Copyright Agency Limited v University of Adelaide

[2000] ACopyT 2

COPYRIGHT TRIBUNAL OF AUSTRALIA

Copyright Agency Limited v University of Adelaide [2000] ACopyT 2

COPYRIGHT TRIBUNAL – interim order – injunction – applicable principles

Copyright Act 1968 (Cth) s 160

American Cyanamid Co v Ethicon Ltd [1975] AC 396
Copyright Agency Limited v University of Adelaide (1999) 42 IPR 529
Copyright AgencyLimited v University of Adelaide (1999) 45 IPR 383
Minister forAboriginal Affairs v Peko-Wallsend Ltd (1986) 162 CLR 24

COPYRIGHT AGENCY LIMITED v UNIVERSITY OF ADELAIDE and others

CT 4 of 1997

FINKELSTEIN DP

MELBOURNE

31 MARCH 2000

COMMONWEALTH OF AUSTRALIA
COPYRIGHT ACT 1968

IN THE COPYRIGHT TRIBUNAL	CT 4 of 1997
BETWEEN:	COPYRIGHT AGENCY LIMITED Applicant
AND:	UNIVERSITY OF ADELAIDE, AUSTRALIAN NATIONAL UNIVERSITY, AUSTRALIAN CATHOLIC UNIVERSITY, UNIVERSITY OF BALLARAT, BOND UNIVERSITY, UNIVERSITY OF CANBERRA, CENTRAL QUEENSLAND UNIVERSITY, CHARLES STURT UNIVERSITY, CURTIN UNIVERSITY OF TECHNOLOGY, DEAKIN UNIVERSITY, EDITH COWAN UNIVERSITY, THE FLINDERS UNIVERSITY OF SOUTH AUSTRALIA, GRIFFITH UNIVERSITY, JAMES COOK UNIVERSITY OF NORTH QUEENSLAND, LA TROBE UNIVERSITY, MACQUARIE UNIVERSITY, THE UNIVERSITY OF MELBOURNE, MONASH UNIVERSITY, MURDOCH UNIVERSITY, THE UNIVERSITY OF NEW ENGLAND, UNIVERSITY OF NEW SOUTH WALES, THE UNIVERSITY OF NEWCASTLE, NORTHERN TERRITORY UNIVERSITY, THE UNIVERSITY OF QUEENSLAND, QUEENSLAND UNIVERSITY OF TECHNOLOGY, ROYAL MELBOURNE INSTITUTE OF TECHNOLOGY LIMITED, SOUTHERN CROSS UNIVERSITY, SWINBURNE UNIVERSITY OF TECHNOLOGY, THE UNIVERSITY OF SYDNEY, UNIVERSITY OF TASMANIA, UNIVERSITY OF SOUTHERN QUEENSLAND, UNIVERSITY OF SOUTH AUSTRALIA, UNIVERSITY OF TECHNOLOGY - SYDNEY, VICTORIA UNIVERSITY OF TECHNOLOGY, THE UNIVERSITY OF WESTERN AUSTRALIA, UNIVERSITY OF WESTERN SYDNEY, UNIVERSITY OF WOLLONGONG Respondents
TRIBUNAL:	FINKELSTEIN DP
PLACE:	MELBOURNE
DATE:	31 MARCH 2000

REASONS FOR DECISION

FINKELSTEIN DP

1. There is before the Tribunal an as yet unresolved application by Copyright Agency Limited (CAL) to finalise an interim sampling system following the service by a number of universities (37 in all) of sampling notices under s 135ZW of the CopyrightAct 1968 (Cth). The notices relate to articles and literary, musical and artistic works that are reproduced by the universities.

2. On 2 February 1999, the Tribunal, constituted by Burchett P, fixed the amount of equitable remuneration payable by the universities in respect of the reproduction of copyright works:  Copyright Agency Ltd v University of Adelaide (1999) 42 IPR 529. On 27 August 1999 the Tribunal, again constituted by its President, made certain orders and answered certain questions regarding the establishment of an interim sampling system so that the equitable remuneration can be calculated: Copyright AgencyLtd v University of Adelaide (1999) 45 IPR 383. One matter determined by the Tribunal was that the system devised by A C Nielson and described as Nielson model 2 should form the basis of the sampling system. However, aspects of the model required modification to accommodate what had been said by the President in the course of his reasons for decision and also to deal with certain matters that had not been fully covered by the model.

3. For some time the parties have been seeking to reach agreement on the final form of the sampling system.  Many matters have been agreed, but some are still outstanding.  One issue that remains unresolved is the method of processing the data that is presently being collected under the sampling system.  As no agreement has been reached the Tribunal will determine that matter at a hearing on 15 May 2000. 

4. What brings the parties before the Tribunal on this occasion is that the universities seek an order that CAL should not process the information provided to it until all aspects of the sampling system have been agreed or determined by the Tribunal.  They also seek a ruling on whether the Tribunal has power to determine the manner in which the collected data is to be processed.  This issue has arisen because, in the course of discussions between the parties, CAL suggested that the Tribunal did not have jurisdiction to deal with the matter because, so it was said, the processing of the collected data does not form part of a sampling system.  Now, CAL does not persist with this suggestion.  What it does say is that when the matter is heard in May 2000, it will contend that, as a matter of discretion, the Tribunal should not determine how the data is to be processed.  Notwithstanding that it is no longer an issue between the parties, I think that it appropriate to express my views on this matter.

5. Part VB of the Copyright Act permits compulsory licensing in respect of copyright. Certain institutions, including educational institutions, are entitled to reproduce copyright material upon payment of equitable remuneration to a collecting society (such as CAL) acting on behalf of the copyright owners. Equitable remuneration is payable in respect of “licensed copies made by or on behalf of” the licensee: s 135ZW(2). The number of licensed copies in respect of which equitable remuneration is payable can be ascertained by one of two means: first, by determining the actual number of copies made; second, by a process of estimation based on a system of sampling: s 135ZW(3). Pursuant to the Copyright Act, the parties may agree upon an appropriate sampling system.  If the parties do not agree, then the system shall be determined by the Tribunal.

6. The Act does not define what constitutes a sampling system.  Thus the content of the system must be ascertained by reference to the object for which the sampling system is to be established.  That object is to create a method by which a statistically valid conclusion can be reached as to the quantity and nature of copying that has taken place so that it is possible to calculate the remuneration to be paid.  To satisfy this object the system must have at least three principal aspects:  (a) it must specify the type of information that is to be obtained from the licensee; (b) it must establish procedures for the collection of that information; and (c) it must set up a process for the analysis of that information. 

7. I can now deal with the universities’ application that CAL be restrained from processing data that is currently being collected.  First it is necessary to consider the circumstances in which interim relief in the nature of an injunction will be granted.  (I will assume, without deciding, that there is power to grant such relief).

8. The source of the power to grant interim relief is s 160 which provides that:

   “Where an application or reference is made to the Tribunal under this Act, the Tribunal may make an interim order having effect until the final decision of the Tribunal on the application or reference.”

   The discretion that is conferred by the section is unconfined.  Accordingly, the factors to be taken into account in the exercise of the discretion conferred upon the Tribunal are similarly unconfined, except to the extent that they may be found in the scope and purpose of the statute:  Minister forAboriginal Affairs v Peko-Wallsend Ltd (1986) 162 CLR 24 at 40 per Mason J.

9. In this connection, I would not regard as directly applicable to the task of the Tribunal, the considerations that must be taken into account by a court of law when determining whether to grant or withhold the grant of similar relief.  Even there, I discern an ever-increasing tendency to avoid general statements of principle in deciding whether to grant interlocutory relief.  The importance of flexibility is evident and cannot be overstated where a court is asked to make a drastic order without the benefit of a full trial.  So it is in proceedings before the Tribunal.

10. This is not to say that the list of factors taken into account by a court (relative strengths of the case, irreparable harm, balance of convenience, preservation of the status quo and the like) are to be ignored.  When applicable, they are factors that can be taken into account by the Tribunal.  The task of the Tribunal is to decide whether it is reasonable and appropriate to grant interim relief.  If, in arriving at its decision, the Tribunal would be aided by a consideration of the factors that influence a court, then those matters can be taken into account.  But the principles which bind a court do not bind the Tribunal.  The Tribunal does not exercise judicial power and is not to be restricted in its consideration of a case as a court may be. 

11. The universities seek the interim order for a number of reasons.  Difficult or borderline issues of classification will often arise in the processing of information.  Unless a proper method of dealing with this circumstance is agreed or resolved by the Tribunal, there is a risk of error.  Further, when there is ambiguity regarding information that has been collected, it will often be necessary for CAL to contact staff at the university where sampling is taking place to clarify the position.  Unless this contact takes place in accordance with a carefully prepared protocol, confusion may result.  There is also a question of security.  If the data that is collected is not securely maintained, when a method of processing is ultimately determined it may not be possible to properly calculate the number of licensed copies that have been made.

12. Recognising some of these problems, CAL has proffered an undertaking the practical effect of which is that it will retain the collected data in secure premises, preserve that data and provide copies to the universities upon request.

13. Having made the point that the Tribunal should automatically not take account of the factors that a court must consider when deciding an application for an interlocutory injunction, I propose to refuse this present application for interim relief because of the following considerations:

    (1)I do not think that in any relevant respect the universities’ rights will be significantly impaired if the relief that they seek is withheld.  That is to say, the universities will not suffer “irreparable harm”, to adopt a phrase familiar in equity jurisprudence, if the order is refused. 

    (2)Any harm that the universities might otherwise suffer is adequately dealt with by the undertaking proffered by CAL which it should give in order to avoid the grant of interim relief.

    (3)Accepting that it is “a counsel of prudence to … preserve the status quo” (American Cyanamid Co v Ethicon Ltd [1975] AC 396 at 408 per Lord Diplock), that status will not be altered dramatically by permitting CAL to process the data. I was informed that the parties have reached agreement as regards the equitable remuneration to be paid by the universities over the next three years. Accordingly, whatever information is produced when the data is processed will not affect the remuneration that is payable.

    (4)Following on from this last point, I am concerned that the parties are seeking to have the Tribunal determine an interim sampling system when it appears that such a system is no longer necessary.

14. These are the reasons why I would refuse to make a restraining order.  The parties should bring in short minutes of orders to provide for directions in relation to the hearing of the interim determination of the data processing procedures that is to take place on 15 May 2000.

I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Decision herein of the Copyright Tribunal constituted by Finkelstein DP

Associate to the Deputy President:

Dated:  31 March 2000

Counsel for the Applicant:	Mr D Catterns QC
Solicitors for the Applicant:	Banki Haddock Fiora
Counsel for the Respondents:	Mr R Cobden
Solicitors for the Respondents:	Baker & McKenzie
Dates of Hearing:	20 March 2000
Date of Decision:	31 March 2000