|
|
[Home]
[Databases]
[WorldLII]
[Search]
[Feedback]
Federal Judicial Scholarship |
ANGLO-AUSTRALASIAN LAWYERS SOCIETY
(UK
Branch)
Lecture
“Copyright and Trade Mark Law
–
Recent Developments in Australia
including a review
of the jurisdiction
and activity of the Copyright
Tribunal”
by
The Hon Justice Kevin Lindgren
Judge of the
Federal Court of Australia
President of the Australian Copyright
Tribunal
Wednesday 18 September 2002
1.1 Jurisdiction
1.2 The Federal Court of Australia
2.01 Jurisdiction of the Tribunal
2.02 Establishment of the Tribunal
2.03 Collecting Societies
2.04 Constitution of the Tribunal
2.05 Procedure of the Tribunal
2.06 References to, and Judicial Review by, the Federal Court of Australia
2.07 Sittings of the Tribunal
2.08 Equitable Remuneration
2.09 Costs
2.10 The Tribunal and Small Business
2.11 The Effectiveness of the Tribunal
2.12 Current Recommendations for Reform
3.1 General
3.2 Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112
3.3 Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273
3.4 Kabushiki Kaisha Sony Computer Entertainment v Stevens [2002] FCA 906
1. INTELLECTUAL PROPERTY LAW AND PRACTICE IN AUSTRALIA
1.1 Jurisdiction
1.2 The Federal Court of Australia
2. THE AUSTRALIAN COPYRIGHT TRIBUNAL [1]
2.01 Jurisdiction of the Tribunal
The Copyright Tribunal (that is its name, not, perhaps unfortunately, the Australian Copyright Tribunal) (“the Tribunal”) is an administrative body established by Part VI of the Copyright Act 1968 (Cth) (“the Act”), primarily for the purpose of arbitrating disputes between copyright owners and the users of copyright material, over the amounts which should be paid by the users to the owners under various statutory and voluntary licences.
The process of determining the jurisdiction of the Tribunal from the relevant legislative provisions alone is complex and difficult, and has been described as “the stuff that migraines are made of”.[2]
The jurisdiction of the Tribunal can be summarised as follows:
2.02 Establishment of the Tribunal
Pressure for the establishment of a tribunal arose in Australia not long after the formation of the Australasian Performing Right Association (“APRA”) in 1926. APRA was a company limited by guarantee and its members were composers of music, music lyric writers and musical publishers who assigned to APRA the right of public performance of their works. Accordingly, APRA licensed the public performance of musical works. The amount of music APRA controlled was so large that it was seen to have monopolistic control over the performance of copyright music in Australia.
A Royal Commission, chaired by Justice Langer Owen of the Supreme Court of New South Wales, was established by the Commonwealth Government in 1932 to inquire into, and report upon, the exploitation of performing rights. The “Owen Commission” reported in 1933 (Report of the Royal Commission on Performing Rights) that APRA performed its functions to the benefit both of copyright owners and users of copyright material, who, individually could not effectively protect their respective interests. However, the Commissioner described APRA as “a super-monopoly controlling, or claiming to control, most of the music which users in public must use and [which] is able to dictate its own terms”, and recommended the establishment of a tribunal to arbitrate disputes between APRA and organisations of users of musical works.
APRA and other performing rights societies throughout the world and many eminent composers protested against the recommendation. The recommendation was not implemented, because the Government of the day doubted whether an enactment providing for the compulsory arbitration of disputes between APRA and other bodies would be consistent with the Berne Convention for the Protection of Literary and Artistic Works.
However, section 13A was inserted in the Copyright Act 1912 (Cth) providing for voluntary arbitration of disputes between the owners of copyright in musical works and the users of such works. It appears that this facility was never used. The desire for a compulsory system of arbitration continued to be expressed.
The jurisdiction and nature of the Tribunal, as it is today, were largely built on the recommendations of a Committee, the Copyright Law Review Committee, appointed on 15 September 1958 by the then Commonwealth Attorney-General. The Committee’s task was as follows:
“to examine the copyright law of Australia, and to advise which of the amendments recently made in the law of copyright in the United Kingdom should be incorporated into Australian copyright law and what other alterations or additions, if any, should be made to the copyright law of Australia.”
The Chairman of the Committee was the Honourable Sir John Spicer, Chief Judge of the Commonwealth Industrial Court. The “Spicer Committee” noted that it had “examined minutely” the provisions of the recently enacted Copyright Act 1956 of the United Kingdom and had been “greatly assisted” by the following reports of bodies in the United Kingdom, Canada and New Zealand:
In implementation of recommendations made by the Gregory Committee, ss 23-30 of the Copyright Act 1956 (UK) had established a tribunal (the Performing Right Tribunal, now the UK Copyright Tribunal) to decide disputes between performing rights organisations and would-be users of copyright works controlled by them.
The Spicer Committee reported to the Attorney-General in December 1959: Copyright Law Review Committee 1959, Report of the Copyright Law Review Committee, 1959, Cth Government Printer, Canberra. In general, its Report agreed with that of the Owen Commission. It noted that Canada and the United Kingdom had established tribunals for the purpose of reviewing tariffs and determining disputes between collecting societies and music users. There was general agreement among those who appeared before the Committee, including APRA, that a system of compulsory arbitration was desirable, although there was some difference of opinion as to whether a permanent tribunal, as distinct from ad hoc arbitrators, was desirable.
The Tribunal was established by the Copyright Act 1968 (Cth) (“the Act”) upon its commencement on 1 May 1969. Subject to the exception noted below, the recommendations of the Spicer Committee were adopted. In the course of the Second Reading Speech by which he introduced the Bill for the Act, the then Attorney-General, Mr N H Bowen QC, (subsequently the first Chief Justice of the Federal Court of Australia and a President of the Tribunal), said that the Tribunal’s main function would be to arbitrate disputes between owners of copyright and persons who wished to perform in public, or to broadcast, copyright works (Parl Debs, H Reps, 18 May 1967, pp 2334-2335). The Tribunal was also to have the function of conducting enquiries relating to revision of the royalties payable by record manufacturers to copyright owners under the statutory provisions relating to the recording of musical works. The Attorney-General said he believed that all parties welcomed the proposed establishment of the Tribunal. He pointed out that any person who was dissatisfied with the charges or other conditions imposed by APRA in respect of the performance or broadcasting of works which it controlled would be able to have the matter reviewed by the Tribunal. Additionally, APRA would be entitled to initiate a reference to the Tribunal. Performance or broadcasting of music in accordance with the decision of the Tribunal would not be an infringement of copyright, so long as the user of the music observed the conditions and paid the royalties determined by the Tribunal.
The Commonwealth Parliament did not accept one of the Spicer Committee’s recommendations. This was that Australia follow the United Kingdom model by excepting from the Tribunal’s jurisdiction, questions relating to the fees charged by individual authors or refusals by individual authors to grant a licence for the performance of their works. Accordingly, while the Tribunal was established principally to counterbalance the monopoly of particular “collecting societies”, it was also given jurisdiction to determine disputes between users and individual copyright owners in respect of the use of a single work or sound recording.
Despite this, nearly all proceedings before the Tribunal have involved disputes between institutional users, such as “educational institutions”, and collecting societies, in relation to licensing schemes. There have not been any applications to the Tribunal regarding a refusal to grant a licence in respect of a single work or sound recording.
Notwithstanding the expectations expressed at the time, the Tribunal was not given any work for 10 years! The first task for the Tribunal came on 30 December 1977 when the then Attorney-General requested the Tribunal to hold an inquiry in accordance with s 148 of the Act (now repealed) “in relation to the royalty payable in respect of records generally”. The Tribunal published its report on 24 December 1979. It reported that the statutory royalty of 5 per cent which then existed, was not equitable and should be increased to 6.75 per cent of the retail selling price of the recordings. There were other subsidiary recommendations. (This Report is discussed further below.) The recommendation was not accepted by the Government but the rate was increased to 6.25 per cent. Now s 55 of the Act authorises a “manufacturer” to make a recording of a musical work in the circumstances there provided for, on condition that a royalty is payable. The amount of the royalty is the amount agreed upon by the manufacturer and the owner of the copyright, or, failing agreement, is determined by the Tribunal, or, in the absence of both agreement and determination, is 6.25% of the retail selling price.
2.03 Collecting Societies
When the Tribunal was established on 1 May 1969, APRA (mentioned above) and the Copyright Owners Reproduction Society Ltd (“CORS”) were the only collecting societies in Australia. Since then, four others have been established.
CORS was established in 1956 to protect the interests of music publishers; changed its name in 1973 to “Australian Music Publishers Association”; and subsequently the Australasian Mechanical Copyright Owners Society (“AMCOS”) was formed to take over its role as collecting society. AMCOS controls the right to reproduce musical works by such “mechanical” means as tapes, discs, video recordings and cinematograph films.
The Phonographic Performance Company of Australia Ltd (“PPCA”) was established in 1969. Its members are the producers and manufacturers of sound recordings and it is closely related to the Australian Record Industry Association, which serves the interests of the manufacturers, importers and distributors of sound recordings.
Copyright Agency Ltd (“CAL”) was established by the Australian Book Publishers’ Association and the Australian Society of Authors, to collect royalties for the multiple photocopying of works, particularly as a result of the statutory licences introduced by the Copyright Amendment Act 1980 (No 154 of 1980) (Cth).
The Audio-visual Copyright Society Ltd (“Screenrights”), established in 1990, is the collecting society for the purposes of the statutory licence for the copying of broadcasts by educational and other institutions under Pt VA of the Act, introduced by the Copyright Amendment Act 1989 (No 32 of 1989) (Cth).
Finally, in October 1995, VISCOPY, a collecting society for the visual arts, was established. It licenses the reproduction of graphic artistic works on behalf of visual artists. These include painters, sculptors, designers, photographers and cartoonists.
2.04 Constitution of the Tribunal
Part VI (ss 136-175) of the Act is headed “The Copyright Tribunal”. The constitution of the Tribunal is provided for in Division 2 (ss 138-147) of Part VI. Section 138 establishes the Tribunal and provides that it consists of a President, and such number of Deputy Presidents and other members as are appointed in accordance with Division 2.
Section 139 provides that members are appointed by the Governor-General. A person is not to be appointed as the President unless he or she is a Judge of the Federal Court of Australia: subs 140(1). (Originally, ss 140 and 142 provided that a person was not to be appointed as President unless he or she was or had been a judge of a federal court or of the Supreme Court of a State, or a barrister or solicitor of not less than five years’ standing.) The Presidents to date, listed in chronological order, are as follows:
A person is not to be appointed as a Deputy President unless he or she is, or has been, a Judge of a federal court or of the Supreme Court of a State or Territory: subs 140(1A). The Deputy Presidents to date, in chronological order, have been:
Subsection 140(2) of the Act provides:
“(2) A person shall not be appointed as a member (other than the President or a Deputy President) unless:
(a) he or she is or has been a Judge;
(b) he or she is enrolled as a legal practitioner of the High Court, of another federal court or of the Supreme Court of a State or Territory and has been so enrolled for not less than 5 years;
(c) he or she has had experience, for not less than 5 years, at a high level in industry, commerce, business, public administration, education or the practice of a profession;
(d) he has obtained a degree of a university, or an educational qualification of a similar standing, after studies in the field of law, economics or public administration; or
(e) he or she has, in the opinion of the Governor General, special knowledge or skill relevant to the duties of a member.”
Currently the other members of the Tribunal are:
A member holds office for such period, not exceeding seven years, as is specified in the instrument of appointment, but he or she is eligible for re-appointment: subs 141(1). Where a member who is a Judge ceases to be a Judge, he or she ceases to hold office as a member, but is eligible for appointment as a member (other than as the President): subs 141(2).
By subs 146(2), subject to subs (3), when sitting, the Tribunal must be constituted by a single member. Subsection (3) provides that if a party to an application or reference requests that the Tribunal be constituted by more than one member for the purposes of the application or reference, the Tribunal must, for the purposes of the application or reference, be constituted by not less than two members, of whom one must be the President or a Deputy President. Nothing prevents a single member exercising the powers of the Tribunal in relation to matters of procedure: subs 146(3A).
Mr A Tesoriero, a Deputy Registrar of the Federal Court of Australia in the New South Wales District Registry of that Court in Sydney, is the Secretary of the Tribunal and has held that office since 15 March 1994. The position of Secretary is provided for in s 170 of the Act.
The Registry of the Tribunal is situated at the Law Courts Building, Queens Square, Sydney.
2.05 Procedure of the Tribunal
Subject to the Act and the Regulations made under it, the procedure of the Tribunal is within its discretion: par 164(a).
The procedure of the Tribunal is regulated by Division 4 (ss 163-169) of Part VI of the Act and by the Regulations.
The Regulations deal in detail with the procedure for the making of applications, forms and other incidental matters.
The Tribunal is not bound by the rules of evidence (par 164(b)), although it may take evidence on oath or affirmation: subs 167(1). A member or the Secretary may summon a person to appear before the Tribunal to give evidence and to produce documents and articles: subs 167(2). The Tribunal may permit a person appearing as a witness to give evidence by tendering, and verifying, by oath or affirmation, a written statement, which must be filed with the Secretary to the Tribunal: s 168.
There are penalties for disobeying a summons to appear as a witness before the Tribunal or to produce a document or article to the Tribunal: s 172. There are also penalties for contempt of the Tribunal: s 173.
Copyright owners may apply to the Tribunal to be represented by their agent: s 163A. A party may be represented by an employee, officer or member of the party approved by the Tribunal, or by a barrister or solicitor: s 169. The Tribunal is required to conduct its proceedings with as little formality, and with as much expedition, as the requirements of the Act and a proper consideration of the matters before it permit: par 164(c). These provisions mirror those of subs 103(1) of the Trade Practices Act 1974 (Cth), which apply to the Australian Competition Tribunal.
No filing or hearing fees are payable in proceedings before the Tribunal. Matters are listed for directions soon after they are filed. At the first directions hearing a timetable is fixed to prepare the matter for hearing. At the first directions hearing a question arises as to whether or not the application must be advertised.
Directions hearings are held as necessary to deal with problems and to supervise progress towards a hearing. There are, of course, some cases which are quite complex and which require more directions hearings than one.
2.06 References to, and Judicial Review by, the Federal Court of Australia
The Tribunal may, of its own motion or at the request of a party, refer “a question of law” arising in a proceeding before it for determination by the Federal Court of Australia: subs 161(1). A request may be made within a prescribed period after the Tribunal has given its decision (subs 161(2) and, if the Tribunal refuses the request, the requesting party may apply to the Federal Court for an order directing the Tribunal to refer the question to it (subs 161(3)). Regulation 40B of the Copyright Tribunal (Procedure) Regulations prescribes a period of 28 days from the date of the Tribunal’s decision. A reference is by way of a stated case for the opinion of the Court (subs 161(6)) which is given jurisdiction to hear and determine a question of law referred to it under s 161: subs 161(7). (A former President of the Tribunal referred a question of law to the Court, then determined the question as a Judge of the Court.)
The Administrative Decisions (Judicial Review) Act 1977 (Cth) provides for, relevantly, judicial review on grounds specified in that Act, of decisions of an administrative character made under a Commonwealth Act. A decision of the Tribunal under the Act fits this description. Section 39B of the Judiciary Act 1903 (Cth) gives the Federal Court of Australia jurisdiction with respect to any matter in which a writ of mandamus or prohibition or an injunction is sought against an officer or officers of the Commonwealth, such as an officer or officers of the Tribunal.
2.07 Sittings of the Tribunal
The sittings of the Tribunal are at the discretion of the President: subs 146(1). Also within the President’s discretion are questions as to the constitution of the Tribunal for a particular matter and its business: s 147.
As stated above, if a party requests that the Tribunal be constituted by more than one member, the Tribunal must be constituted by not less than two members, of whom one must be the President or a Deputy President: subs 146(3).
The Tribunal is usually constituted by a single presidential member. When a request has been made pursuant to subs 146(3), the Tribunal has nearly always been constituted by three members, namely, the President or a Deputy President sitting with two non-presidential members. Regulation 37 of the Copyright Tribunal (Procedure) Regulations provides for a procedure for the making of a request under subs 146(3). This procedure is quite formal and is never used in practice. Parties tend to make their requests orally and usually by consent before the President or a Deputy President.
The Tribunal sits in the court-rooms of the Federal Court. Hearings must be in public, except where the Tribunal is satisfied that this is not desirable because of the confidential nature of any evidence or matter or for any other reason: s 163.
The President and one Deputy President are Federal Court Judges in Sydney, while the other Deputy President is a Federal Court Judge in Melbourne. The Tribunal has sat in Sydney, Melbourne, Adelaide and Brisbane.
Since the inquiry into records generally in 1977, in substance 56 applications have been made to the Tribunal. Some of these have involved the filing of multiple applications (44 in one recent case) but in effect 56 disputes were involved. Some hearings have been lengthy, but most do not exceed five days. In nearly all matters the parties have had legal representation.
Almost all of the decisions of the Tribunal have been reported. All the Tribunal’s decisions are on the Internet through the Federal Court Homepage: www.fedcourt.gov.au.
2.08 Equitable Remuneration
The most common task of the Tribunal is to determine amounts of “equitable remuneration” to be paid for the use of copyright material.
2.09 Costs
The Tribunal may order that costs be paid by any party and may tax or settle the amount of the costs or specify the manner in which they are to be taxed: subs 174(1). In taxing or settling the amount, the Tribunal or other person taxing or settling the amount must allow so much only of the amount claimed as would have been allowed if the proceeding had been a proceeding before the Federal Court and the costs were being taxed under the Federal Court Rules: subs 174(1A). Costs directed by the Tribunal to be paid may be recovered in any court of competent jurisdiction: subs 174(2).
2.10 The Tribunal and Small Business
On 30 July 1997 the Attorney-General, the Hon Daryl Williams MP, asked the House of Representatives Standing Committee on Legal and Constitutional Affairs to inquire into, and report on, the collection of copyright royalties for licensing the playing of music in public by small businesses.
The reference was prompted by what was perceived to be an imbalance between the functions of collecting societies and “small business”. In Australasian Performing Right Association Ltd v Ceridale Pty Ltd (1990) 97 ALR 497 the Full Federal Court noted (at 510) that:
“There is no doubt, in the present case, that APRA enjoys a substantial degree of power – amounting indeed to dominance - in the market for music rights. It would seem that, in practical terms, it would be impossible for a nightclub or discotheque to survive without using music of [APRA].”
The Committee provided its report, Don’t Stop the Music! A report on copyright, music and small business, in May 1998 and observed (at [7.15]) that it had received evidence that “small businesses did not have the knowledge, time or financial resources to pursue issues in the Copyright Tribunal, particularly in light of the amount of the licence fees”. Many small business proprietors were not even aware of the Tribunal’s existence.
The Committee made recommendations (at xv-xxvii) relating to the education of small businesses about copyright law and the public performance of music; the licensing arrangements between APRA, PPCA and small businesses; and the development of a voluntary code of conduct for copyright collecting societies setting standards of acceptable licensing practices and activities. In relation to the Copyright Tribunal, the Committee made the following recommendations (at xxvi):
2.11 The Effectiveness of the Tribunal
The volume of work handled by the Tribunal to date has not been great. Several reasons have been suggested for the Tribunal’s relative inactivity.
One is that the Tribunal must await an application or reference before it can become active. It has been claimed that this leaves the parties to negotiate from unequal bargaining positions, with recourse to the Tribunal only as an expensive last resort. However, most parties to proceedings in the Tribunal to date have been collecting societies and large user groups.
Another criticism is delay and cost. Those criticisms are made of every court or tribunal required to determine complex disputes.
In many areas the Tribunal has played an important part in setting benchmarks for fees that have been adopted and applied in the industry.
2.12 Current Recommendations for Reform
The Copyright Law Review Committee (“the CLRC”) was established in 1983 by the then Attorney-General as a specialist advisory body to report to the Government on specific copyright law issues referred to it for its consideration.
On 20 April 1999 the Attorney-General asked the CLRC to inquire into, and report upon, the need for changes to the jurisdiction and procedures of the Tribunal. The CLRC advertised widely, invited submissions and consulted with key interests.
The resulting report of December 2000, Jurisdiction and Procedures of the Copyright Tribunal, is 222 pages in length. The CLRC considered that the Tribunal was functioning well and that it performed a role that would not be as effectively performed by any other existing body. However, it considered that the Tribunal’s function would be enhanced by the adoption of the Committee’s recommendations. The recommendations have been made only quite recently and it remains to be seen to what extent they will be adopted.
3. RECENT DEVELOPMENTS
3.01 General
3.02 Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112
3.03 Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273
3.04 Kabushiki Kaisha Sony Computer Entertainment v Stevens [2002] FCA 906
[1]
This part of the paper is, in some respects, an updating of a paper written in
June 1995 by the Hon Justice Ian F Sheppard AO, then
a Judge of the
Federal Court of Australia and President of the Copyright Tribunal. I
acknowledge my indebtedness to that learned
Judge who contributed so much to the
work and the reputation of the
Tribunal.
[2]
Shane Simpson, “Expanding the Copyright Tribunal’s
Jurisdiction”, (1995) 13(2) Copyright Reporter 52 at 53.
AustLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.austlii.edu.au/au/journals/FedJSchol/2002/15.html