Copyright Agency Limited v State of New South Wales

[2007] HCATrans 700

[2007] HCATrans 700

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S336 of 2007

B e t w e e n -

COPYRIGHT AGENCY LIMITED

Applicant

and

STATE OF NEW SOUTH WALES

Respondent

HAYNE J
CRENNAN J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 16 NOVEMBER 2007, AT 10.33 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 applicant.  (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 (NSW))

HAYNE J:   Yes, Mr Catterns.

MR CATTERNS:   May it please the Court.  Your Honours, the surveyor’s plans are lodged with what is now called Land and Property Information, formerly the Land Titles Office.  We all accept for statutory purposes under New South Wales legislation they are lodged with surveyor’s consent.  There is no doubt that the State can reproduce and communicate them, we have always accepted that, for its statutory purposes and the kinds of uses range from the act of registration, putting a copy in the register, hard copy and electronically, to the sale of copies online, so there is no factual dispute.  As your Honours know, there was an agreed case stated referred by the Tribunal ‑ ‑ ‑

HAYNE J:   The case stated is that it generates an order that is amenable to leave.  We do not encounter President of India v The Moor Line Ltd problems, do we?

MR CATTERNS:   Your Honour, I do not know that case, but ‑ ‑ ‑

HAYNE J:   That is the arbitrator’s special case which yields an advisory opinion and does not yield an order that is amenable to leave.  President of India v The Moor Line (No 2) 99 CLR 212, and there has been subsequent cases, but this yields, does it, this stated case yields an order that binds parties?

MR CATTERNS:   Yes, your Honour, it answers a question for the Copyright Tribunal.

HAYNE J:   Yes.

MR CATTERNS:   Your Honour, this is not necessarily in answer to your Honour’s question, but the High Court has previously dealt with a Copyright Tribunal stated case in precisely the same circumstances.  That was Phonographic Performance Company a few years ago. 

So, your Honour, the legal question is, we accept that the State can do this, but does it do so by virtue of an implied licence, as the Full Court held, or can it do so by virtue of section 183 of the Copyright Act, which we submit provides a comprehensive statutory licence as distinct from the implied licence?  Your Honours, the presence of the statutory licence in the Act is the crucial circumstance, or piece of context, which takes this out of the territory of implied licences that your Honour has recently considered in the Concrete Pty Limited v Parramatta Case.

CRENNAN J:   It is not contractual implication.

MR CATTERNS:   That is right, your Honour.  Your Honour Justice Crennan with his Honour Justice Kirby discussed some of the other territories in which an implied licence arises, such as Beck v Montana, the architect plans simpliciter, or patent cases where there is a need for an implied licence otherwise everybody down the line dealing with the patented goods would infringe.  But, your Honours, our respectful submission is there is no need for or occasion for an implied licence here because there is a statutory one.

HAYNE J:   Is that a proposition that hinges in part upon the amplitude of the words “if the acts are done for services of the State”?

MR CATTERNS:   Your Honour, there is no doubt that these acts are done for the services of the State.

HAYNE J:   Are all of the acts done for the services of the State, such, for example, as downloading when you search, what used to be a search?

MR CATTERNS:   Your Honour, the solicitor, say, who does the downloading herself or himself is not doing that but, your Honour, every act done by the Land Titles Office or the Land and Property Information is.  Your Honour, the Court made a finding about that at page 91 in paragraph 153:

Clearly enough, all of the acts that the State does in relation to the Relevant Plans are done for the services of the State –

So, your Honour, if I could then go behind tab 7 of our joint bundle and just to give your Honours the context, the first page behind that tab shows us 176 and 177 which were the questions of making and first publication.  Then, your Honours, Division 2, two pages on, begins with section 182B and, your Honours, we get some comfort from that in that the legislature in 1998 had another look at the Crown use provisions and has put in a regime that makes them much more practicable whereby, in short, a collecting society is nominated as the relevant collecting society and that is us, the applicant, instead of the Crown giving notice copy by copy the sampling systems and the method for remuneration.

Your Honours, the crucial section is 183, and under 183(1) there is what I have called a statutory licence, perhaps it is a statutory defence:

The copyright . . . 

is not infringed 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.

I am skipping, your Honours.  I can then skip to (4) in attempting to make good our submission that this is a comprehensive scheme that grants the licence and then deals for terms.  Subsection (4) is that the State must “inform the owner”.  Subsection (5) is the terms are as “agreed” or “as are fixed by the Copyright Tribunal”.

Stopping there, your Honours, we would, of course, accept that at the level of the Tribunal if we were succeed, the Tribunal might decide on a very different rate for the making of a copy for the act and registration – that may well attract zero remuneration or very nominal – as opposed to a scheme whereby the State makes a good deal of money selling copies to solicitors or property developers, and we might get some cents per copy in a case like that.  Your Honours, finally, subsection (8) says:

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

and again as part of our submission that this is a coherent scheme, that means that 177 which would otherwise give the State the ownership of the copyright, not just the licence, but by virtue of its having a licence the ownership does not apply.

The Full Court got out of that problem, we respectfully submit, unsatisfactorily by holding, admittedly pursuant to an alternative submission we made, that the act of providing it to your client constitutes a publication.  That might be so in some cases, might not in others, whereas we submit here this provides a clean answer.

HAYNE J:   Where do I find that in the Full Court reasons and what is unsatisfactory about this aspect of the Full Court reasons?

MR CATTERNS:   Thank you, your Honour.  May I go to the licence part first and then go back to that?

HAYNE J:   Yes, of course.

MR CATTERNS:   Your Honours, his Honour Justice Emmett is the only judge who dealt with these questions.  Justice Finkelstein also wrote on the question of ownership.  Your Honours, the question of licence is at page 91, but may I skip straight to what is wrong with their Honours reasons in relation to 183?  The structure, your Honours, is at 155 to 157, and we respectfully submit that what his Honour does wrong is to hold that there is the licence inferred from the circumstances of lodgement with consent, so far so good, but to hold that there is an implied licence before his Honour considers the central fact or the central circumstance which is that there is a statutory licence.

CRENNAN J: It is also inferred, is it not, from the very longstanding statutory and regulatory schemes in relation to land in New South Wales which are completely independent of section 183?

MR CATTERNS:   That is true, your Honour, but the question is for the Commonwealth Act whether or not you – it would otherwise be a copyright infringement, we all agree, unless it is done either under an implied licence from the owner or under this statutory licence.

CRENNAN J:   The owner delivering these plans knows precisely what the State is going to do with them.

MR CATTERNS:   Absolutely, your Honour, but the owner also knows that there is section 183. We do not cavil for a moment at what your Honour just said. Of course the owner knows, the owner is fully aware that there is a regulatory setup and a business setup in the Land and Property Information, but we submit that there is no occasion for the – sorry, stopping there, your Honours. That would give rise to an implied licence in most factual circumstances, as it does in the architect’s plans cases. But, your Honours, here there is an additional fact, the central fact, that there is a statutory licence that permits this, so there is no occasion, we submit, for a licence to be inferred from conduct.

Your Honours, what his Honour does in 155 is what your Honour Justice Crennan just put to me, but his Honour leaves out the impact of 183.  We respectfully submit that his Honour begs the question when he says there can be no doubt that the surveyor authorised the State.  We say, but what about 183?

CRENNAN J:   At 156 his Honour deals with 183.

MR CATTERNS:   Yes, he does, your Honour, but what he says is, rightly, in the first sentence, the system of land holding does not depend on the Copyright Act, of course.  If 183 did not exist, there would be no utility in submitting the plans unless he granted a licence, or she.  But, of course, your Honours, 183 does exist and that is our point, so his Honour just puts aside this, we say, central circumstance.  Then his Honour says:

Whether or not s 183 has the effect that the doing of the acts . . . are deemed not to be an infringement of copyright, a surveyor must be taken to have licensed and authorised the doing of the very acts ‑ ‑ ‑

CRENNAN J:   That is the nub of the decision, that is the ratio about which ‑ ‑ ‑

MR CATTERNS:   Absolutely, your Honour.  Yes, your Honour, and we say that is wrong because the idea of implied licences is one that has developed – and I will take your Honours quickly to something his Honour Justice Gummow says in Collier v Foskett when his Honour was in the Federal Court.  A common law notion of uncertain application would be unlikely to trump – that is my word, of course – a statutory licence that is designed in a comprehensive way.  Your Honours, again we do not disagree with what is said in 157 “The whole purpose and object” is to get registration.  Then in the last sentence of 157, your Honours, their Honours say:

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 in consequence of their registration, quite apart from the coincidental effect of s 183(1).

CRENNAN J:   You could add to that “for free”.

MR CATTERNS:   Yes, your Honour, for free ‑ ‑ ‑

CRENNAN J:   That is really at the heart of this.

MR CATTERNS:   Absolutely, your Honour.  What are the terms?  Obviously, it is not revocable if one grants an implied licence here, but it is for free no matter what the total ambit is of State’s uses.  The word “coincidental” is at the heart of our argument.  We say that 183 is not coincidental.  There is a coherent scheme, to repeat myself, whereby there is remuneration in appropriate cases which gives the State all it needs.

CRENNAN J:   Maybe the two can happily sit together.  Implied licences in this context to do something for free and 183 where there is no implied licence to do something for free.  In other words, there is no repugnancy between the two coexisting, the statutory scheme and implied licence for free in this sort of statutory and regulatory context.

MR CATTERNS:   Your Honour, I am not quite sure I would put it as “repugnancy” but I submit that where you have got – I am repeating myself.

CRENNAN J:   No inconsistency or no trumping necessarily because the two could coexist.

MR CATTERNS:   But, your Honour, 183 is pushed aside because if there is an implied licence, you do not need to rely on 183 and that is why we are here, whereas we say that if ‑ ‑ ‑

CRENNAN J:   What I am saying though is that you can understand an implied licence in a governmental context like this where the ability then is to do whatever is within the copyright for free as distinct from making payments under a statutory licensing scheme.

MR CATTERNS:   Yes, your Honour.  In argument below there was questions like whether the tax department has a right to make a photocopy of your file.  It is unlikely as a practical matter, of course, and these matters arise in copyright where there are practical – one lives with infringements around the edges whether they are impliedly licensed or not.

CRENNAN J:   And the point is there would be lots of documents and it would be quite a burden on the State revenue possibly if there were no implied licence to do these things for free.

MR CATTERNS:   But, your Honour, that is exactly the structure of section 183 where there is provision for the Copyright Tribunal to deal with it and determine the terms and now there is a statutory collecting society and sampling and so on.

CRENNAN J:   Yes, I know.

MR CATTERNS:   Your Honours know that there is a very complicated scheme now for educational copying.

CRENNAN J:   Yes.

MR CATTERNS:   Your Honour, just apropos of that, his Honour Justice Gummow in the Collier v Foskett case – it is quoted in our submissions at paragraph 22 on page 129 – it is in context of a public interest offence to copyright, not an implied licence – his Honour says, there is very detailed provisions in various divisions of the Act and the Act has been amended to deal with particular regimes where copying will be permitted.  Then his Honour refers to Copyright Agency Limited v Haines.  It is the last sentence, your Honour, that we rely on:

It would be an odd result if this complex of provisions, reflecting an accommodation by the legislature of a range of competing interests, were overlaid with some defence springing from the general law and defined with none of the precision apparent in the legislation.

His Honour Justice Hayne asked me the question about the publication.  Your Honours, his Honour deals with publication at page 89 of the book, and says with respect rightly in 145, “Immediately upon registration” the work is published.  Now, that may well be first publication under the Act and therefore 177 would apply and the consequence is in a sort of a cascade that the copyright only loses the copyright totally.  The way out of that that I respectfully submit is unsatisfactory is to say in 148, that is not a problem because the:

Relevant Plan must have been provided by the surveyor to the owner of the land for signature.  That was a publication.

I admit that it was our fallback position but I respectfully submit now that that is an unsatisfactory way around that problem when built in within 183 there is a deeming provision that 177 does not take the right away.  Your Honours, the other question that we would propound which I will accept would not be entitled to special leave separately but, I submit, is significant is the question of substantial part and, your Honours, that is dealt with briefly in paragraphs 165 and 166 of the judgment at page 94.

The error of law, we respectfully submit, that that is there is this.  Of course, reproduction of a substantial part is usually a factual question in comparison with the two works, but their Honours appear to elevate the absence of the information from the plan to almost a principle of law, and I get that in 165, your Honours, about line 45:

while that pattern can be seen to be generally the same –

I will show your Honours the pattern quickly –

there is vastly more information in the Oxley Plan itself than can be seen in –

what we say is the copy –

does not contain lot numbers, bearings, distances or reference to survey marks.  It cannot be said to be a substantial reproduction of the Oxley Plan.

And 166 proceeds on the same lines, but the information is essential content of the plan:

Without that information, there is no Survey Plan and, a fortiori, there can be no registered plan.  Mere reproduction of the shapes  of the polygons of the lots in  Survey Plan without that information is not a substantial reproduction of a registered plan.

And, your Honours, just finally, the plans can be seen at the bottom of page 100 where there is our plan, so to speak, enlarged and editing and on the right-hand side is the alleged copy.  May it please the Court.

HAYNE J:   Yes, thank you, Mr Catterns.  Yes, Mr Yates.

MR YATES:   Your Honours, there can be no doubt that the purpose for the creation of these plans and their lodgement was to obtain registration and therefore to satisfy the legal requirements of certainly New South Wales legislation. 

HAYNE J:   Question 5 was cast in terms of entitlement.  What is the force of that word “entitled” to a licence?  Is the finding about implied licence one that sits all that comfortably with the notion of entitlement?

MR YATES:   Your Honours, we submit that not too much can be read into the word “entitled”.  It is really seeking to signify whether or not there was a licence which the State had the benefit of in relation to ‑ ‑ ‑

HAYNE J:   I can understand that question, does the State have a licence.  Answer, the State has an implied licence because these papers were filed, these works were filed for known and accepted purposes.

MR YATES:   That is so, your Honour.

HAYNE J:   And that is how the question and answer are to be understood, is that right?

MR YATES:   We would submit that is so, your Honour.  As I have endeavoured to indicate to your Honour, not too much can be read into the word “entitlement”.  It is simply whether the State had a licence.  My learned friend has signified his agreement to that.

HAYNE J:   Yes.

MR YATES:   So these plans upon registration were to satisfy the legal requirements for subdividing land, to incorporate the relevant parcels into the Cadastral records and to provide a publicly accessible record.

CRENNAN J: What about Mr Catterns’ point that an implied licence could never arise in the circumstances where you have the 1998 amendments for the section 183 statutory scheme?

MR YATES:   Yes, we say that that is, with respect, in error.  He seeks to put that in two ways, as we understand it.  He says there is no need to imply as a matter of fact because subsection 183(1) was there, but that overlooks the point that subsection 183(1) is an exception but one which provides for the State to pay for the use of the plans and that is a significant matter.

Your Honours, the question is not so much whether the State can bring itself within one of the exceptions that apply in the Copyright Act, and your Honours know there are many exceptions to copyright infringement.  The real question is, was there a licence in the first place?  Now, to put the matter in the way that our learned friend does just simply ignores the reality of the reason for the creation and lodgement of the plans in the first place.

As to the question of remuneration, although not expressly dealt with by the Full Court, the stated facts upon which the Full Court proceeded dealt with the question of remuneration at page 10 of the application book in paragraph 21.  But the stated fact was that:

In relation to the preparation of plans that are to be registered as Registered Plans, surveyors typically charge on a basis that is fair and reasonable for the work involved and reflects . . . 

(d)the work done in undertaking the physical act of survey and producing the Survey Plan for the creation of land titles;

(e)the onerous responsibility for results of the calculations undertaken in the physical act of survey and producing the Survey Plan, which must have a certain integrity and accuracy because others will be relying on the data plotted in the registered plan.

So that we submit that the issue of remuneration is dealt with upfront between the surveyor and the client who commissions the plan and so it would be an error, in our respectful submission, to view this matter as one where in fact surveyors had been, as it were, unfairly or unreasonably or not remunerated for the work that is done in relation to the creation of these very plans which are to be lodged for registration and used and to form part of the public record.

The other way in which our learned friend puts the submission is that the implication of a licence is inconsistent with the express provisions of the Act.

HAYNE J:   Let us not get hooked up on inconsistent, repugnant or which term is used.

MR YATES:   If your Honour pleases.

HAYNE J:   I understand the forensic force of your use of the point, but there is a statutory set of provisions which lead to financial consequences.  You say, do you, that you sit apart from that statutory scheme?

MR YATES:   We do, your Honour, as Justice ‑ ‑ ‑

HAYNE J:   Why would one reach the conclusion that with an elaborated statutory set of provisions directed to financial outcomes, amongst other things, that you should identify a factual foundation for a free licence?

MR YATES: Your Honours, the provisions in section 183 are like other exception provisions in the Act, and the way in which we have put it in our written submissions and which we put today is that subsection 36(1) is in fact the defining provision. It identifies and defines the state of affairs that constitutes an infringement of copyright, and in that sense it is pivotal, and from that section the other sections of the Act hang off, for example, exceptions relating to fair dealing and other such exceptions, and indeed the exception which is specifically provided in this case relevantly to the State.

So section 183, like the many other exceptions provided in the copyright law, proceeds on the basis that the particular conduct with which it is concerned would be infringing conduct as defined by the Act. So logically one must first consider whether the conduct is infringing conduct according to the Act, and that drives one to subsection 36(1) where one sees that it would only be an infringement if in fact it were done without the licence of the copyright owner.

Here the parties are in screaming agreement that the facts of the creation of the plan and its lodgement and the nature of the whole process, including the fact that the surveyors themselves are an integral part of this process because only registered surveyors can create these kinds of plans, that whole process is one where clearly the permission has been given to use the plan in the ways referred to in the Full Court’s reasons.  So that on that basis one sees right at the threshold at subsection 36(1) that in fact the conduct in question is not infringing conduct, and one does not need to move on to consider what other exceptions may exist in relation to that conduct, whether it be the Crown or not.  So, your Honours, the argument we say that our learned friend advances just fails in limine because one must go to section 36(1) which is the defining provision in relation to the acts in question as to whether they are infringements.

Now, your Honours, as to the question involving reproduction, the applicant frankly accepts that this essentially involves a question of fact and judgment.  It is important to bear in mind, in our respectful submission, the essential nature of the survey plan that is to be registered as a registered plan.  That essential nature is identified at page 67 of the application book in paragraph 58 of Justice Emmett’s judgment.  His Honour said, and in conformity with the stated facts, that:

Survey Plans relate the position of the subject land to survey marks on the surface of the Earth, by indicating, on the plan, bearings and distances from identified survey marks that define the land.  To that extent, a Survey Plan is directly linked to a physical parcel of land.

Now, your Honours, that proposition cannot be overstated.  The essential nature of a survey plan is that it, with a high degree of specificity, relates a parcel of land to a specific part on the earth’s surface.

Other matters to bear in mind in this regard are that survey plans of the kind in question that are to be registered and are registered as registered plans can only include information that is prescribed under the relevant legislation.  The third matter to bear in mind is that the graticule presentation of these plans must conform to strict requirements, and some of these are set out at pages 62 to 63 of the application book.  Your Honours will see the various dot points appended to paragraph 46 of Justice Emmett’s reasons.

Now, all of those considerations converge to indicate that a survey plan that is to be registered as a registered plan has a number of attributes which give it its essential qualities as an artistic work for copyright purposes.  On the other hand, the digital cadastral database, which is the digital form in which information is stored, can produce an index of land.  That index is provided by a graphical representation of polygons to indicate lots.

Now, there is no doubt that the DCDB is an essential part of the State’s cadastral records, but it is not a collection of registered plans, it is not a collection of surveys, still less is its survey accurate.  Indeed, when it is updated any information that might be taken from a registered plan for that purpose is made to fit in with the digital cadastral database and not the other way around, so the database is not adjusted to fit the survey information because that information is made to fit in to the digital cadastral database.

So the polygons which can be produced have none of the essential features of a survey plan.  There are no survey marks, there are no bearings and distances, the polygons cannot be related to any particular precise place on the surface of the earth, and for that reason the polygons which can be produced as an indexing tool for the State plainly fail to constitute a reproduction of the essential features of any particular artistic work that is a survey plan.

So we submit that the Full Court on that evidence was plainly entitled to come to the conclusion that it did, that there was no reproduction of a substantial part of the particular registered plans in question.  They arrived at that determination, invoking principles of copyright law which cannot be in dispute.  It involved matters of assessment of fact and degree.  It was a conclusion which the Full Court was perfectly entitled to come to, it was open to it, and we would submit it was plainly correct, and certainly no special leave question arises in that regard.

We would also submit that no special leave question arises in relation to the licence issue as well because simply the Act is plain in the way it speaks as to the pivotal operation of subsection 36(1).  If your Honours please.

HAYNE J:   Thank you.  Yes, Mr Catterns.

MR CATTERNS:   Very briefly, your Honours. In case I may have misspoke, your Honours, section 183 itself has been there since 1968, and indeed the Court quotes from the Spicer Committee in paragraph 135. It is those new provisions dealing with collecting societies that came in ‑ ‑ ‑

CRENNAN J:   Came in with the collecting societies in 1998.

MR CATTERNS:   Yes, your Honour.  We submit there is no question about unfair remuneration when the surveyor makes the plan.  This is like many cases in developing copyright law, this is a new use in part, and the question is where it fits.  Of course, some of the plans will have been lodged before the present online uses.

Finally, your Honours, on our friend’s section 36(1) point, the question is not whether there is an infringement, the question is whether there is an implied licence, and we are happy to ask that question first, but in answering the question of whether there is an implied licence one looks at the circumstances and they include the availability of the 183.  May it please the Court.

HAYNE J:   Yes, thank you.  We will adjourn to consider the course we will take in this matter.

AT 11.08 AM SHORT ADJOURNMENT

UPON RESUMING AT 11.13 AM:

HAYNE J:   There will be a grant of special leave in this matter.  Mr Catterns, your draft notice of appeal at 118 and following, there are two matters.  First, the grant will be confined to the issues other than substantial reproduction.

MR CATTERNS:   May it please the Court.

HAYNE J:   The second point is grounds (a) to (g), which seem to me to be the ones that principally raise the central issue, are rather discursive.

MR CATTERNS:   And repetitive, your Honour, yes.

HAYNE J:   Far be it for me to say they are repetitive, Mr Catterns, but it seemed to me that (d) was the nub of the point.  You may have leave to revisit the notice of appeal.

MR CATTERNS:   Thank you, your Honour.

HAYNE J:   It would be better if it were a little more briefly.

MR CATTERNS:   Your Honour, I take the blame and we will focus on today’s question.

HAYNE J:   I was not asking you for a full confession, Mr Catterns.

MR CATTERNS:   May it please the Court.

HAYNE J:   Yes.  Now, duration of the case, counsel would say what?

MR CATTERNS:   Less than half a day, your Honour, particularly with the reproduction in the material form, which is a potential part - certainly within half a day.

HAYNE J:   If we said half a day I think it might be safer, Mr Catterns.

MR CATTERNS:   Yes, your Honour.

HAYNE J:   Yes.  The Court will adjourn to reconstitute.

AT 11.15 AM THE MATTER WAS CONCLUDED