De Garis v Neville Jeffress Pidler Pty Ltd

[1990] FCA 352

Re: BRIAN KELVIN DE GARIS and MATTHEW MOORE
And: NEVILLE JEFFRESS PIDLER PTY LIMITED
No. G1319 of 1988
FED No. 352
Copyright
18 IPR 292
(1991) 20 IPR 605
(1990) 37 FCR 99

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Beaumont J.(1)

CATCHWORDS

Copyright - articles in newspapers reproduced by press-clipping service - one article written on commission - other articles written by journalist under contract of service - ownership of relevant copyright under Copyright Act 1968, s.35(4) - whether infringement by reproduction - whether statutory defences (ss.40, 41 or 42) available - whether implied licence to reproduce - whether publication in a newspaper.

HEARING

SYDNEY

#DATE 6:7:1990

Counsel and Solicitors D.K. Catterns and
for applicants: A.H. Bowne instructed by Phillips Fox

Counsel and Solicitors R.V. Gyles QC and
for respondent: M.R. Ellicott instructed by

Mallesons Stephen Jaques

ORDER

Order that the respondent be restrained from reproducing the work of the first applicant entitled "Looking Past the Winners" without the licence of the first applicant.

Reserve liberty to the first applicant to apply for further relief on seven days' notice.

Order that the respondent be restrained from reproducing the works of the second applicant entitled -

"Minesweep or Two Keeps the Factions at Bay" "Development Fund Call Renewed"

"Unions Call for ID Card Review"

without the licence of the second applicant.

Reserve liberty to the second applicant to apply for further relief on seven days' notice.

Order that the respondent pay the applicants' costs.

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

JUDGE1

These are proceedings seeking declaratory and injunctive relief in respect of alleged infringements of copyright.

1. The two applicants, Brian Kelvin de Garis and Matthew Moore, were authors of articles published in "The West Australian" and "Sydney Morning Herald" newspapers respectively. Mr de Garis' work was supplied pursuant to a contract of services, whereas Mr Moore's work was provided under a contract of service, in the course of his employment as a journalist with John Fairfax and Sons Limited, the proprietor of the Sydney Morning Herald. The applicants claim that the respondent, Neville Jeffress Pidler Pty. Limited ("Jeffress") has infringed the copyright in their respective works in the course of carrying on its business as a pressclipping service. Jeffress "monitors" newspapers and other media for "subjects" required by a subscriber to the service and provides a photocopy of the material requested, together with a statement of the source of the material, in return for a fee.

2. (It should be noted that, although the matter was raised in the course of argument, none of the parties suggested that the proprietors of the newspapers in which the articles were published, should be joined as parties to these proceedings.)

3. Although the claims of Mr de Garis and Mr Moore are independently made, some common questions arise and it was appropriate that both claims be combined in a single proceeding. It is convenient to deal first with the claims of Mr de Garis.
   A. The proceedings brought by Mr de Garis

4. Although there is no dispute as to the primary facts in Mr de Garis' matter, the legal issues which arise are complex and it will be convenient to deal with his matter in separate stages.
   The claims made by Mr de Garis

5. By his further amended statement of claim, Mr de Garis alleges that he is the author and owner of the copyright in a literary work "Looking Past the Winners" published in "The West Australian" on 10 September 1988. He claims that Jeffress infringed his copyright by reproducing the work in a material form in Australia. The infringement is said to be constituted by the reproduction in a material form, without his licence, of the work for the purpose of publishing it to subscribers to the press-clipping service. Mr de Garis seeks a declaration of infringement, an injunction restraining future reproduction without his licence, and consequential orders.
   The defences pleaded

6. By its further amended defence, in denying the entitlement of Mr de Garis to the relief sought, Jeffress denies
   

(1) that the de Garis work is a literary work and that copyright subsists in it;

(2) that Mr de Garis is the author of, or is the owner of the copyright in, the de Garis work;

(3) that it has reproduced the de Garis work without the licence of Mr de Garis; and

(4) that any licence was required to reproduce the work in any event.

1. In the alternative, Jeffress then contends that
   

(1) its conduct constituted a fair dealing for the purpose of research or study within the meaning of s.40 of the Copyright Act 1968 ("the Act");

(2) there was a fair dealing for the purpose of criticism or review, and a sufficient acknowledgment of the work within the meaning of s.41 of the Act; and

(3) there was a fair dealing for the purpose of, or associated with, the reporting of news in a newspaper, and a sufficient acknowledgment of the work within the meaning of s.42(1) of the Act.

(4) a licence to reproduce the de Garis work should be implied from the provision of the work to the proprietor of the newspaper in which it appeared and from the fact that the work appeared in the newspaper, copies of which were sold or supplied to the public.

The evidence in Mr de Garis' matter

1. Mr de Garis is a member of the academic staff of the Department of History of the University of Western Australia and is resident in Australia. He is asked by the proprietor of "The West Australian" newspaper to review history books from time to time. In September 1988, the Features Editor of "The West Australian" asked him to review three named books. Subsequently, Mr de Garis wrote an article entitled "Looking Past the Winners" reviewing these books. A copy of the original typescript draft of the article is annexure "A" to these reasons. The article was published in the edition of "The West Australian" dated 10 September 1988 in the form in annexure "B" to these reasons.

2. In his affidavit, sworn on 30 March 1989, Michael Roland Hall, a law clerk employed by the solicitors for the applicants, says that in August 1988 he requested Jeffress, for an agreed fee, to supply him from time to time with copies of book reviews and other articles about books and authors from the arts pages of metropolitan newspapers across Australia. No specific articles were requested. Thereafter, Mr Hall received from Jeffress copies of articles from Australian newspapers. In about the middle of September 1988, Mr Hall received from Jeffress a photocopy of Mr de Garis' article (annexure "B") having at the top of the photocopy the statement:
   

"The West Australian

Perth W.A.

Date 10 September 1988

Neville Jeffress Pidler Pty. Ltd...."

1. Jeffress did not call evidence, but the applicants tendered an order form of Jeffress as follows:
   

(ORDER FORM OMITTED)

1. I turn now to the legal questions which arise.
   The ownership of the relevant copyright

2. The legislative scheme, so far as presently material, is as follows:
   

3. By s.32(1), it is provided that, subject to the Act, copyright subsists in an original literary work that is unpublished and of which the author was a qualified person at the time when the work was made. By s.32(4), a "qualified person" includes a person resident in Australia. By s.22(1), a literary work is "made" when it is first reduced to writing or some other material form. By s.32(2), it is provided that, subject to the Act, where an original literary work has been published, if copyright in the work subsisted immediately before its first publication, copyright continues to subsist in the work if the first publication of the work took place in Australia. By s.29(1)(a), subject to that section, for the purposes of the Act, a literary work shall be deemed to have been published if reproductions of the work have been supplied, whether by sale or otherwise, to the public.

4. By s.35(2), subject to that section, the author of a literary work is the owner of any copyright subsisting in the work by virtue of Part III of the Act.

5. It is not, and could not be, seriously disputed, that Mr de Garis is the author of an original literary work being the article now in question. It follows, in my opinion, that Mr de Garis was the owner of the copyright in the literary work, being the unpublished article (annexure "A"). Upon publication of the article (annexure "B"), copyright continued to subsist in the article and Mr de Garis is the owner of copyright in that work.

6. The provisions of both s.35(4) and s.35(6), to which reference will be made later in considering Mr Moore's claim, cannot apply here since Mr de Garis was a "contributor" or "freelance" writer and was not employed by the proprietor of "The West Australian" under a contract of service (see Hexagon Pty. Ltd. v. Australian Broadcasting Commission (1975) 7 ALR 233 at p 257; Walker, The Law of Journalism in Australia at p 338; Halsbury's Laws of England, 4th ed. at p 715, para.1958).

7. Although the proprietor of the newspaper may have commissioned the work, since the contract was one for the provision of services, (other than in respect of a photograph, a portrait or an engraving - see s.35(5) of the Act) the newspaper proprietor does not acquire the copyright in the work at law (see Copinger and Skone James on Copyright, 12th ed. at p 130, para.342; cf. Beloff v. Pressdram Limited (1973) RPC 765 at pp 772-6). Nor, in my view, under an "open" contract of the present kind is there any basis for holding that the newspaper proprietor was entitled to the copyright in equity (see Copinger and Skone James at p 139, para.369; cf. University of London Press Limited v. University Tutorial Press, Ltd. (1916) 2 Ch 601 at p 612).
   The relevant nature of the copyright

8. By s.31(1)(a), in the case of a literary work, copyright is the exclusive right, inter alia, to reproduce the work in a material form.
   Infringement

9. By s.36(1), subject to the Act, the copyright in a literary work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner, does in Australia any act comprised in the copyright.

10. In the present case, in my opinion, Jeffress has reproduced the work in a material form. The real question is whether that reproduction may be characterised as one of the acts defined in ss.40, 41 or 42 as not constituting an infringement, or, if not, whether Mr de Garis has, by implication, licensed the reproduction of the work. It is convenient to deal with these issues separately.
    Section 40 - fair dealing for the purpose of research or study

11. The material provisions of s.40 are as follows. A fair dealing with a literary work for the purpose of research or study does not constitute an infringement of the copyright of the work (s.40(1)). In determining whether a dealing by way of copying the whole or part of the work constitutes a fair dealing, regard shall be had to: (a) the purpose and character of the dealing; (b) the nature of the work; (c) the possibility of obtaining the work within a reasonable time at an ordinary commercial price; (d) the effect of the dealing upon the potential market for, or value of, the work; and (e) in the case where part only of the work is copied - the amount and substantiality of the part copied taken in relation to the whole work (s.40(2)). Notwithstanding s.40(2), a dealing with a literary work by way of copying, for the purposes of research or study, of not more than a "reasonable portion" of the work (as defined in s.10(2)) shall be taken to be a fair dealing (s.40(3)).

12. Can it be said that the Jeffress' dealing with the work (assuming, for the moment, without deciding, that the dealing is "fair") is done by Jeffress "for the purpose of research" within the meaning of s.40(1)?

13. It will be recalled that Jeffress did not call any evidence. There is no direct evidence of the actual method of operation of the "press-clipping and media research bureau" (as it is stated in the order form), but it is, I think, reasonable to infer that Jeffress has established an effective method of retrieval of material published in newspapers by reference to subject matter. Is this "research" within the meaning of s.40?

14. According to the Macquarie Dictionary, "research" may be defined as -
    

"1. diligent and systematic enquiry or investigation into a subject in order to discover facts or principles: research in nuclear physics..."

1. In my view, "research" in s.40 is intended to have this dictionary meaning.

2. In my opinion, Jeffress' dealing with the work is not something done for the purpose of research. Although the retrieval of the material may be a complicated exercise, it does not follow that the purpose of Jeffress is research. Its purpose, which is purely commercial , is to supply a photocopy of material already published in return for a fee. This is an activity engaged in by Jeffress in the ordinary course of trade, which, in my view, is in the nature of an information audit and should be distinguished from research activity of the kind contemplated by s.40 (see Attorney-General of British Columbia v. Messier (1984) 8 DLR (4th) 306).

3. There is another reason why s.40 cannot apply here. The relevant purpose required by s.40(1) is that of Jeffress, not that of its customer. That is to say, even if a customer were engaged in research, this would not assist Jeffress. In Sillitoe v. McGraw-Hill Book Company (U.K.) Ltd. (1983) FSR 545, Judge Mervyn Davies said (at p 558):
   

"The onus of showing that an exception applies is on the defendants. Mr Jeffs contended that section 6(1) is widely drawn and not limited to the actual student, so that if a dealing is fair and for the purposes of private study the subsection applies whether the private study in mind is one's own or that of somebody else. Here, he said, the dealing was for the purpose of private study by the examinees who would acquire the notes. I do not accept that argument. To my mind section 6(1) authorises what would otherwise be an infringement if one is engaged in private study or research. The authors of the Notes, when writing the Notes and thus 'dealing' with the original work, were not engaged in private study or research. To my mind University of London Press Ltd v. University Tutorial Press Ltd. (1916) 2 Ch 601 at 613, affords some support for this view."

1. In the University of London Case, above, Peterson J. said (at p 613):
   

"The defendants on these facts contend that their publication of the three papers set by Professor Lodge and Mr. Jackson is a fair dealing with them for the purposes of private study within s.2, sub-s. 1, of the Act of 1911, and is therefore not an infringement of copyright. It could not be contended that the mere republication of a copyright work was a 'fair dealing' because it was intended for purposes of private study; nor, if an author produced a book of questions for the use of students, could another person with impunity republish the book with the answers to the questions. Neither case would, in my judgment, come within the description of 'fair dealing.' In the present case the paper on more advanced mathematics has been taken without any attempt at providing solutions for the questions, and the only way in which the defendants have dealt with this paper is by appropriating it, except that there are eleven lines of criticism of it, dividing the questions into easy, troublesome, and difficult questions."

1. It follows, in my view, that the activities of Jeffress cannot be characterised as "research" for the purposes of s.40.

2. Is the dealing done for the purpose of "study"?

3. The Macquarie definitions of the noun "study" include the following:
   

"1. application of the mind to the acquisition of knowledge, as by reading, investigation or reflection. 2. the cultivation of a particular branch of learning, science, or art: The study of law. 3. A particular course of effort to acquire knowledge: to pursue special medical studies. ... 5. a thorough examination and analysis of a particular subject..."

1. In my view, "study", where used in s.40 is intended to have this dictionary meaning. In Messier's Case, above, the question for determination before the Court was whether a "nursing audit committee" was relevantly a "research group" for the purposes of the Evidence Act RSBC 1979. If it was, then a report of the committee would attract an evidentiary privilege under the legislation. After citing the dictionary definition of "research", "study", "inquiry" and "investigation", MacKinnon J. pointed out the dichotomy between the process of gathering facts, on the one hand, and conducting a course of study or research, on the other.

2. Again, even if "study", were the purpose for which a subscriber retained the services of Jeffress, it cannot be said that "study" was the purpose of Jeffress.

3. It follows, in my view, that s.40 has no application in the present case.
   Section 41 - Fair dealing for the purpose of criticism or review

4. A fair dealing with a literary work does not constitute an infringement of the copyright in the work if it is for the purpose of criticism or review, whether of that work or another work, and a "sufficient acknowledgment" of the work is made (s.41). A "sufficient acknowledgment" means an acknowledgment identifying the work by its title or other description and also identifying the author (s.10(1)).

5. The origins of this defence were explained by Lord Hatherley in Chatterton v. Cave (1878) 3 App Cas 483 at p 492:
   

"Books are published with an expectation, if not a desire, that they will be criticised in reviews, and if deemed valuable that parts of them will be used as affording illustrations by way of quotation, or the like - and if the quantity taken be neither substantial nor material, if, as it has been expressed by some Judges, 'a fair use' only be made of the publication, no wrong is done and no action can be brought."

1. On the other hand, a work cannot be published under the pretence of quotation (see Mawman v. Tegg (1826) 2 Russ 385; The Commonwealth of Australia v. John Fairfax and Sons Ltd. (1980) 147 CLR 39 at pp 54-7; The Commonwealth of Australia v. Walsh (1980) 147 CLR 61 at p 63; Lahore, Copyright Law at p 7562).

2. The Macquarie definition of "criticism" includes the following:
   

"1. The act or art of analysing and judging the quality of a literary or artistic work, etc.: literary criticism. 2. The act of passing judgment as to the merits of something... 4. A critical comment, article or essay; a critique."

1. In my opinion, "criticism" in the context of s.41 is used in these senses. It has been held that criticism of any kind, and not only literary criticism, is within the provision (see Sillitoe's Case, above, at p 559).

2. The Macquarie definition of "review" includes the following:
   

"1. A critical article or report, as in a periodical, on some literary work, commonly some work of recent appearance; a critique..."

1. In my opinion, "review" is used in s.41 in this sense.

2. It would seem that the word "review" in the sense in which it is to be understood in s.41 is cognate with the word "criticism". It may be said that one is the process and the other is the result of the critical application of mental faculties. The extent of Jeffress' input, there being no material or evidence (apart from the Order Form) to support a contrary inference, appears to be limited only. The process involves scanning media for particular subjects according to the requests of subscribers. It does not appear to extend to the passing of a judgment as to the merit of the articles identified. Once an article is located which falls within the description of the nominated subject matter, the quality of that article is immaterial for the purposes of the exercise. The task undertaken is one of location rather than evaluation. This is the concern of the subscriber and will depend upon his or her particular purpose for subscribing.

1. In my view, the activities of, and service provided, by Jeffress cannot be characterised as either "criticism" or "review" for the purposes of s.41.
   Fair dealing for the purpose of reporting news - s.42

2. By s.42(1), a fair dealing with a literary work does not constitute an infringement of copyright if it is for the purpose of, or associated with, the reporting of news in a newspaper, magazine or similar periodical and a sufficient acknowledgment of the work is made.

3. It may be accepted that the "reporting of news" in this context can go beyond a report of events which are current. In John Fairfax, above, Mason J. said of s.42(1) (at p 56):
   

"I am inclined to allow that 'news', despite its context of the reporting of news 'in a newspaper, magazine or similar periodical' is not restricted to 'current events.'"

1. In Hawkes and Son (London), Limited v. Paramount Film Service, Limited (1934) 1 Ch 593, the owners of the copyright in the musical march "Colonel Bogey" sued for infringement. The defendants exhibited a "news reel" film recording a motion picture of the scene at the public opening of a new school, together with the accompanying sounds, including the playing by a band of part of "Colonel Bogey". It was held that there had been an actionable infringement; and that the playing of Colonel Bogey was not a "newspaper summary" within the meaning of the English legislation, as it then stood (see Copinger and Skone James at p 207, para.515). Romer L.J. said (at p 609):
   

"Then it is said by the defendants that they are protected by the first proviso to s.2, sub-s.1, of the Act, which enacts that amongst the acts which shall not constitute an infringement of copyright are: 'Any fair dealing with any work for the purposes of private study, research, criticism, review, or newspaper summary.' Mr. Macgillivray has asked us to hold that a cinematograph screen when displaying items of news is a newspaper within the meaning of that proviso. I see obvious difficulties in so holding. But let me assume it is a newspaper. Even then, what the defendants have done cannot be described as a fair dealing with any work for the purposes either of criticism, review, or newspaper summary. Test it in this way. The item of news with which we are dealing is the item of news that on a certain day the Prince of Wales reviewed the boys of the Naval School in question, and that they marched past him to the tune of 'Colonel Bogey.' Of course, any newspaper is entitled to say that, and that would be a summary of an item of news. The paper would also, of course, be entitled to publish a photograph of the boys marching past the Prince of Wales. But what they would not be entitled to do would be to say: 'For the benefit of those who were not able to be present, we publish the principal 28 bars of the 'Colonel Bogey' march.' That is just what the defendants have done. They have, for the benefit of those who were not present, photographed the boys marching past the Prince of Wales; and have also provided, for the people who would see that, a representation of the 'Colonel Bogey' march."

1. In Pacific and Southern Company Inc. v. Duncan 744 F 2d 1490 (1984); cert. denied, 471 US 1004 (1985), the United States Court of Appeals for the Eleventh Circuit held that a television news clipping service's unauthorised videotaping of a television station's copyrighted news feature story did not constitute fair use.

2. Johnson J. said (at p 1496):
   

"The purpose and character of TV News Clips' use of WXIA's work heavily influences our decision in this case. T.V. News Clips copies and distributes the broadcast for unabashedly commercial reasons despite the fact that its customers buy the tapes for personal use. The district court characterized TV News Clips as a 'full-fledged commercial operation.'... TV News Clips denies that its activities have a commercial purpose; instead, it says that its purpose is 'private news reporting,' meant to provide the public with a record of news reports. Of course, every commercial exchange of goods and services involves both the giving of the good or service and the taking of the purchase price. The fact that TV News Clips focuses on the giving rather than the taking cannot hide the fact that profit is its primary motive for making the exchange. This commercial nature of the use militates quite strongly against a finding of fair use, for the Supreme Court emphasized in Sony,... that a commercial purpose makes copying onto a videotape cassette 'presumptively unfair.'"

Johnson J. added (at p 1496):

"We also note that TV News Clips' use is neither productive nor creative in any way. It does not analyze the broadcast or improve it at all. Indeed, WXIA expressed concern over the technical inferiority of the tapes. TV News Clips only copies and sells. As the uses listed in the preamble to Section 107 indicate, fair uses are those that contribute in some way to the public welfare. Until recently a few courts had automatically considered unproductive or uncreative uses to be unfair.... Although the Supreme Court has rejected 'productive use' as an absolute prerequisite to a defense of fair use, it has recognized that the distinction between productive and unproductive uses could be 'helpful in calibrating the balance.'... The unproductive nature of TV News Clips' use affects the balance in this case."

(See also Georgia Television Company v. TV News Clips of Atlanta Inc. 1989 Copyright Law Decisions 22,583 and 23,002; and see William F. Patry, The Fair Use Privilege in Copyright Law at pp 143-6.)

1. As has been said, in order to justify its conduct under s.42(1), Jeffress must first establish that its activity was carried out for the purpose of, or is associated with, "the reporting of news".

2. The Macquarie definition of "news" includes:
   

"1. a report of any recent event, situation etc. 2. the report of events published in a newspaper, journal, radio, television, or any other medium. 3. information, events, etc., considered as suitable for reporting: it's very interesting, but it's not news. 4. information not previously known: that's news to me..."

1. In my opinion, the reference to the "reporting of news" in s.42(1) is intended to comprehend these matters, subject to the possible extension mentioned by Mason J. in John Fairfax, above. It follows, in my view, that the reproduction by Jeffress of the review written by Mr de Garis was not done for the purpose of the reporting of news. Nor, in my opinion, was the conduct of Jeffress "associated" with such a purpose. The work of which Mr de Garis was the author was itself a literary review. Its reproduction by Jeffress had nothing to do with the reporting of news within the meaning of s.42(1).

2. Further, the defence provided by s.42(1) is only available where the reporting is in a newspaper, magazine or similar periodical. In considering Mr Moore's claim, I deal later with the meaning of the term "newspaper" where used in s.35(4). In my view, that reasoning is applicable here also, with the consequence that, in my opinion, the reproduction by Jeffress cannot be said to be reporting in a newspaper, magazine or similar periodical.

3. In any event, Jeffress has not, in my view, established that its dealing was "fair" for the purposes of s.42(1). The notion of "fairness" in this context has been considered in a number of cases.

4. In Hubbard v. Vosper (1972) 2 QB 84, Lord Denning M.R. said (at p 94):
   

"It is impossible to define what is 'fair dealing.' It must be a question of degree. You must consider first the number and extent of the quotations and extracts. Are they altogether too many and too long to be fair? Then you must consider the use made of them. If they are used as a basis for comment, criticism or review, that may be fair dealing. If they are used to convey the same information as the author, for a rival purpose, that may be unfair. Next, you must consider the proportions. To take long extracts and attach short comments may be unfair. But, short extracts and long comments may be fair. Other considerations may come to mind also. But, after all is said and done, it must be a matter of impression. As with fair comment in the law of libel, so with fair dealing in the law of copyright. The tribunal of fact must decide..."

1. In the University of New South Wales v. Moorhouse (1975) 133 CLR 1, Gibbs C.J. said (at p 12):
   

"The principles laid down by the Act are broadly stated, by reference to such abstract concepts as 'fair dealing' (s.40) and 'reasonable portion' (s.49) and it is left to the courts to apply those principles after a detailed consideration of all the circumstances of a particular case."

1. In the present case, Jeffress took the whole of Mr de Garis' work and supplied it to its customers for its own reward in the course of a trading activity. Jeffress did not comment on the material or attempt any analysis of its content (see Duncan's Case, above). In the circumstances, the dealing cannot be said to be "fair".
   The implied licence defence

2. No express licence by Mr de Garis is relied on. But, on behalf of Jeffress, the defence pleaded is that a licence authorising Jeffress to reproduce the work in the way it does should be implied -
   

"from the provision of...the...work to the publisher...of the newspaper...in which (it) appeared and from the fact that (it) appeared in the...newspaper..., copies of which were sold or supplied to the public."

1. The onus of establishing this defence lies on Jeffress. In my opinion, it has not discharged that burden.

2. If copyright material is produced for a particular purpose, then there is an implied permission or consent or licence to use that material to carry out that purpose (see R and A Bailey and Co. Ltd. v. Boccaccio (1986) 4 NSWLR 701 at p 711). Thus, generally speaking, a freelance writer submitting material for publication impliedly licences the relevant media organisation to publish it. But if a freelance journalist submits an article to a media organisation for publication in a particular newspaper or magazine or submits a film or recording for broadcast by a particular station, a licence to publish it in another publication or to broadcast it on another station is not, ordinarily, implied (see Walker, op. cit., at p 35O).

3. In my opinion, Jeffress has not established any proper basis for the making of the implication alleged.

4. It is one thing to imply from the circumstances surrounding the relationship between Mr de Garis and the proprietor of "The West Australian" a licence to reproduce the work in that newspaper. But it is a different thing to ask the Court to imply a licence from Mr de Garis so as to permit the reproduction of his work by any commercial press-clipping service which desires to deal with it in the course of its trade.

5. In the former case, the implication is necessary to give business efficacy to the contractual relationship between Mr de Garis and a particular newspaper proprietor. Without such an implied licence, the contractual arrangement between those parties would have been ineffective. In the latter case, different considerations apply. The activities of Jeffress are separate, in ownership and commercially, and distinct in character, from the activities of the newspaper proprietor. Jeffress is not publishing a newspaper. It is retrieving, for a fee, information previously published in a newspaper. Whilst Mr de Garis has a direct, contractual relationship with the newspaper proprietor, he has no relationship of any kind with Jeffress. Although a licence to publish the work in a particular way may be necessary to make the relationship of writer and newspaper proprietor efficacious, in the case of a third party having no relationship with Mr de Garis, such as Jeffress, the implication by the Court of a licence to do what would otherwise be unlawful is not called for.

6. It may be (and Jeffress led no evidence on the point) that the provision of press clippings is now a common practice in this country. Even if the evidence had established this, it would not follow that this justified the conduct of Jeffress in reproducing the work without the permission of the owner of the copyright (see Maxwell v. Somerton (1874) 30 LT 11). In any event, the basis of the alleged implication which is pleaded does not seek to raise any general considerations of this kind.

7. On behalf of Jeffress, reliance is placed upon the decision of Jacobs J. in Beck v. Montana Constructions Pty. Ltd. (1963) 80 WN (NSW) 1578. In my view, the case is distinguishable on its facts. There, the question was whether the vendors of land were entitled to assign to their purchasers the right to use sketch plans prepared by the vendors' architect. The architect had been retained to prepare plans of a building proposed to be constructed on the land. Jacobs J. said (at p 1581):
   

"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, for instance a cartoon for a tapestry or a mosaic, 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."

1. Jacobs J. added (at p 1582):
   

"I think it is a principle which can be found to be applied in a number of cases. It relates to permission or consent to what must have been taken to have been within the contemplation of the parties at the time of the engagement. After all, it must be borne in mind that it is the engagement which brings the copyright material into existence. When that principle is applied in the present case it seems to me to be inevitable that one should conclude that the payment for sketch plans includes a permission or consent to use those sketch plans for the purpose for which they were brought into existence, namely, for the purpose of building a building in substantial accordance with them and for the purpose of preparing any necessary drawings as part of the task of building the building."

1. The general principles stated in Beck's Case are accepted. The application of those principles will depend upon the particular circumstances. For instance, in Stovin- Bradford v. Volpoint Properties Ltd. (1971) Ch 1007, a licence to use drawings and plans to a very limited extent was implied because the fee paid to the architect was only nominal (cf. Ng v. Clyde Securities Limited (1976) l NSWLR 443 at p 446). In Stovin-Bradford's Case, the licence was implied to use the drawings and plans for the purpose of obtaining planning permission but for no further purpose.

2. In the present case, there was an implied licence granted by Mr de Garis to the proprietor of "The West Australian" to publish the article in the newspaper. However, it does not follow that there should also be implied another, distinct licence in favour of Jeffress, authorising it to use the work for the purposes of its commercial press-clipping service. Unlike the situation in Stovin-Bradford's Case Jeffress did not provide any consideration, not even a nominal consideration, to Mr de Garis yet Jeffress took the work in its entirety.

3. Further, it is now well established that silence on the part of Mr de Garis as to the imposition of a restriction is not necessarily indicative of a grant of freedom from restriction (see Interstate Parcel Express Co. Pty. Ltd. v. Time-Life International (Nederlands) BV (1977) 138 CLR 534 per Jacobs J. at pp 556-7; Computer-Mate Products (Aust.) Pty. Ltd. v. Ozi-Soft Pty. Ltd. (1988) 83 ALR 492 at p 498).
   Infringement

4. It follows in my view, that Jeffress has infringed copyright.
   Relief

5. It was argued on behalf of Jeffress that an injunction should not be granted because there was no realistic threat of any future infringement. However, I am of the view, notwithstanding that the grant of an injunction is discretionary, that it is appropriate to restrain the infringement by an order in the usual form. The only evidence is that Jeffress represents to the public that it will retrieve material on subjects nominated by the subscriber. There is no suggestion that the works of the applicants will, in future, be excluded from the "monitoring". I will reserve to Mr de Garis liberty to apply for further relief, by way of damages or an account of profits.
   B. The proceedings brought by Mr Moore

6. The claims made by Mr Moore differ from those of Mr de Garis in substantial respects.
   The claims made by Mr Moore

7. By his further amended statement of claim, Mr Moore claims that he is the author and owner of the copyright in certain works in respect of its application to the reproduction and publication of the respective works, other than for the purposes of publication of the works in a newspaper, magazine or similar periodical or broadcasting; that Jeffress has, without the licence of Mr Moore, reproduced the Moore works in a material form in Australia by copying the works for the purpose of publishing the works in the "NJP News Express"; and that Jeffress has thereby infringed Mr Moore's copyright in the works. Mr Moore claims declaratory, injunctive and consequential relief.

8. The Moore works are described in the further amended statement of claim as follows:
   

"(i) 'Minesweep or Two Keeps the Factions at Bay' by Matthew Moore published in the Sydney Morning Herald on 4 September 1987;

(ii) 'Development Fund Call Renewed' by Matthew Moore published in the Sydney Morning Herald on 9 September 1987;

(iii) "Unions Call for ID Card Review" by Matthew Moore published in the Sydney Morning Herald on 11 September 1987."

The defences pleaded

1. By its further amended defence, Jeffress (1) denies that the Moore works are literary works and that copyright subsists in them; (2) denies that Mr Moore is the author of the works; (3) denies that Mr Moore is the owner of the alleged copyright in the works in respect of its application to the reproduction and publication of the respective works other than for the purposes of publication of the works in a newspaper, magazine or similar periodical or broadcasting; (4) denies the reproduction alleged; (5) denies that any licence from Mr Moore was required; (6) denies any infringement; (7) says that, if copyright subsists in the Moore works, then, by virtue of s.35(4) of the Act, the relevant owner of the copyright is the proprietor of the newspaper; (8) pleads the statutory defences provided by ss.40, 41 and 42(1) of the Act; (9) says that a licence to reproduce the works should be implied; (10) denies the entitlement of Mr Moore to the relief sought.
   The evidence in Mr Moore's claims
   (i) The contract of employment

2. Mr Moore is a journalist employed by John Fairfax and Sons Limited ("John Fairfax") as State Political Correspondent of the "Sydney Morning Herald". It is now common ground that Mr Moore's employment was negotiated orally in November 1983 when he was offered, and accepted, "a job as a cadet on the Sydney Morning Herald". Mr Moore was then informed that a letter would be sent to him. He did receive a letter from John Fairfax which is no longer available. It is also now common ground that attached to the letter was a copy of the Journalist (Metropolitan Daily Newspapers) Award 1986. The letter said nothing about questions of copyright. It is further common ground that Mr Moore is a full-time employee of John Fairfax and subject to editorial direction and control. It is also agreed, for the purposes of this litigation, that, apart from remuneration, there has been no variation of the original terms of his employment.
   (ii) Authorship of the works

1. In September 1987, in the course of his employment with John Fairfax, Mr Moore wrote the three articles already described. Copies of these articles, in the form published in the "Sydney Morning Herald", are annexures "C", "D" and "E" to these reasons respectively. At the time, Mr Moore was an Australian citizen (see s.32(4)).
   (iii) Publication of the works

2. The works were published in the editions of the "Sydney Morning Herald" dated 9 September, 4 September and 11 September 1987 respectively.
   (iv) Reproduction of the works by Jeffress

3. Jeffress acknowledges that, under the trade name "NJP News Express", it has reproduced each of the articles written by Mr Moore and published by John Fairfax. It is not suggested that this was done pursuant to any express authority of Mr Moore.
   The legal issues

4. Again it is convenient to deal with the issues in stages.
   Ownership of the relevant copyright

5. In addition to the statutory provisions described in dealing with the claims made by Mr de Garis, it is necessary, for present purposes, to refer to s.35(4) which provides, so far as presently relevant, that where a literary work is made by the author in pursuance of the terms of his employment by the proprietor of a newspaper under a contract of service and is so made for the purpose of publication in a newspaper, the proprietor is the owner of any copyright subsisting in the work insofar as the copyright relates to -
   

(a) publication of the work in any newspaper, magazine or similar periodical;

(b) broadcasting the work; or

(c) reproduction of the work for the purpose of its being so published or broadcast, but not otherwise.

1. In my opinion, the operation of this provision in the circumstances of the present case is as follows:
   

(1) Each of the articles written by Mr Moore is a "literary work".

(2) Mr Moore is the author of the works.

(3) The works were made pursuant to the terms of Mr Moore's employment under a contract of service with John Fairfax (cf. Sun Newspapers Ltd. v. Whippie (1928) 28 SR (NSW) 473 at p 478; see also Beloff's Case, above, at pp 768-776).

(4) The works were made for the purpose of publication in the "Sydney Morning Herald".

(5) It follows, in my view, that John Fairfax is the owner of the copyright in the works for the purposes (a), (b) and (c) above, but that Mr Moore is the owner of the copyright for other purposes.

The consequences of the division of the ownership of the copyright under s.35(4)

1. As has been seen, the newspaper proprietor owns the copyright insofar as it relates to publication in a newspaper. What is meant by "publication" in this context?

2. In Infabrics Ltd. v. Jaytex Ltd. (1982) AC 1, the House of Lords held that "publishing" in the context in question there meant "making public in the territory a work not previously made public" (per Lord Wilberforce at p 17; see also per Lord Scarman at p 25).

3. By s.29(1)(a) of the Act, a literary work shall be deemed to have been published if, but only if, reproductions of the work have been supplied (whether by sale or otherwise) to the public.

4. It is a moot point, which need not now be decided, whether, by virtue of the operation of s.35(4), the rights of a newspaper proprietor are limited to first publication only and do not extend to subsequent publications such as syndication to newspapers other than the first in which the work appeared (see Susan Bridge, Journalists as Copyright Owners, Copyright Bulletin, Vol. XXIII, No. 3 1989 10 at p 13). The present question is a different one. In her article, Susan Bridge goes on to say (at p 13):
   

"Rights of the journalist

The employed journalist retains copyright for all purposes other than those specifically granted to the proprietor. Owning 'the rest' enables the journalist to control and license such things as publication in book form, photocopying and clipping services, inclusion of the work in certain data-base systems, filming and probably merchandising of cartoon characters, for example on badges and tee- shirts."

1. So far as "photocopy and clipping services" are concerned, I agree. It is not necessary to express an opinion on the other activities mentioned.

2. The present question is primarily one of the correct interpretation of s.35(4)) and, in particular, the meaning of "publication of the work in any newspaper" in sub-para.(a) of that provision. In my opinion, the activities of Jeffress in providing a commercial press-clipping service cannot be described as the publication of the work in a newspaper. Nor, in my view, is Jeffress reproducing the work for that purpose (see sub-para.(c)).

3. The meanings of the words "newspaper", "magazine" and "periodical" where used in s.35(4) are to be determined according to popular usage (see Federal Commissioner of Taxation v. Thomson Australian Holdings Pty. Ltd. (1989) 87 ALR 682 per Bowen C.J. at p 684). In Deputy Federal Commissioner of Taxation v. Rotary Offset Press Pty. Ltd. (1971) 45 ALJR 518, at p 522, Gibbs J. adopted the following definition of a "newspaper":
   

"The ordinary understanding of the word 'newspaper' is, a publication containing a narrative of recent events and occurrences, published regularly at short intervals from time to time."

1. In John Fairfax and Sons Ltd. v. Deputy Commissioner of Taxation (1988) 15 NSWLR 620, it was held that colourful and glossy "flyers" or supplements which were inserted in Sunday newspapers were to be regarded as part of the newspapers. Mahoney J.A. said (at p 634):
   

"In my opinion, the advertising material was published by the companies together with the other material constituting the newspaper. It was issued together with it. It comprised the kind of material apt to be found as an integral part of a newspaper. It was material of a kind which newspaper readers were, as I think the court is entitled to know, apt to expect to find in their newspaper. In my opinion, it is proper to characterise it part of the newspaper."

1. In my view, the distribution of photocopies of selected newspaper articles does not constitute the publication of a newspaper, magazine or similar periodical for the purposes of s.35(4). The activity of providing press clippings on a commercial basis is different in character from the activity of publishing a newspaper. Nor can it be said that the monitoring service is an integral part of the publication of the newspaper in the sense explained in John Fairfax. They are distinct activities.

2. It follows, in my opinion, that Mr Moore is the owner of the relevant copyright and that, for present purposes, he is entitled to sue for any infringement.
   The statutory and other defences

3. For the reasons given in considering the claims of Mr de Garis, I am of the opinion that Jeffress has failed to establish any of the statutory or other defences raised.
   Infringement and relief

4. It also follows, in my view, that there has been an infringement by Jeffress of Mr Moore's copyright and that Jeffress should be enjoined from further infringement.
   Orders

5. I propose to make the following orders:
   1. Order that the respondent be restrained from reproducing the
   work of the first applicant entitled "Looking Past the Winners"
   without the licence of the first applicant.
   2. Reserve liberty to the first applicant to apply for further relief
   on seven days' notice.
   3. Order that the respondent be restrained from reproducing the
   works of the second applicant entitled -
   

(i) "Minesweep or Two Keeps the Factions at Bay";

(ii) "Development Fund Call Renewed"

(iii) "Unions Call for ID Card Review"

without the licence of the second applicant.

1. Reserve liberty to the second applicant to apply for further

relief on seven days' notice.

1. Order that the respondent pay the applicants' costs.