Network Ten Pty Ltd v TCN Channel Nine Pty Ltd

• Jurisdiction: Australia Federal only
• Judge: McHugh ACJ,Gummow,Hayne JJ,Kirby J.,Callinan J.
• Judgment Date: 11 March 2004
• Neutral Citation: 2004-0311 HCA A,[2004] HCA 14
• Docket Number: S150/2003
• Court: High Court
• Date: 11 March 2004

[2004] HCA 14

HIGH COURT OF AUSTRALIA

McHugh ACJ, Gummow, Kirby, Hayne AND Callinan JJ

S150/2003

Network Ten Pty Limited

Appellant

and

TCN Channel Nine Pty Limited & Ors

Respondents

Representation:

J M Ireland QC with R Cobden and C Dimitriadis for the appellant (instructed by Blake Dawson Waldron)

A J L Bannon SC with D T Kell for the respondents (instructed by Gilbert & Tobin)

Copyright Act 1968 (Cth), ss 14(1), 25(4), 87, 91, 101.

Broadcasting Services Act 1992 (Cth), ss 6(1), 14.

Network Ten Pty Limited v TCN Channel Nine Pty Limited

Copyright — Infringement — Television broadcast — Television programme broadcast by appellant contained excerpts from programmes previously broadcast by respondent — Each excerpt of brief duration — Meaning of the ‘subject matter’ of broadcast copyright — Whether each visual image capable of being observed as a separate image on a television screen and accompanying sounds is ‘a television broadcast’ in which copyright subsists — Whether a ‘substantial part’ of a television broadcast must be copied to constitute infringement.

Statutes — Construction and interpretation — Relevance of legislative history and context — Relevance of legislative history and context of similar United Kingdom statute — Copyright Act 1968 (Cth), ss 25(4), 87.

Words and phrases — ‘broadcast’, ‘television broadcast’, ‘re-broadcast’, ‘programme’, ‘subject-matter’, ‘substantial part’, ‘fixation’.

ORDER

1. Appeal allowed with costs.

2. Orders of the Full Court of the Federal Court entered on 19 July 2002 set aside.

3. Matter remitted to the Full Court of the Federal Court to determine the remaining issues in the appeal to that Court and to make the appropriate orders consistent with the judgment of this Court and upon its further consideration of the appeal, including orders disposing of the costs of the appeal to the Full Court.

1 McHugh ACJ, Gummow AND Hayne JJ. This appeal is brought from the decision of the Full Court of the Federal Court of Australia (Sundberg, Finkelstein and Hely JJ) 1 which allowed in part an appeal by the respondents against judgments at the trial before Conti J 2. The issues which arise turn upon the provisions of the Copyright Act 1968 (Cth) (‘the Act’) as they stood before the commencement on 4 March 2001 of the Copyright Amendment (Digital Agenda) Act 2000 (Cth) (‘the Amendment Act’) 3.

2 The appellant (‘Ten’) is the holding company of the Ten Network, and each of the respondents (‘Nine’) is part of the Nine Network. The relevant corporate actors in the events giving rise to the litigation held the appropriate commercial television broadcasting licences under the Broadcasting Services Act 1992 (Cth) (‘the Broadcasting Act’).

3 The litigation concerned alleged infringement by Ten of the copyrights of Nine in certain television broadcasts. The Ten Network broadcast a weekly television programme entitled The Panel, which included 20 extracts from programmes previously broadcast by the Nine Network. These were used in 15 different episodes of The Panel broadcast in 1999 and 2000. Before that use, each extract (referred to in the judgments in the Federal Court as the ‘Panel Segments’) was placed on an individual video tape.

4 The Panel Segments ranged in duration from eight to 42 seconds. They were taken from programmes of the usual advertised length of 30 minutes to one hour.

5 The programmes of The Panel were produced for Ten by a contracted production company, Working Dog Pty Ltd (‘Working Dog’). It appears that Working Dog retained ownership of the master tapes and its copyrights therein and for reward granted to Ten the rights to one free-to-air live broadcast on Ten and its affiliates. The litigation instituted by Nine was against Ten, not Working Dog.

6 The injunctive relief sought by Nine was to restrain the re-broadcasting ‘on the television program “The Panel” … of a substantial parts [sic] of any

television broadcasts by [Nine] without [its] consent’. Nine also claimed a declaration of infringement of the ‘broadcast copyright’ of Nine in each of the episodes of what were identified as ‘the television programs known as [for example, The Today Show, A Current Affair, Australia's Most Wanted]’. The Full Court granted declaratory relief and remitted to the primary judge any questions of further relief consequential upon the declaratory relief.

7 At trial, Conti J held that Ten had not taken the whole or a substantial part of any of Nine's broadcasts. Those findings were reversed in the Full Court. Hely J delivered the leading judgment. Sundberg J agreed with Hely J and with additional reasons given by Finkelstein J for the conclusion that Ten had infringed the copyright of Nine in its television broadcasts. There were fair dealing defences under ss 103A and 103B of the Act. These partly succeeded, but do not arise for consideration in this Court.

8 Nine seeks to uphold the Full Court decision in its favour that each visual image capable of being observed as a separate image on a television screen and accompanying sounds is ‘a television broadcast’ in which copyright subsists. The gist of Ten's complaint is that the term ‘a television broadcast’ as it appears in the Act was misread by the Full Court, with the result that the content of that expression is so reduced that questions of substantiality have no practical operation and the ambit of the copyright monopoly is expanded beyond the interests the legislation seeks to protect.

9 Ten's submissions should be accepted and the appeal allowed.

Statutory interpretation

10 The submissions for Nine initially eschewed any detailed consideration of the anterior legal and historical context in the United Kingdom; this was despite the significance of the British legislation which then followed, upon the later Australian legislation. Nine also stressed the significance of what were said to be the plain words of the provisions of the Act immediately in issue and sought to discount any reaction to the decision of the Full Court which emphasised that the construction favoured by the Full Court appeared to be at odds with the overall scheme of the Act. Accordingly, it is convenient now to restate several of the relevant principles or precepts of statutory interpretation.

11 In Newcastle City Council v GIO General Ltd4, McHugh J observed:

‘[A] court is permitted to have regard to the words used by the legislature in their legal and historical context and, in appropriate cases, to give them a meaning that will give effect to any purpose of the legislation that can be deduced from that context.’

His Honour went on to refer to what had been said in the joint judgment in CIC Insurance Ltd v Bankstown Football Club Ltd5. There, Brennan CJ, Dawson, Toohey and Gummow JJ said 6:

‘It is well settled that at common law, apart from any reliance upon s 15AB of the Acts Interpretation Act 1901 (Cth), the court may have regard to reports of law reform bodies to ascertain the mischief which a statute is intended to cure 7. Moreover, the modern approach to statutory interpretation (a) insists that the context be considered in the first instance, not merely at some later stage when ambiguity might be thought to arise, and (b) uses “context” in its widest sense to include such things as the existing state of the law and the mischief which, by legitimate means such as those just mentioned, one may discern the statute was intended to remedy 8. Instances of general words in a statute being so constrained by their context are numerous. In particular, as McHugh JA pointed out in Isherwood v Butler Pollnow Pty Ltd9, if the apparently plain words of a provision are read in the light of the mischief which the statute was designed to overcome and of the objects of the legislation, they may wear a very different appearance. Further, inconvenience or improbability of result may assist the court in preferring to the literal meaning an

alternative construction which, by the steps identified above, is reasonably open and more closely conforms to the legislative intent 10.’

12 The context in which the broadcasting right was introduced, including well-established principles of copyright law, the inconvenience and improbability of the result obtained in the Full Court, and a close consideration of the text of various provisions of the Act relating to the broadcasting right, combine to constrain the construction given to the Act by the Full Court and to indicate that the appeal to this Court should be allowed.

13 Reference first will be made to two well-established principles, those concerned with the significance of copying, and with the taking of a substantial part of the protected material. Attention then will be given to the legislative context in which the broadcasting right first appeared, and thereafter to the particular issues of statutory construction involved in the appeal.

Copyright and copying

14 Counsel for Nine invoked a well-known statement made in University of London Press Ltd v University Tutorial Press Ltd11. This was a case of infringement of copyright in an original literary work and Peterson J applied ‘the rough practical test that what is worth copying is prima facie worth protecting’. But later authorities correctly emphasise that, whilst copying is an essential element in infringement to provide a causal connection between the plaintiff's intellectual property and the alleged infringement 12, it does not follow that any copying will infringe. The point was stressed by Laddie J when he said 13:

‘Furthermore many copyright cases involve defendants who have blatantly stolen the result of the plaintiff's labours. This has led courts, sometimes with almost evangelical fervour, to apply the commandment “thou shalt not steal”. If that has necessitated pushing the boundaries of copyright protection...