a particular case.  Our submission here it is not necessary that there be an implied licence when there is a careful and comprehensive statutory licence or compulsory licence.

GUMMOW J:   What does necessity mean in this area?

MR CATTERNS:   It is just that, your Honour – it is not quite business efficacy, I suppose, but when Justice Jacobs in Beck v Montana is holding that there is an implied licence I think it is necessary, in effect, to give business efficacy to that transaction that the architect granted the licence.  Your Honour remembers the Mateffy Perl Nagy Case where, to put it shortly the engineers contracted out of it and that it was held that on those circumstances there was no implied licence.

GUMMOW J:   So there is a much better understanding these days about what is involved in implication of terms both to give business efficacy on the one hand of a particular contract and on the other hand terms implied by law which have to be excluded if they are to be not operative, and in that case, as I understand it, necessity means that the arrangement simply will not work otherwise.

MR CATTERNS:   Yes, your Honour.

GUMMOW J:   The lifts in Liverpool City Council v Irwin, remember, had to service the high‑rise building or otherwise you could not live there, and we explored this to some extent in Byrne v Australian Airlines 186 CLR.  How would that reasoning apply here if at all, because I understand this case is – is it contractual, the implication, or is it outside?

MR CATTERNS:   I think our friends do not say it is a contractual implication in that there is no contractual relationship between the person lodging the plan and the State.

GUMMOW J:   This is like an easement of necessity, which is not contractual with landlocked land, otherwise you cannot get out.  Is that the sort of necessity?  I guess these are not your problems at the moment.  I just could not see them adverted to very plainly in paragraph 157 of the Full Court’s reasons ‑ ‑ ‑

MR CATTERNS:   No, your Honour.

GUMMOW J:   ‑ ‑ ‑ which is a critical paragraph.

MR CATTERNS:   Yes, your Honour, we respectfully submit that – I will come to it – the court really assumes there is an implied licence by saying so three times rather than analysing why in the circumstances there is one.

GUMMOW J:   It may be there is an element of necessity in the sense that the Torrens System will not work without registered plans.

MR CATTERNS:   Yes, your Honour, but we say not because there is a statutory licence under 183.  Our answer to the question of necessity is there is no need or no occasion for an implied licence when there is a statutory licence, sitting there comprehensively.  Your Honours remember when this Act was a third the size it was, and the reason it has grown is because a large number of comprehensive – more or less comprehensive statutory licences have been put in, like the photocopying provisions and so on.

CRENNAN J:   Well, there are exceptions to infringement in contexts like the educational one.

MR CATTERNS:   Yes, your Honour.

CRENNAN J:   So as copying processes have become more sophisticated there has been a great increase in the number of special exceptions to infringement.

MR CATTERNS:   That is true, your Honour.  Whether one views 183 as calls of no exception, a defence or statutory licence, does not matter, I submit, but interestingly it has now been amended by the provisions in 183A and following which make it workable, whereas it may not have been conveniently workable to the detriment of copyright owners in the form that it first took.

GUMMOW J:   Say that again?

MR CATTERNS:   Your Honour, before 183A was amended the Commonwealth had to inform the copyright owner and originally terms as agreed or settled by the High Court, then soon the Copyright Tribunal, but the copyright owner had to – I say to the detriment of copyright owners because they had to rely on the Commonwealth or State to inform them – but now under 183A those two subsections do not apply to the making of copies where there is a collecting society.

GUMMOW J:   So how does the collection society find out what has happened?

MR CATTERNS:   Your Honour, perhaps I should go to - your Honour, in 183 – may I remind your Honours – I will go through the whole section later if I may - subsection (4) says “inform the owner”, and subsection (5) provides for the terms as agreed or fixed by the Tribunal.  But, your Honours, 183A, special arrangements for copying for the services of government, says:

183(4) and (5) do not apply in relation to a government copy . . . if a company is the relevant collecting society –

and the appellant is that.  Then if 183(5) does not apply, then the government must pay the society equitable remuneration using a method agreed on by the collective society and the government if no agreement as determined by the Tribunal, and the method, answering your Honour’s question, you can have a sampling system in (3)(b), just as there is for educational copying under Part VB.  Your Honours, then 183B provides for the payment and recovery of equitable remuneration and 183C there is the power of the collecting society to carry out sampling.  Section 183D, the annual reports, et cetera.

Your Honours, for completeness, under 182B(1):

collecting society means a company in respect of which a declaration is in force under 153F –

and 153F allows the Copyright Tribunal to declare a body to be a collective society for government copying.  Your Honours, of course, I am sure the policy is, because this is the government, it is the Copyright Tribunal that supervises collecting societies.  In the case of Part VB the educational copying, it is the Minister, under 135ZZB.  Because this is government copying, the Copyright Tribunal supervises it.  In fact, there has been an application against CAL by Queensland surveyors saying you have not been able to give us any remuneration to deregister CAL with respect to them, and that was refused by the Copyright Tribunal.

So, your Honours, our submission is that where there is a comprehensive statutory licence or compulsory licence to use the copyright material on terms, there is just no occasion for the implied licence.  It is not a case where you could say, as with Mr Fares in the Concrete v Parramatta Design, he indeed consented to the sale of the land DA approved, knowing that the DA ran with the land, so to speak, for 5 years.  Here is a case where, sure, the surveyor knows all these activities are going on amongst the conveyancing community, but also knows there is a comprehensive statutory licence.

So, your Honours, may I just quickly take the Court through the provisions of the Act including very basic provisions.  Section 10(1), the definitions section, includes under the definition of “artistic work” on page 6 of Reprint 12:

a painting, sculpture, drawing, engraving or photograph -

Your Honours, on page 9:

drawing includes a diagram, map, chart or plan.

There has never been any doubt, as far as I understand it, that these surveyors’ plans here come within that.  Reminding your Honours of the definition of “copyright” is the list of exclusive rights set out so far as works go in section 31(1)(b), for artistic works:

(i)       to reproduce the work in a material form . . . 

(iii)     to communicate the work to the public -

Your Honours, section 32 provides for subsistence of copyright. Section 36(1) provides for infringement, and there are a couple of things to note, we submit. The first is “Subject to this Act”, and those words bring in all of the defences, statutory licenses, exceptions, including the old statutory licence in section 55 which is the one to make mechanical reproductions of musical works by making records, which has been in our law since 1911 following the Berlin revision of Berne in 1908. They are all brought in by “Subject to this Act”, as is section 183:

infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright –

and the Court explained in the Parramatta v Concrete Case the role of section 15 in defining the type of licence – defining a licence does in Australia or authorises the doing, your Honours, of any act comprised in the copyright.

Section 13 has the effect that the list of exclusive rights in section 31 are called “Acts comprised in copyright” and also provides that it includes the right to authorise, and that would be what the State is doing when an information broker provides further copies.  Your Honours know section 14 deals with the question of substantiality and section 15 is the definition of “licence”, or the deeming provision in relation to “licence” considered by the Court recently.

Your Honours, the presently crucial sections are in Part VII, beginning with section 176.  That is at 422 of the current print and your Honours know that the Court held that neither 176(1) nor 177 applied.  Your Honours, interestingly – and this relates to our argument that the best way out of some issues that arise here is to go via section 183 because it deals satisfactorily with the question of publication – if it is the case that the State does first publish these works when they are first made available to the public then 177 would apply and the State would own the copyright.  Nothing much turns on this, but under section 180(2) there would be a lesser copyright duration.  Not only would the surveyor lose the copyright but the duration would only be 50 years instead of life plus 70 years under 180(2).

Your Honours, if I may now focus on 183.  It says that:

The copyright in a . . . work . . . is not infringed by the Commonwealth or a State, or by a person authorized in writing by the Commonwealth or a State, doing any acts comprised in the copyright if the acts are done for the services of the Commonwealth or State.

This is apt to cover – I do not think there is any dispute – what our friend’s client does.  The only question is do we get to it?  Your Honours, 183(2) relates to the special case of the defence of other countries, in effect broadening the concept of the services of the Commonwealth, and reminding your Honours that the original history of these provisions was defence.  Section 183(3) allows authority – and that is the authorisation of third parties – to do acts for the services of the Commonwealth or State, even if they already have a licence with the owner of copyright.  So in short these provisions can go in over the top of an existing licence.

Your Honours, 183(4) is the provision we mentioned in relation to informing the owner of copyright.  Section 183(5) relates to the terms and (6) refers to the special case of the State authorising third parties – it has to be approved by the Attorney-General.  Section 183(7) deals with the dealing with articles, probably because of the fact that the copyright owner has remedies in conversion and detinue under section 116.  But, your Honours, importantly, section 183(8) says:

An act done under subsection (1) does not constitute publication –

So if the acts of the State were to be held to be ‑ ‑ ‑

GUMMOW J:   That is important for 176, is it?

MR CATTERNS:   Section 177.  It stops those acts from constituting publication and, therefore, stops ‑ ‑ ‑

GUMMOW J:   Otherwise the Crown could get hold of an unpublished work and swipe it for themselves, in effect, by saying they were the first publisher.

MR CATTERNS:   Yes, your Honour, exactly.  But if we are right and some of these cases right here are in that category this provides a satisfactory answer.  Subsection (9) deals with exclusive licences.  Your Honours, (11) is interesting because what that says is where the reproduction for the educational purpose of institutions shall “be deemed not to be an act done for the services of the Commonwealth” or the State.  The very detailed provisions in, for example, Part VB, which allow multiple copying for educational institutions, complicated provisions for remuneration which Copyright Agency Limited has been doing for 20 years now, are saved from what would otherwise be the operation of 183(1).

Put another way, the Commonwealth or State cannot say, “We’re not in Part VB of the Act which involves sampling and limits on how much copying there is, and so on.  We choose to use 183.”  They are not allowed to by virtue by 183(11).  Your Honours, we respectfully submit that in the circumstances where the surveyor lodges the plan there is no need for an implied licence because by 183(1) the State has a licence to do everything it needs to do, or wishes to do, for the services of the State and then there is a mechanism providing for terms for that.

I do not need to take your Honours to them but 153K is the provision whereby the Tribunal determines the method of remuneration.  Your Honours, may I just recap.  As your Honours can see, it is a simple question, really.  We say this is not a case like other cases where there has been an implied licence inferred by the court in a copyright case.  The person who submits the plan is not “engaged for reward”, which is the phrase of Justice Jacobs in Beck v Montana, by the licensee.

They are nothing like a joint venturer, as was the case in Concrete v Parramatta Design.  Each of those was a case by case circumstance.  This is a professional doing their job and complying with a legislative framework.  It is true that they consent in the sense that they lodged the plans but another way of putting it is they cannot practice their profession otherwise than by doing this.

So, your Honours, looking at the two sides of the transaction, in addition to the traditional statutory function that the State is performing, which it is obliged to carry out, it is authorised or obliged, now, to provide a much broader number of useful services which are facilitated and magnified by modern techniques of reproduction and communication and it charges for them.

Your Honours, we submit an implied licence arises when the circumstances admit of it – and the commercial nature – and we do not use that pejoratively – of the Acts of the State make it unlikely, we submit.  There is a spectrum of uses by the State from which it derives revenue.  I will not repeat it, but there is no need for an implied licence where there is a comprehensive statutory scheme which accommodates payment or zero payment if the Tribunal thinks it is appropriate.  Your Honours, may I then just finally go quickly to ‑ ‑ ‑

GUMMOW J:   The net result of your success would be, would it not, that the “conveyancing community” will have some added cost passed onto it by the State, I suppose?

MR CATTERNS:   Yes, your Honour, exactly.  Say we got five cents, I am not saying we would not ask for more out of that $4, that would be passed on.  It would then cost $4.05, et cetera. 

GLEESON CJ:   The commercial background of this presumably is that somebody has engaged the professional services of the surveyor at an agreed fee.  Engaged the services of the surveyor for what purpose?

MR CATTERNS:   Inter alia to prepare a plan that will be lodged, your Honour.  The plan can be used for many other purposes, no doubt, including, for example advertising if it is a new subdivision, but certainly they include, we accept, the lodgement with all that leads up to and flows from that.

GLEESON CJ:   You can engage the services of a surveyor for purposes that have nothing to do with the Crown.

MR CATTERNS:   Yes, your Honour, they were at paragraphs 18 and following.

GLEESON CJ:   In a case where that happens, what, if any, implied licence arises?  Suppose I engage the services of the surveyor for the purpose of finding out whether or not the boundary of my land is the same as the fence line of my land with a view to perhaps doing something about it if it is not, or perhaps not doing something about it.  What happens in relation to the copyright in the plan that is produced by the surveyor then?

MR CATTERNS:   Your Honour, I think following the idea of the architects’ plans cases, your Honour would have a licence to photocopy that and show it to your neighbour, an implied licence, and say, “Look, your tree is on my land, or the fence needs moving”.

GLEESON CJ:   What is the basis of the implication?

MR CATTERNS:   Well, your Honour, the basis for the implication there, I suppose, goes back to cases like Beck v Montana where the courts have held that in those circumstances, the engagement for reward of the architect, now surveyor, leads to the implication of a term that the customer can use it for certain purposes.  Then arguments occur about whether they are the purposes contemplated at the time of the engagement or not.

GLEESON CJ:   Yes, and what is the basis of the implication?  For example, the surveyor might not know what I want to do with the plan.  I might not tell the surveyor.  I might say “It is none of your concern.  I just want you to do a plan”.

MR CATTERNS:   Well, your Honour, I agree, with respect.  I think that the basis of some of the architects’ plans cases might be difficult.  When this Court came to consider it in the Concrete v Parramatta Design Case the facts were so strong that the Court did not need to go back to consider, for example, the correctness of Beck v Montana, although it is right to say that their Honours Justices Kirby and Crennan applied those cases.  But the facts in that case were that the architect was the vendor, in effect.

But, your Honours, the reasoning is something very like implying a term in a contract to give business efficacy to the contract.  As your Honour knows, we do not embrace it here, or propound it here, quite the contrary.  We submit there is no occasion for it, as your Honour knows.  Your Honours, may I just go quickly to the Court’s reasons.

HEYDON J:   Why would it not be an assignment of copyright?  Why would not the Chief Justice’s example be an example of an assignment of copyright?

MR CATTERNS:   Your Honour, there may well be an assignment in such a case, if there were a writ, but an assignment has to be in writing by 196 and there are cases about equitable assignments and so on.  Your Honour, section 35 deals with questions of employment, but the ordinary commissioning case does not constitute either an assignment or employment.  The 35(6) would not normally cover, I think, your Honour, an ordinary commissioning arrangement. 

Your Honours, may I just give your Honours the reference in Beck v Montana [1964-5] NSWR.  The judgment of Justice Jacobs is at 235.  Would your Honours mind if I just read the paragraph in answer to his Honour, the Chief Justice?  He says:

The question raised is quite a broad one because it applies not only to architects but would apply for instance to artists who are engaged to prepare a particular work which would of its nature be reproduced . . . or which would apply to persons who prepared written material with the intention that it should be used in a particular manner.  It seems to me that the principle involved is‑that the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission or consent or licence in the person making the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement.

It seems to me that this must be regarded as a principle of general application.  As I submit to your Honours, the correctness or otherwise of that, or the generality or otherwise of that principle, did not fall to be considered in the Parramatta Design Case because the facts were so striking.

Your Honours, in our present case, his Honour Justice Emmett wrote the reasons on this issue.  His Honour Justice Finkelstein wrote separate reasons or concurring reasons only in relation to the section 176 point.  Your Honours at 127 in the different context – perhaps I ought to go back, your Honours, to 120. 

GUMMOW J:   In Concrete 229 CLR 577 – this bears on your answer to the Chief Justice, I think - at 585 in paragraph 18 ‑ ‑ ‑

MR CATTERNS:   Yes, your Honour said you do not regard it as turning on any implication as a matter of law in a contract of a particular description, referring earlier to Beck and Blair v Osborne which is where the Court of Appeal in England agreed with Justice Jacobs.  Their Honours, Justices Kirby and Crennan, set out the quotation from Beck v Montana in paragraph 71, your Honours.  The reason we have not gone back to that case in detail is that the facts were so particular, we thought.

Your Honours, if I may in the present case, the reasons which are in most other places, 159 FCR 213, at paragraph 120, Justice Emmett draws the distinction to the two questions. The first question “concerns ownership”, 176 and 177. Secondly, “the right of the Crown to do acts comprised in the copyright”. Your Honours, leading up to the question in 176, in paragraph 127, Justice Emmett says:

The Parliament did not intend that the Crown would gain copyright, or share in copyright, simply as a side effect of a person obtaining a statutory or other regulatory approval . . . hardly likely to have intended that copyright would be lost merely by reason of satisfying a requirement or prerequisite for the grant by the Crown of an approval or a licence for something.

Your Honours, we respectfully agree with that, but submit that the reasons of the court in relation to publication might nevertheless not stop that result occurring.

Your Honours may I then go to the answer to questions 5 and 6 in paragraph 152.  Your Honours, at 153, after referring to section 15, there is a reference to the surveyor being the owner, which they would be in the first place, they may assign it to a client.  We accept:

that the State is authorised to copy and make available to the public registered plans . . . the only source of such authority is s 183(1) . . . the Relevant Plans are done for the services of the State –

At the end of that paragraph there is a submission we have made today, your Honours:

there is no basis for the law to imply any other licence -

Then his Honour Justice Emmett goes on and says that the licensing of surveyors – and then goes on and says that when the surveyor prepared the plans:

the surveyor must have known and intended that, subject to satisfaction of requisitions, the Relevant Plan would become a registered plan –

Yes, your Honours, but of course that does not add up to a knowledge or intention that all subsequent uses will be free of charge.  Then, your Honours, with respect, the court just assumes the answer to the question:

There can be no doubt that the surveyor . . . authorised the State to use the Relevant Plan in all of the ways described above.  By assenting to the submission of the Relevant Plan for registration, the surveyor who made the Relevant Plan authorised the State to do everything that it was obliged to do . . . The consequence of registration is that the State was authorised to do the acts in question.  It was an incident of each surveyor’s assenting to the submission of a Relevant Plan . . . with the intention of its becoming a registered plan, that the surveyor authorised the State to do with the Relevant Plan all of the acts described above –

We are about to see 183, but that just skips straight over our argument and assumes the answer to question 5 without further reasoning, we submit.  We do not, with respect, see the point of the next sentence – that the systems of land holding do not depend on the Copyright Act.  Then their Honours say that if 183 did not exist, it is clear that there would be no utility in submitting the plan unless the surveyor authorised the State to do so.

That is right, your Honours, but 183 does exist.  Whether or not 183 had the effect that the doing of the acts, because they are done for the services of the State, are deemed not to be an infringement, the surveyor must be taken to have licensed and authorised the doing of the very acts intending to do.  So, your Honours, that seems to countenance the idea of both sources working to grant the licence – and again, we submit, why would you have the implied licence, or deem that they have authorised it, when 183 does bite?  We do not disagree that the whole purpose was to obtain registration, your Honours.  Then Justice Emmett goes in the last sentence of 157:

The surveyors who prepared each of the Relevant Plans must be taken to have authorised the State to do, in relation to the Relevant Plans, everything that the State is obliged to do . . . quite apart from the coincidental effect of s 183(1).

Again, your Honours, we respectfully submit that does not answer our ‑ ‑ ‑

GUMMOW J:   It is that word “coincidental” that you cavil at?

MR CATTERNS:   I think his Honour means it might be applying as well, but that cannot work because then we do not know whether all of the rest of 183 applies, particularly subsections (4) and (5), or their replacement in 183A.  Your Honour, we would respectfully submit that reasoning does not work.  Either 183 applies, or it does not.  If 183 does apply, there is no occasion for a statutory licence.

GUMMOW J:   Just go back to 156 for a minute.

MR CATTERNS:   Of course, your Honour.

GUMMOW J:   If one read the last sentence there slightly differently - suppose it said “If section 183 has the effect that the doing of the acts are deemed not to be an infringement, the surveyor” – you would have to say, “nevertheless must be taken to have licensed and authorised the doing of the acts”, but by definition, they are not an infringement.

MR CATTERNS:   Your Honour, if I may, if I were rewriting that sentence our way we would say, “If section 183 applied, the statute has licensed and authorised the doing of the very acts” – so no occasion for the surveyor doing it.  But I am repeating myself, your Honour.  May I just make good, finally, our submission that, and accepting our share in the blame for the unsatisfactory reason, we submit, on publication – our submission is that only section 183(8) provides a satisfactory answer to the problem that these acts may constitute first publication by the State and thereby the State would be the owner under 177.

The court answered this in paragraphs 143 and following, and said rightly in 145 that the various “acts constitute publication”, and said rightly the question is whether this is the first publication.  Now, your Honours, may I ask your Honours just to go to section 29 which deals with publication.  Now, your Honours, the purposes for which this is in the interpretation part of the Act were discussed in part in the Avel v Multicoin Case as to whether or not it was defining what infringement by publication meant, and the court held that in effect it was infringement by first publication.

But the other significance in the history of copyright of the definition of publication is publication was often the mode of subsistence.  You got copyright in the old days by first publication in a country.  Now the copyright international protection regulations are much broader but they still depend on first publication in a Berne Convention country, for example.  But, your Honours – yes, of course, as my friend points out, subsistence and duration also depend upon a concept of publication.

But there is a definition of “publication” for the purposes of the Act in 29(1):

deemed to have been published if, but only if, reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public –

Your Honours, 29(4) - we can skip (2) which deals with substantial part, (3) which deals with buildings and sculptures, but (4) says:

A publication that is merely colourable and is not intended to satisfy the reasonable requirements of the public shall be disregarded –

unless it is a breach of moral rights or an infringement, and that ‑ ‑ ‑

GUMMOW J:   Infringement of someone else’s copyright.

MR CATTERNS:   Yes, someone else’s copyright.  Yes, your Honour.  Your Honour, that was no doubt put in partly, or principally, to deal with your obtaining copyright by reason of publication; if you only publish three copies here you would not get copyright.  Then in (6), your Honours:

In determining, for the purposes of any provision of this Act:

(a)      whether a work . . . has been published . . . 

any unauthorized publication . . . shall be disregarded.

Now, this is our problem with the implied licence.  If section 183(8) does not bite to say that the act of the State is not a publication, then the question is – and we agree that the acts of the State are acts of publication as the Court held in paragraph 145, what is left is are the acts of the State acts of first publication?  If they are not, then section 177 will apply, and by virtue of your lodging your plans, the State owns the whole copyright, every act comprised in the copyright, for the foreshortened duration of the copyright, and we submit that cannot be right.

The way the Court got over it, and I have accepted our share of the blame in relation to putting this as a fallback submission on what publication is, by saying in 148:

On the basis of the Tribunal’s findings and the legislative and regulatory framework, it is clear that each of the Relevant Plans was published prior to registration.  Thus, each Relevant Plan must have been provided by the surveyor to the owner of the land for signature.  That was a publication.

Well, we respectfully submit, it is unlikely to be a publication in terms of section 29.  The same when you provided it to the council:

Both acts of publication must of necessity have preceded registration -

For example, to make it easier, your Honours, if the surveyor owns the land then there would not be an act of publication.  Then their Honours notice our argument that under 183(8):

an act done under s 183 (1) does not constitute publication of a work; even if the making available to the public by the State of a Relevant Plan is done under s 183, it does not constitute first publication.  On the other hand, if such making available by the State is not done under s 183(1), and there is no other licence –

then they are unauthorised – well, that is right too, your Honours, of course; if the State were not licensed then it would be unauthorised and 29(6) would operate and it would not be a publication.  But their Honours say:

In essence, the applicability of s 177 depends upon whether or not, by submitting a Relevant Plan for registration, a surveyor must be taken to have authorised the State to reproduce and communicate that Relevant Plan to the public as a registered plan.  That is question 5.  If the State has such a licence there is no need to rely on 183(1) –

That is right.  If there is an implied licence there is no need to rely on s 183(1) and 29(6) does not apply, that is right but, your Honours, it is published, unless the reasoning in 148 is correct.  So we respectfully submit that because the reasoning in 148 is the only way out of the consequence that all the surveyors lose all their copyright for all time, the most attractive way out is to follow the comprehensive scheme of 183 which saves that problem by virtue of 183(8).

Your Honours, we respectfully submit that the question should have been answered, “No, there is no implied licence”.  Although we have appealed on question 6 and we say the terms ought to be not a free licence but there ought to be terms and your Honours will see that in the form of

order we seek, it really does not – also does not seem such an attractive response to say there is an implied licence and it is going to be on terms but on terms that de facto bring in the mechanism of 183.  The most satisfactory approach is to bring the matter under 183 via question – the right answer to question 5.  Unless there is anything further, your Honours.  May it please the Court.

GLEESON CJ:   Thank you.  Yes, Mr Yates.

MR YATES:   Your Honours, the assumption inherent in the appellant’s argument is that but for the operation of section 183(1) the State’s use of a registered plan in the ways described by the Full Court would be an infringement of the surveyor’s copyright in the plan.  We submit, your Honours, with respect, that that really puts the cart before the horse and ignores the fundamental question of whether there is an infringement, in any event, and it is that assumption, we submit, that needs to be tested.       If the acts are not an infringement then they are not attended with any relevant legal consequences and it becomes a barren exercise to go on and look at other provisions of the Act to see what exceptions to infringement might exist as if there were infringement.

So that there is a logically anterior question, we submit, and that is whether the acts of the State in this case constituted an infringement, relevantly, of section 36(1) in the first place. Clearly, there will only be infringement of the relevant section if the acts are done without the consent of the copyright owner.

Now, your Honours, in this case, the surveyor prepares the plan for the very purpose that it will be lodged for registration and hopefully obtain registration as a registered plan.  The surveyor does so by fulfilling all the many prescriptions that are required in relation to plans that will be suitable for registration as a registered plan.  Once the plan in that form is registered, it becomes part of a publicly accessible register in respect of which copies of the plan are either required or authorised to be provided by the State.

GUMMOW J: Section 36(1) does not talk about consent, it talks about licence, does it not?

MR YATES:   Licence, your Honour, but we would submit, with respect, that the word “licence” connotes a consent or permission or authorisation to do an act. 

GUMMOW J:   The law has a fairly nuanced view in some contexts with what consent is.  It looks sometimes as to the circumstances by which it is induced.

MR YATES:   Yes, your Honour.

GUMMOW J:   It is said against you that people pursuing this profession, at least as to this part of it, are between a rock and a hard place.

MR YATES:   Well, your Honours, the whole purpose of the preparation of the plan must be to obtain that registration so that the plan will be dealt with as a registered plan, and that must of necessity itself mean that the plan will be one that will be accessible by the public, including by the provision of copies to the public.  So, the surveyor, of course, must be mindful of that, at the time that the engagement is undertaken with the client to prepare the plan, so that it will be used for this specific purpose.

It is not unimportant, your Honours, that in that context there was a finding in the stated case that the surveyor charges fair and reasonable remuneration, not only for the preparation of the plan, but on the basis that others will be relying upon the accuracy and integrity of the data of that plan.  So that the surveyor is already provided for, so far as remuneration is concerned, for the preparation of the plan, and knowing that the plan to be upon a public register with copies available is going to be relied upon by others and that is already factored in.

So, in the present circumstances, we submit there is really no occasion as a matter of policy for the imposition or the obtaining of further remuneration when that is already gathered as part of the engagement of the surveyor in the first place by the surveyor’s client.  So, your Honours, the assent of the surveyor to lodgement of the plan for registration, we say must carry with it the assent to the inevitable consequences that the plan will be on the public register, and a public register in respect of which copies will be made available.

In that connection, your Honours, it matters little whether the copies are provided electronically or in hard form, or whether it is done through the instrumentality of an agent.  In previous years when one was doing conveyancing, unless the clerk went down and did his or her own searching, quite often the case was that a search company would be engaged for that purpose, and that search company would be the instrumentality through which the register was searched and if need be, a copy of a plan obtained and then provided to the client, the member of the public.

So the fact that the access to supply and the means of supply have varied over the years, including through the submission of electronic copies, we say really makes no difference to the fundamental question of whether a licence arises in all the circumstances of the case.  Your Honours, in respect of the licence, the State was not the one who raised the notion of necessity to imply the licence.  That came from the appellant, and our point ‑ ‑ ‑

GUMMOW J:   Is it a business efficacy type of licence, is it?

MR YATES:   Your Honour, we submit that one just simply looks at to all the circumstances of the case, and that must ‑ ‑ ‑

GUMMOW J:   What is the case, you see?

MR YATES:   The case, your Honour, is the fact that the ‑ ‑ ‑

GUMMOW J:   These are all surveyors, it seems to me. 

MR YATES:   That is so, your Honour.  These plans have a specific destiny.  They are prepared for a specific purpose, to achieve registration.  Once they achieve registration, they have a specific destiny.  That is always known by the surveyor.  Hence, having regard to those circumstances, one can see, in our respectful submission, that there would be a licence binding on the copyright owner, the surveyor, that the plan would be used for the purposes for which it was created. 

GUMMOW J:   This is efficacy between whom?

MR YATES:   Your Honour, we do not say it is necessarily a matter of business efficacy.  We simply say that it arises by the very nature of the plan, and the fact that it is obviously going to be intended to be used in a particular way, including by the provision of copies.  So that it is not so much a question of business efficacy, but just whether one can see from those circumstances the purpose for which the document was supplied includes the occasion on which it is quite clear that the document will be used, which is to provide copies to the public. 

GUMMOW J:   You are talking about someone’s property. 

MR YATES:   That is so, your Honour. 

CRENNAN J:   What about the practice of refusing to register survey plans if they show a copyright notice?

MR YATES:   Your Honour, that arises from the requirements.  The survey plans must show specific information and no other information. 

GUMMOW J:   Is that a statutory requirement in New South Wales?

MR YATES:   Your Honour, it is a practice, I believe.  I am just searching my memory on that. 

GUMMOW J:   It might be inconsistent with a federal law, if it is in statute.  Anyhow, it is a practice, so you say we have to look at all the circumstances and that seems to be one of them.

MR YATES:   Yes, your Honour.  Can I just deal with a matter that fell from your Honour Justice Gummow with Mr Catterns that section 183 would be part of all the circumstances of the case.  That may be so, your Honour, but the question is what role does 183 play?  If, as we would contend, that 183 is only engaged where there is otherwise infringement, that is the way in which 183 should be engaged in all circumstances of the case. 

GLEESON CJ:   It is part of your argument that the implied licence on which you rely may not cover some acts that are done for the services of the State, and that the role of section 183 is to operate in cases where the implied licence does not cover the Act?

MR YATES:   Yes, it is, your Honour.  Yes. 

GLEESON CJ:   What would be an example of an act done towards the services of the State that would not be covered by the implied licence and it would therefore attract section 183?

MR YATES:   Your Honours, in relation to the particular circumstances here, it is difficult to conceive of what that specific Act might be in the sense that the provision of landholding information via public registers does seem to be clearly a matter that is done for the services of the State.  So that in the particular ‑ ‑ ‑

GLEESON CJ:   What about subsection (2)?  Suppose, for example, there was some use made of these plans for a defence purpose that was not within the contemplation of the registration procedure for which these were prepared.  Would that be an example of a case where the State might need to rely on section 183?

MR YATES:   It certainly may be so, your Honour, particularly where the government of another country is involved.

GLEESON CJ:   A possible point of view may be that 183 has work to do even if the implied licence on which you rely exists?

MR YATES:   Yes, your Honour, and of course, the circumstances of our present case are indeed very narrow, really.  The acts that the Tribunal found ‑ ‑ ‑

GUMMOW J:   That is what worries me, you see.  On the one hand, we have some implication of a licence which is hooked to the circumstances of this case, but it looks to me as if what you really want is an implication of law that supports this licence, otherwise one cannot really answer these questions.

MR YATES:   Your Honour, we have certainly always put our case on the basis that it is an implication drawn from the facts and circumstances of the particular case dealing with, first of all, the acts of copying that would be involved in the process or registration of the plan, and the fact that copies of the registered plan are made available either because the statute says they must be made available or it authorises the copies to be made available upon payment of the prescribed fee.

GUMMOW J:   Why ‑ because this is using someone else’s property, even as a matter of common law ‑ would you impute a gratuitous licence?  Common law would suggest you would not.

MR YATES:   Your Honour, part of the circumstances that we rely upon is the fact that the surveyor is already remunerated for the preparation of the plan ‑ ‑ ‑

GUMMOW J:   By somebody else?

MR YATES:   By the client, but that remuneration includes fair and reasonable remuneration for the fact that others will be relying on that information.

GUMMOW J:   That is true of a lot of copyright material.  It is no defence for an infringer to say to an artist, “Oh gee, you were paid to paint this picture.  See you later.”

MR YATES:   No, your Honour, but the circumstances are different here, because the whole purpose for creating this plan – there can be many plans of survey.  The particular survey plan here is one that is to be registered as a registered plan, and therefore it has to be prepared in a particular way for a particular ‑ ‑ ‑

GUMMOW J:   One begins with the proposition that this Act binds the Crown in the right of the State.

MR YATES:   That is so, your Honour, we accept that, but the plan ‑ ‑ ‑

GUMMOW J:   How do you readily get out of the situation that the Act contemplates that the Crown, of all people, can take someone else’s property for its statutory purposes of the State law and not pay for it?

MR YATES:   Your Honour puts that to me in a way as a matter of policy ‑ ‑ ‑

GUMMOW J: Well, policy, in the light of 51(xxxi) of the Constitution, amongst other things. This is a Federal Act and you are trying to imply something that exists because of the operation of this Federal Act, or cuts into the operation of this Federal Act?

MR YATES:   Yes, your Honour, but ‑ ‑ ‑

GUMMOW J:   I am not talking about policy in the sky.

MR YATES: No, I am not suggesting that your Honour is, but if one takes section 183 as part of the circumstances of the case, the question is logically, does 183 apply at the outset or does it apply as an exception? We submit, your Honours, that there is a logical sequence to all of this; that section 36(1) defines those acts which will have legal consequences under the Copyright Act.  If they do not have those consequences then that is the end of the matter.  If they do, and there is infringement, then it is a question of whether one gets to 183.

CRENNAN J:   What about Mr Catterns’ argument that “Subject to this Act” really brings in all the statutory licences?

MR YATES: Your Honour, the words “Subject to this Act” where used in statutes are sometimes used as a matter of abundant caution. If those words were not there, we would submit with great respect, that one would still see the logical progression that I have endeavoured to outline, and that is to say that section 36(1) is the pivotal provision which defines whether these acts are going to have legal consequences for the purposes of the Act. The words “Subject to” are simply referring to – given that there is infringement under section 36 – and that there are various exceptions to that, of which 183 is one, but there are many other exceptions.

One matter that we have canvassed in our written outline of submissions is this, that if section 183(1) provides this all‑embracing licence, as the appellant would contend, then what about the other exceptions to infringement that exist in the Act because if section 183 jumps in at the outset and attaches to section 36, then the State does not have the benefit of any of the other exceptions to the Act because there is simply no occasion that would arise to consider those other exceptions.

GUMMOW J:   Were you thinking of fair dealing?

MR YATES:   Fair dealing and all of that.  I am not suggesting that they necessarily have a relevance in the present case, I am speaking more generally, but there is a raft of exceptions to infringement under Part III and, of course, in relation to other subject matter one sees a raft of other exceptions.  It would seem odd, in our respectful submission, if it was Parliament’s will and intention that the State, in effect, would be worse off because it would not have the benefit of other exceptions as and when circumstances arose that would make them applicable.

CRENNAN J:   Why could not a matter like fair dealing be taken into account by the Tribunal in fixing the equitable remuneration?

MR YATES:   Because, your Honour, section 183, in our respectful submission, seems to be predicated on the fact that there would be infringement.  So that a state of infringement, the legal state is one of infringement and then one moves into the exception.  If there is no infringement, then it really becomes a barren exercise to move into the exceptions.

Our learned friend’s submissions in‑chief referred to this all‑embracing licence.  In their submissions in reply they seem to accept that the other exceptions might apply should the circumstances warrant it.  But if that be the case, then clearly section 183(1) becomes for the State a provision of last resort because if, for example, a particular act of the State did involve a fair dealing, there would be no infringement; there would be no point in going to section 183.

So section 183, we submit, in the ordering of things, does seem to be a provision of last resort and it seems to be a provision that is dealing with the case where there is no consent prior to the act being done. If that be correct, and also if the other exceptions apply to the Crown, one asks why does one not start at section 36(1) and ask what we say is the threshold in question of whether there is infringement in the first place.

All of those considerations, we submit with respect, drive one back to what we say is the pivotal provision, which is 36(1).  That provision applies to the State just as much as it applies to any other person.  The section does not distinguish between the State or the Commonwealth or any other person.  So one asks are the acts done without the licence?  If one were to pick up section 183 at that stage and put it on top of the word “licence” in section 36, then the position of the State – the legal situation of the State would be much diminished.  One would never get to the stage of asking whether or not there was in fact an anterior permission.

Now, we say, with respect, your Honours, there was an anterior permission given in this case for the reasons set out in our submission, and for the reasons stated by the Full Court, and that being the case, that is the end of the matter.  If there be such a licence binding on the owner of the copyright, then one does not get to 183, or indeed to any of the other exceptions, and we would say, as I have already submitted, that 183 becomes really a provision of last resort in the scheme of the Act insofar as the State is concerned or persons authorised in writing by the State under section 183(1).

Your Honours, when the Spicer Committee came to consider whether or not there should be such a provision in Australian copyright law, it had the example of section 125 of the Patents Act 1952 before it and section 183 quite clearly is modelled on that. But the Spicer Committee, we submit, quite clearly saw such a provision as acting for the benefit of the State in the sense of providing additional rights which the State might have over and above other persons, and that was certainly also the position so far as the Gregory Committee was concerned in the United Kingdom.

GUMMOW J:   There is an article in volume 5 of the Australian Intellectual Property Journal, 1994, on the compulsory licence copyright provision.  It talks about the English situation.  It says there is some consideration of it in Canada.  Do you know what has happened?  In other words, does this system apply here, New Zealand, the United Kingdom, anywhere else?

MR YATES:   Your Honour, so far as I am aware there is a system in the United Kingdom, New Zealand and Canada.  We have referred to the New Zealand and the English position in our outline of submissions.  We have not referred to the Canadian position.

GUMMOW J:   Well, I am not sure there has been – has there been one introduced in Canada?  There was not in 1994.  That is what the article is about.

MR YATES:   I am sorry, your Honours, I misspoke.  I understood that there were some provisions in Canada.  I am told there are not in terms of use of the Crown.  Your Honours will note ‑ ‑ ‑

GUMMOW J:   What happens in the United States as to use by the United States or State Governments of copyright material?

MR YATES:   I am unable to tell your Honour that.  We looked at the position so far as New Zealand and the United Kingdom was concerned simply to see what happens to, if I can use the word, a sibling and the parent, but realising that in fact that there was no provision that was substantially the same or close to 183.  We did not continue our researches on that, and that was the reason.

But your Honours will know from our written outline of submissions there are certainly documents that are on public registers that are capable of being copied both in the United Kingdom and in New Zealand without infringement of copyright, and there are various other sections providing exceptions in relation to matters of public administration.  Then there is a residue provision which provides that, in certain circumstances, the Crown can use copyright works in various circumstances which are quite significantly more limited than 183 of our Act.  We, with respect, did not see too much of an analogy, so far as how we go to order and reconcile the provisions of the Australian Act, which seems to stand alone in this regard.

Your Honours, so far as section 177 is concerned, the Full Court found that section was not engaged and accepted the submission that was put to it by the appellants, that there was a first publication before the State had published the plans in the ways in which we contended.  Of course, that then was the end of the matter on that.  The Full Court found it then, that in the circumstances of these cases, there is always going to be a publication.  Section 177 is not going to be engaged.  Therefore, one does not get to section 183(8), we submit.

We also submit, with respect, that Justice Emmett’s reasoning on that should be accepted.  If there is no licence, then the publication is unauthorised under section 29, and cannot be taken account of.  If one does find oneself in section 183(1), then subsection (8) provides that that will not be publication.  It would only be the case that section 177 was engaged where there had been no prior publication and the publication was made by the Crown.

Now, your Honours, there may be views about whether that, as a matter of policy, is a desirable outcome.  Certainly, the will of Parliament as currently expressed is that if a copyright work is first published by the Crown, then the Crown will become the owner of that copyright under section 177.

Your Honours, those are the only matters that I wish to put your Honours on this point.  Clearly, the way in which the State puts its case is that there is this anterior question, which arises under section 36.  That must be dealt with first as a threshold question.  We submit, with respect, that there were compelling reasons in the present case why, as to all the circumstances of the case, a licence binding on the owner of the copyright would exist in relation to the particular acts that the Full Court identified in its reasons. 

GUMMOW J:   I think the situation in the United States is influenced by the fact that they do not have an equivalent of section 176.  I think they

have a long‑term tradition that government publications are not copyright claimed. 

MR YATES:   Free speech. 

GUMMOW J:   Going back to the 1830s, I think, yes. 

MR YATES:   If your Honours please. 

GLEESON CJ:   Thank you, Mr Yates.  Yes, Mr Catterns.

MR CATTERNS: May it please the Court. Your Honours, our learned friend’s principal submission relates to the order of doing things. Our friends say the ordering of things, section 183 is a last resort, there is a logical sequence, do not put the cart before the horse, and this is our friend’s device, with respect. They say, section 36(1) says:

without the licence of the owner of the copyright -

Section 183(1) provides that the doing of certain acts is not an infringement so you look at 36(1) licence anterior to 183.  Then what our friends say is, you look at all the circumstances, find an implied licence before you ever consider section 183.  Your Honour, there is a simple answer to that and that reflects our friend’s error.

In looking at all of the circumstances of the case to decide whether there is an implied licence, the circumstances of the case include the fact that by section 183 there was a statutory licence, and by section 183A there is a complicated coherent mechanism for dealing with it, just as in the Concrete v Parramatta Case the statutory scheme whereby a DA ran with the land for five years was one of the circumstances of the case.  So it is not just a question of 183 jumping in at the outset and trumping other provisions of the Act, it is one of the circumstances of the case relevant to whether or not a licence ought to be implied.

GUMMOW J:   How would these questions of fair use and so on enter the equation if you are right?

MR CATTERNS:   Your Honour, the present case does not determine the question of interplay and fair use and 183.  It might be the case that – our case has not been that 183 trumps other provisions.  Our case is just that when the licence is available under 183, statutory licence, you do not need to imply the licence.  So, your Honour, it may well be that our friends can rely on the provision we mentioned in our submissions in reply, the backup copy of computer program is just to take out any idea of fairness.  It may well be that the State can rely on that, and ‑ ‑ ‑

GUMMOW J:   In what context?

MR CATTERNS:   Just to do backup copies of computer programs without needing to rely on section 183.  But, your Honour, in answer to our friend’s cart before the horse or chicken before the egg, you do not put 183 at the back of the queue of considerations because it is one of the relevant circumstances in the discourse of implied licences, and 183(11) recognises that.  That is the provision that says you do not – 183 does not trump Part VB.

GUMMOW J:   Just explain that.

MR CATTERNS:   Your Honour, sorry that is a bit cryptic.  Your Honours, for example, Part VB of the Act, which begins in the section 135Zs - for example, 135ZL, which is on page 307, allows for the multiple copying of what would otherwise be a substantial part of a work, and you make records, you pay remuneration as it happens to Copyright Agency Limited and so on.  Now, the purpose of 183(11) is to say that 183 does not operate to exclude this because it deems these acts not to be done for the services of the State.

GUMMOW J:   So what is the result of that?

MR CATTERNS:   The result of that is that the educational copying is done under Part VB, not under 183.

GUMMOW J:   If it is done under Part VB, what is the remuneration system?

MR CATTERNS:   I am sorry, your Honour, the way it works is, under 135ZL(1), it is not an infringement if you give a remuneration notice, and then by 135ZU, I hope, a remuneration notice is an undertaking to pay equitable remuneration.

GUMMOW J:   Exactly.

MR CATTERNS:   You can do it either by the ‑ ‑ ‑

GUMMOW J:   All I am trying to establish is that 183(11) does not deliver one into a non-equitable remuneration free area.

MR CATTERNS:   Yes, that is right, your Honour.  Yes, of course, that is quite right, your Honour.  Finally, your Honours, in answer to his Honour the Chief Justice’s question, we accept that there is plenty of scope for 183 in various areas and remind your Honours that the Full Court held that all

the acts obliged or authorised to do – that the State was obliged or authorised to do – are covered here.  But our submission is that its availability to cover these acts here is one of the relevant circumstances in determining whether or not there is an implied licence.  May it please the Court.

GLEESON CJ:   We will reserve our decision in this matter and adjourn until 10 o’clock tomorrow.

AT 12.12 PM THE MATTER WAS ADJOURNED