Sydney Law Review
In Network Ten Pty Ltd v TCN Channel Nine Pty Ltd, the High Court will have the opportunity to consider for the first time certain fundamental issues relating to television broadcast copyright. The central question for the Court relates to the scope of the exclusive rights of the owner of copyright in a television broadcast under the Copyright Act 1968 (Cth) and, as a corollary, what constitutes an infringement of television broadcast copyright. In particular, the High Court will consider whether, as was held by the Full Federal Court, the owner of copyright in a television broadcast has the exclusive right to make a cinematograph film of, or re-broadcast, any of the visual images in the broadcast, irrespective of whether those images constitute a ‘substantial part’ of the broadcast.
The outcome of the case will have important implications for the Australian broadcasting industry, in particular as regards the way in which television broadcasters use other broadcasters’ material. Yet the case will also afford the High Court the rare chance to provide guidance on such vexed questions as what is a copyright ‘work’ or ‘subject matter’, and to analyse critically the nature of the ‘substantial part’ requirement in copyright law.
Between August 1999 and June 2000, Network Ten Pty Ltd (‘Ten’) re-broadcast on its weekly program The Panel excerpts from 20 programs originally broadcast by rival television network TCN Channel Nine Pty Ltd (‘Nine’). Prior to each episode of The Panel, Ten made videotapes of each of Nine’s broadcast programs, and subsequently made tapes of those first videotapes in order to isolate the excerpts to be re-broadcast. The excerpts were of between eight and 42 seconds in duration. Ten re-broadcast many of these excerpts to make satirical reference to incongruous, sometimes farcical, moments within the excerpts, often to draw attention to the disparity between the ethos of the original program and its actual content. On some occasions the excerpts were shown for their topical value as a stimulus to both serious and irreverent discussion.
Nine brought proceedings in the Federal Court against Ten, alleging that Ten had infringed Nine’s copyright in its television broadcasts pursuant to s101 of the Copyright Act. At first instance, Conti J found that Ten had neither copied nor re-broadcast a substantial part of any of Nine’s broadcasts, and therefore had not infringed Nine’s copyright in them. On appeal, the Full Court held that Ten had both copied and re-broadcast the entirety of each of Nine’s broadcasts. The Full Court then considered whether Ten’s pleaded fair dealing defences were established, in the result holding that Ten had infringed Nine’s copyright in relation to 11 of the 20 excerpts. Ten has elected to appeal only the Full Court’s findings as to what constitutes a filming and re-broadcasting of a television broadcast to the High Court.
It is suggested that there are significant errors in the Full Court’s judgment, and while there are problems with some of Conti J’s reasoning, the result reached at first instance was the correct one.
Nine argued that Ten had infringed copyright by contravening Nine’s exclusive rights under ss87(a) and (c) of the Copyright Act. At the time, s87 provided:
For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a television broadcast or sound broadcast, is the exclusive right:
(a) in the case of a television broadcast in so far as it consists of visual images — to make a cinematograph film of the broadcast, or a copy of such a film;
(c) in the case of a television broadcast or of a sound broadcast — to re-broadcast it.
Conti J gave separate judgments, first on s87(c) and then on s87(a). In his first judgment, Conti J considered that s87(c) had to be interpreted in light of s14(1)(a). This provision, which is of critical importance for the arguments presented here, states:
In this Act, unless the contrary intention appears:
(a) a reference to the doing of an act in relation to a work or other subject-matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject-matter...
On this interpretation, the key question was whether Ten had, in broadcasting the excerpts, re-broadcast a ‘substantial part’ of Nine’s broadcasts. This in turn required a mechanism for determining the ‘boundaries’ of the broadcast. Conti J held that copyright in a television broadcast subsists in the broadcast of a program, or a segment of a program if that program is susceptible to subdivision, or an advertisement, or a station break or logo. In light of this interpretation, Conti J concluded that Ten had not re-broadcast a substantial part of any of Nine’s broadcasts. His Honour reached this conclusion on the basis of the quantity, quality and purpose of Ten’s dealings, placing particular emphasis on the lack of harm to Nine’s commercial interests.
In his second judgment, Conti J considered Nine’s argument that s87(a) must be read in light of s25(4)(a), which states:
In this Act:
(a) a reference to a cinematograph film of a television broadcast shall be read as including a reference to a cinematograph film, or a photograph, of any of the visual images comprised in the broadcast...
Nine contended that its exclusive right under s87(a) extended, by virtue of s25(4)(a), to making a film of ‘each and every visual image’ in its broadcasts, a right which Ten had contravened by making the subsequent videotapes of Nine’s broadcasts. Conti J disagreed, holding that such an interpretation overlooked the effect of the ‘substantial part’ test in s14(1)(a). His Honour held that the relationship between ss87(a), 25(4)(a) and 14(1)(a) is such that the making of a film of single images could lead to infringement, but only provided that there is a sufficiency of images capable of amounting to a substantial part of the broadcast. For the same reasons as in his first judgment relating to the substantiality of Ten’s dealings, Conti J held that Ten had not made cinematograph films of a substantial part of any of Nine’s broadcasts.
Nine jointly appealed Conti J’s findings in both judgments to the Full Court, which held unanimously that Ten had contravened ss87(a) and 87(c).
Hely J (with whom Sundberg and Finkelstein JJ agreed) first considered how s87(a) should be interpreted. Hely J did not agree with Conti J’s characterisation of the relationship between ss87(a), 25(4)(a) and 14(1)(a). Rather, Hely J held that s25(4)(a) was a ‘self-contained definitional provision’ that was ‘not subject to further modification by section 14’. His Honour thus held that the owner of copyright in a television broadcast has the exclusive right to make a cinematograph film of ‘any one or more’ of the visual images contained in the broadcast. This meant that there was no need to determine the boundaries of Nine’s broadcasts, or whether Ten had filmed a substantial part of each of them, for the purposes of interpreting s87(a). On this basis, Ten’s act of filming images broadcast by Nine contravened s87(a).
As to s87(c), Hely J held that whether an act of re-broadcasting a television broadcast contravened this provision depends on how the television broadcast is defined. His Honour noted that the definition of ‘television broadcast’ in s10(1), namely ‘visual images broadcast by way of television, together with any sounds broadcast for reception along with those images’, did not seek to define the subject matter in terms of a ‘whole’, of which the visual images and accompanying sounds were but a part. Rather, Hely J considered that the definition should be interpreted such that copyright subsists in any broadcast of ‘visual images and accompanying sounds’, regardless of duration, except perhaps for a transmission lasting ‘for a fraction of a second only’. Finkelstein J, who agreed with Hely J, went a step further in stating that copyright subsists in ‘each and every still image’ transmitted or capable of being observed as a separate image on a television screen. The effect of the Court’s interpretation of ‘television broadcast’ was not that each image broadcast constituted a separate broadcast, but that in any given period of broadcasting, the copyright owner has the exclusive right to re-broadcast any of the actual images and accompanying sounds broadcast. The scope of each copyright broadcast would be determined by the amount re-broadcast. As a result, the Court held that Ten had re-broadcast the entirety of each of Nine’s broadcasts by re-broadcasting the excerpts on The Panel. Hely J acknowledged that the Court’s interpretation of s87(c) meant that issues of ‘substantial part’ would only arise in respect of re-broadcasts of visual images without accompanying sounds (or vice versa), or of re-broadcasts of ‘cropped’ images.
The first issue for the High Court will be to clarify the labyrinthine relationship between ss87(a), 25(4)(a) and 14(1)(a). Ultimately, the question for the High Court will be whether the Full Court’s highly literal interpretation of these provisions does in fact promote the object or purpose of s87(a), or whether an alternative construction of these provisions is preferable. If, as this article suggests, the High Court declines to follow the Full Court’s interpretation, the second question for the High Court, relevant to both ss87(a) and (c), will be what constitutes a taking of a ‘substantial part’ of a broadcast. This is a complex issue involving the delimitation of the scope of a television broadcast and the establishment of principles as to what factors are to be taken into account in assessing whether a ‘substantial part’ of a broadcast has been copied or re-broadcast.
As to the first issue, it is certainly possible to interpret the relationship between ss87(a), 25(4)(a) and 14(1)(a) as the Full Federal Court did. This is because both ss14(1)(a) and 25(4)(a) could be seen as operating on the same continuum — both are definitional provisions which provide that the exclusive rights of copyright owners to do certain acts in relation to their copyright material extend to the doing of those acts in relation to something less than the entirety of their copyright material. Section 14(1)(a), which applies to all works and subject matter ‘unless the contrary intention appears’, states that this ‘something less’ is a ‘substantial part’ of the copyright material. Read literally, s25(4)(a) goes further than s14(1)(a): it operates to extend the exclusive right of the owner of television broadcast copyright beyond making a film of a ‘substantial part’ of a broadcast to making a film or photograph of ‘any of the visual images comprised in the broadcast’. On this literal reading, it is difficult to see how s25(4)(a) could be subject to a qualification, as imposed by Conti J, that the film contain a sufficiency of visual images so as to amount to a substantial part of the broadcast. If that were the case, there would be no need for s25(4) as it applies to the making of a cinematograph film of a broadcast — ss87(a) and 14(1)(a) would be sufficient for this purpose. Further, the use of the singular term ‘a photograph’ in s25(4)(a) logically means that the copyright owner has the exclusive right to make a single photograph of a single image contained in the broadcast. It stretches the language of s25(4) to suggest that the copyright owner’s right is only exclusive if a sufficient number of photographs are made such as to constitute a substantial part of the broadcast. Conti J’s approach, designed specifically to preserve the ‘substantial part’ test, glosses over the restrictive language used in s25(4) and the fact that s14(1)(a) operates only in the absence of a contrary intention. The Full Court’s interpretation fits these provisions together with less friction.
However, the Full Court’s literal interpretation has a number of worrying implications. The most significant is that it makes television broadcast copyright an extraordinarily strong right, easily the strongest of all copyrights in Australia, able to be infringed by taking less than a substantial part of the broadcast. The Full Court’s interpretation seems counter-intuitive given the nature of broadcasts and the rationale for granting copyright in them. It also overlooks the relationship between the right to film broadcasts in s87(a) and the re-broadcasting right in s87(c).
Broadcasting involves the provision of a service, namely the act of transmitting or communicating signals. Those signals encode visual and aural content, which may itself constitute copyright subject matter, such as films, sound recordings or original works. Broadcast copyright recognises the value in the dissemination of that content only, not in its creation or organisation. As Ricketson and Creswell state:
[A]lthough ... it is possible that the broadcaster has applied considerable skill and judgment in its selection and compilation of what is broadcast, it does not seem that these elements are the object of Part IV protection. It is simply the transmissions themselves.
However, the effect of the Full Court’s approach is that the mere act of disseminating content as a broadcast gives rise to stronger rights in the content than those afforded to the creators or organisers of the content. For example, owners of copyright in a cinematograph film or sound recording contained in a broadcast would need to demonstrate that a substantial part of their subject matter has been copied to establish infringement, whereas the disseminator of that same subject matter as a broadcast does not. This appears anomalous — it places a higher value on the investment involved in the communication of images and sounds than on the investment or creativity involved in bringing those images and sounds into being, for example as films or sound recordings, in the first place. And yet broadcast copyright is a ‘neighbouring’ right, traditionally a form of copyright which provides for a narrower scope of protection than for original works. As will be seen below, there is nothing in the legislative history of either the Copyright Act or its UK counterpart to indicate that such a result was intended.
A second problem is that the Full Court’s approach tends to gloss over the relationship between ss87(a) and (c). An act of re-broadcasting can technically occur in one of two ways: by making a copy on videotape from the sending station’s signal and re-broadcasting the contents of that tape; or by ‘pulling down’ the sending station’s off-air or satellite signal through a transmitter, and re-broadcasting that signal. Not only does Ten not use this second method of re-broadcasting, Nine itself acknowledged that it had never employed this method. This indicates that the taping of a broadcast is in practice a necessary antecedent step in the act of re-broadcasting. However, if a broadcaster has the exclusive right to control the taping of any of the images in the original broadcast, then a party seeking to re-broadcast a non-substantial part of another’s broadcast — an act that would not contravene s87(c) — will necessarily contravene s87(a). This interpretation renders s87(c) almost redundant as an independent right. It makes the provision relevant only in relation to re-broadcasting by ‘pulling down’ another network’s signal through a transmitter. This is despite the fact that Hely J expressly acknowledged that the meaning of ‘re-broadcasting’ in the Copyright Act was never intended to be so confined. Logically therefore, the Full Court should have considered carefully whether a literal interpretation of section 87(a) gives effect to the legislative intention in respect of s87(c) that Hely J recognised.
In light of the problematic implications set out above, it must be asked whether the Full Court’s literal construction of s87(a), as modified by s25(4)(a), does in fact ‘promote the purpose or object underlying the Act’ and, if not, whether the High Court could give those provisions an alternative construction that promotes such a purpose, pursuant to s15AA of the Acts Interpretation Act 1901 (Cth).
Such an approach is certainly open to the High Court. It is arguable that given the place of broadcasts within the framework of the Copyright Act, their relationship with other forms of copyright subject matter and the rationale for their protection, the purpose of giving broadcasters the exclusive right to make films of their broadcasts is to allow them to control the copying of a certain quantity of images, rather than individual images, within broadcasts. As will be discussed below, the history of the broadcast copyright provisions tends to support this interpretation. The issue is then whether the words of s87(a) are capable of more than one construction and of being interpreted in a manner that gives effect to this purpose. This does appear possible. Section 25(4)(a) can also be read as indicating that the visual images contained in the film may be sourced from any part of the broadcast, that they do not have to be sequential and that they do not have to be incorporated into the film in the same order as broadcast. On this basis, ss87(a) and 14(1)(a) could be read together as stating that the owner of television broadcast copyright has the exclusive right to make a film of a substantial part of that broadcast, with s25(4)(a) indicating that that substantial part can be comprised of non-consecutive images taken from any part of the broadcast. Such an interpretation of s87(a), while perhaps ‘strained’, is ‘neither unreasonable or unnatural’, and avoids the ‘improbability’ resulting from the Full Court’s approach. If this construction is adopted by the High Court, the key question would then become how the scope of a broadcast is to be defined and whether Ten, in making videotapes of the excerpts used on The Panel, copied a substantial part of Nine’s broadcasts (as to which, see section 4 below).
It should be acknowledged, however, that there are two problems with such an alternative construction. First, as is explored below, the external evidence as to the intended effect of s87 is somewhat scarce, meaning that the High Court should be cautious in stating categorically that the Full Court’s construction does not promote the purpose or object of the Copyright Act. Secondly, s15AA of the Acts Interpretation Act does not permit the High Court to ignore the words of the Copyright Act, even if the result of applying such words would lead to anomalous outcomes. Thus even though it may appear counter-intuitive to interpret s87(a) so as to make broadcast copyright a stronger right than in respect of any other copyright works or subject matter and to limit drastically the operation of s87(c) such that it is of little practical effect as an independent right, this may simply be the unfortunate consequence of applying the words of the Copyright Act. However, it is suggested that a sufficiently clear (albeit not strongly expressed) purpose to s87(a) can be gleaned and that the words of ss25(4)(a) and 87(a) are capable of more than one construction. As a result, it is open to the High Court to find that the Full Court’s interpretation did not give effect of the purpose of s87(a), and that s87(a) is to be interpreted in light of both ss14(1)(a) and 25(4)(a).
If the High Court adopts the construction of s87(a) recommended above, it will then be required to consider two fundamental, related issues: first, what are the boundaries of a television broadcast for the purposes of copyright law; and secondly, what is a ‘substantial part’ of that broadcast. In any event, the High Court will be required to consider both these issues for the purpose of determining the s87(c) claim. As has already been noted, the Full Court interpreted s87(c) as broadly as it did s87(a). Although in theory the Full Court preserved the ‘substantial part’ test for the purposes of s87(c), the Court held that the scope of the broadcast is to be determined by reference to that which the defendant has taken. Crucial to this finding is the significance the Court placed on the statutory definition of ‘television broadcast’. This merely refers to ‘visual images broadcast’, and the Court therefore concluded that re-broadcasting must occur when any visual images are taken. This allowed the Full Court to find that Ten had re-broadcast the entirety of each of Nine’s broadcasts. On this reading, it would only be possible to re-broadcast less than the whole of a broadcast if the re-broadcaster alters the broadcast in some way, for example, by cropping the images. The High Court needs to determine whether this definition of a broadcast and marginalisation of the substantial part test in relation to s87(c) is appropriate. This in turn requires a consideration of precisely the same questions that arise on the interpretation of s87(a) argued for above, namely, what is the broadcast, and what is a substantial part of it.
The Full Court’s interpretation of the boundaries of a television broadcast which it used to determine the scope of 87(c) could be applied equally to s87(a). Thus, even if the High Court were to adopt the interpretation of s87(a) argued for here, it would be possible for it to conclude that Ten made films of a substantial part of Nine’s broadcasts because, as in relation to s87(c), Ten had copied the entirety of each of Nine’s broadcasts. Thus the first question that arises is whether the Full Court’s method of determining the boundaries of broadcast copyright is appropriate.
If the phrase ‘television broadcast’ had been left undefined, it would not be apparent from the nature of a broadcast how copyright attaches to it. A broadcast is not a tangible object, but a dissemination of information through the transmission of electro-magnetic energy. Copyright cannot subsist in an action of dissemination. Further, since the electro-magnetic signals transmitted in a broadcast are evanescent and imperceptible, any rights over those signals alone would be ineffectual. Instead, broadcast copyright must subsist in the perceptible substance of broadcasts — the visual images or sounds that are encoded as signals by the broadcaster, transmitted and finally decoded and received.
The definition of ‘television broadcast’ in s10(1) simply makes this clear. It states that copyright subsists in the content of a broadcast, not its imperceptible means of communication. The central problem with the Full Court’s approach is that it assumes that the definition also establishes a quantitative standard of subsistence — that is, it demarcates the scope of the property. Yet there is no evidence that this was the legislature’s intention in s10(1), and the Full Court’s approach reads more into the definition than it is meant to achieve. Further, the Full Court’s interpretation is inconsistent with the way in which a ‘broadcast’ is defined elsewhere in the Copyright Act. For example, s135B refers to ‘making of a copy of the whole or a part of the broadcast’, which clearly indicates that a copyright broadcast is meant to consist of a quantifiable number of images and sounds. The definition of ‘television broadcast’ in s10(1) is in many respects like the statutory definition of ‘literary work’, which includes a ‘compilation, expressed in words, figures or symbols’. This definition indicates that subject matter that is not self-evidently ‘literary’ may constitute a literary work. It does not purport to state that copyright subsists in every possible grouping of words, figures or symbols. Rather, the boundaries of the literary work, as with the boundaries of the broadcast, must be separately determined. The foundations of the Full Court’s approach are therefore fundamentally unsound.
If s10(1) does not indicate the parameters of a television broadcast, the question is how are these to be determined. This is a difficult metaphysical question in copyright law generally, particularly where the subject matter in question is capable of being subdivided into smaller elements. Yet it is an important question because of its impact on the scope of the copyright owner’s rights and on the question of infringement.
The result of the Full Court’s approach is that a ‘television broadcast’ is capable of almost infinite subdivision, to either a transmission of visual images that lasts for more than a fraction of a second, or ‘each and every visual image’ broadcast. The copyright broadcast takes its shape only in infringement proceedings, by reference to the amount copied or re-broadcast. For example, if in any given hour of broadcasting, a competitor re-broadcast one second, one minute or the entire hour of the broadcast, then this would infringe copyright in the entirety of three copyright broadcasts, respectively lasting one second, one minute and one hour. It is suggested that such an interpretation is unsustainable, and rather that, for the reasons outlined below, a ‘television broadcast’ should be seen as coterminous with a unit of programming.
While there is no simple way of demarcating the scope of a copyright work or subject matter, a number of methods may prove useful. The first method is through the legislative treatment of the subject matter. As indicated, the definition of ‘television broadcast’ in s10(1) does not establish the outer limits of the scope of the property. It does, however, state that a broadcast means ‘visual images’. Thus Finkelstein J’s statement that copyright subsists in each and every image broadcast cannot be sustained — at the very least a plurality of images is required.
The legislative history of the broadcast copyright provisions in the Copyright Act and its UK counterpart, although sparse, provides greater assistance, and tends to support the notion that this ‘plurality of images’ must constitute a unit of programming. In 1952, the Gregory Committee in the UK recommended that a broadcaster be afforded ‘the right to prevent the copying of its programmes either by re-broadcasting, or by the making of records’. It has been suggested that ‘these recommendations were adopted’ in s14 of the Copyright Act 1956 (UK). If it were the case, as held by the Full Court, that the UK legislature departed from the recommendations of the Gregory Committee and the Board of Trade and intended for broadcast copyright to extend over every single image contained within a program, it might be expected that there would be some acknowledgment of this in the history of the UK Act, yet none is apparent. In Australia in 1959, it was proposed in the Spicer Report that television broadcasters should have protection ‘against the kind of pirating envisaged by section 14’ of the UK Act. While there are no explicit statements in the Spicer Report as to the scope of a broadcast, it was suggested that one of the rights in s14 to cause a television broadcast to be seen or heard in public was a right of public display of a program. Again, no statements during the passage of the Copyright Act 1968 (Cth), which incorporated the relevant recommendations of the Spicer Report, indicate that the scope of a broadcast was to be broader than this. In addition, the High Court may take some guidance from subsequent developments in the UK. In 1977, the Whitford Committee recommended that the UK law provide copyright in ‘the diffusion of programmes other than broadcast programmes’, leading to the introduction of s14A to the Copyright Act 1956 (UK) which provided copyright protection for ‘cable programmes’. Similarly, under the Copyright, Designs and Patents Act 1988 (UK) (which maintains protection for cable programmes), there are provisions that treat the person making a broadcast as the person who transmits or provides ‘the programme’ included in the broadcast, as well as a defence allowing the BBC to make copies of its broadcast programmes. The fact that no-one marked any of these provisions as in any way changing the scope of broadcast copyright strongly suggests that under the 1956 Act, broadcast copyright subsisted in a broadcast program. As a result, it is suggested that under the Copyright Act 1968 (Cth), a broadcast should be treated in the same manner.
A second method that may assist in defining the boundaries of a broadcast is through an economic analysis of broadcast copyright. The problem is that various modes of economic analysis yield different results. A neoclassicist approach suggests that copyright is a mechanism of ‘market facilitation’, allowing works to be transferred in the market to those that value them most highly, and that as such, owners should be provided with extensive rights over all valuable uses of their works. On this basis, the fact that every visual image in a broadcast has market value is a reason for granting rights over it. The problem with such an approach is not only that it allows an unspecified notion of the ‘market’ to usurp the role of the law in determining what should be protected, but also that it leaves little scope for recognising the social benefits possible if parties are able to use parts of others’ copyright material. An alternative method is to focus on the incentive theory of copyright protection and ask what is the minimum scope of protection necessary to ensure that broadcasts are provided. The broadcasting industry is structured around the provision of programs rather than mere sequences of images. Broadcasters expend significant investment in the organisation of programs to be broadcast. Ratings and (for commercial networks) advertising revenue are determined primarily by reference to units of programming. Broadcasters do not require incentives to produce mere collocations of visual images and sounds, regardless of length or structure, but rather, as recognised by the UK Board of Trade in 1956, to produce programs. Thus while the limitations of an ‘incentive’ approach are acknowledged, it does perhaps suggest that copyright should subsist in the broadcast of programs.
A third method that may be employed is to use experience and common sense to determine the parameters of the copyright subject matter. Such an approach can be seen in Hyperion Records Ltd v Warner Music (UK) Ltd, in which an owner of copyright in a sound recording lasting over five minutes argued that the eight note excerpt copied by the respondents itself constituted a discrete sound recording. Mr Hugh Laddie QC, sitting as a deputy Judge of the High Court, rejected this argument, stating:
I do not accept that all copyright works can be considered as a package of copyright works, consisting of copyright in the whole and an infinite number of subdivisions of it... If the copyright owner is entitled to redefine his copyright work so as to match the size of the alleged infringement, there will never be a requirement for substantiality.
Deputy Judge Laddie QC considered that a copyright work ‘must have a beginning, middle and end’ — an organic, identifiable form. Elements of this approach can be seen in Conti J’s first judgment. His Honour held that a ‘sensible and practical’, and ultimately the ‘only feasible’, measure of the scope of a television broadcast was by reference to units of programming. Like Deputy Judge Laddie QC, Conti J was also concerned that a ‘television broadcast’ should be defined in such a way that the substantial part requirement could meaningfully operate.
While such an intuitive approach does provide a workable solution, the obvious problem with it is that it is based entirely on a judge’s preconceived notions of what the subject matter is. However, there are a number of additional factors that lend support to the conclusion that it is ‘sensible and practical’ to treat copyright broadcasts as coterminous with programs. First, it establishes an identifiable external reference point for determining what is a ‘whole’ broadcast, which is in keeping with the way the term is used in the Copyright Act. Secondly, such an approach sits comfortably alongside the legislative history of the broadcast copyright provisions. Thirdly, it ensures that a ‘measure of symmetry’ is maintained between rights in broadcasts and cinematograph films, such that the interests of broadcasters are not unduly privileged over the creators of underlying copyright material.
Thus, although there is no definitive method of delimiting the scope of copyright subject matter, whichever method is employed tends to lead to the conclusion that television broadcast copyright should subsist in a broadcast program.
If the High Court does define the scope of a television broadcast in these terms, it will then need to decide whether Ten has made cinematograph films of, and re-broadcast, a ‘substantial part’ of Nine’s broadcasts for the purposes of ss87(a) and (c) respectively.
Although there is no clear indication as to how the test of ‘substantial part’ was intended to operate when it was introduced into the Copyright Act 1911 (UK) or its Australian counterpart, it has been generally accepted that the test is one of ‘fact and degree’ which refers more to the quality of what is taken than the quantity. The test has generally been bound up with questions of ‘originality’, namely whether a sufficient degree of an author’s skill or labour in creating an original copyright work has been appropriated. With few exceptions, the test has been applied restrictively, operating as little more than a de minimis threshold.
The question of how the test should be interpreted in respect of non-original copyright subject matter has been addressed in relation to published editions. Both the Full Federal Court in Nationwide News Pty Ltd v Copyright Agency Ltd and the House of Lords in Newspaper Licensing Agency Ltd v Marks and Spencer Plc held that published edition copyright protects the product of skill, labour and judgment in the overall presentation of the edition, and that whether a substantial part has been taken is to be determined by reference to the quality of the taking. In NLA, Lord Hoffmann held that the question was whether there had been an appropriation of ‘sufficient of the relevant skill and labour’ in the presentation of the edition.
The problem with focusing on the skill, labour and judgment involved in the creation of non-original copyright subject matter is that it conflates the rationale for granting copyright protection with questions of subsistence. Published edition copyright may well have been granted by the legislature as a reward for the time and labour expended by publishers. However, these are not essential elements for the purposes of subsistence of copyright, since published editions do not have to be ‘original’. Since it is immaterial whether any skill, labour or judgment is involved in the creation of a copyright published edition (as distinct from, for example, certain literary works), it is difficult to see how the appropriation of these elements could be relevant for the purposes of infringement. Similarly, although broadcast copyright may have been granted in recognition that a broadcaster ‘assembles its own programmes and transmits them at considerable cost and skill’, these factors are not required for copyright to subsist in a broadcast. Therefore, factors such as ‘the quality of presentation and screen appearance of the program which has been taken’ should not be relevant in the ‘substantial part’ inquiry.
This raises questions as to whether it is appropriate to refer to the ‘quality’ of the taking in relation to non-original subject matter. For example, because broadcast copyright subsists in the actual images and sounds broadcast, it is unlikely that the quality of the broadcast (as distinct from the content) will change throughout the duration of a program. As a result, a variety of primarily quantitative tests of substantiality have been proposed for non-original subject matter. It has been suggested that it may be apt to rely on ‘the rough practical test that what is worth copying is prima facie worth protecting’, for example by asking whether the part taken has ‘discernible market value’. However, this ‘test’ was never intended to provide guidance as to what constitutes a substantial part of copyright subject matter, and it has been criticised as effectively proscribing any act of copying. It has also been recommended that for non-original subject matter, a substantial part must be ‘anything that is not de minimis’ or something that is ‘real and consequential’ rather than ‘trifling and insignificant’. There is something to be said for such comments — given that the taking of a photograph of any part of a broadcast may constitute an infringement, it may well be the case that each of the excerpts copied and re-broadcast by Ten, although of relatively short duration in relation to the programs from which each was taken, is a substantial part of each of Nine’s broadcasts.
Yet there may be another way to look at the question of ‘substantial part’ which focuses more on the use made of the taking. In Hawkes & Son (London) Ltd v Paramount Film Service Ltd, Slesser LJ indicated that the ‘substantial part’ test in the Copyright Act 1911 (UK) preserved the pre-1911 case law allowing ‘fair use’ to be made of the copyright material. In one such ‘fair use’ case, the following factors were held to be relevant:
the nature and objects of the selections made, the quantity and value of the material used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.
In Nationwide, Sackville J suggested that these factors were relevant in determining the ‘quality’ of the part of a published edition taken, although it is perhaps preferable to see them as ‘other factors’ going to the question of ‘substantial part’. If these factors can be taken into account under Australian law, it is at least arguable that they support a finding that Ten has neither copied nor re-broadcast a substantial part of Nine’s broadcasts. Although Nine characterised Ten’s purpose as identical to Nine’s own, namely to ‘fill up TV screens with footage that people want to watch’, this assumes that visual images have the same value regardless of the context of their dissemination. Ten’s purpose in re-broadcasting the excerpts was not simply to demonstrate what had been broadcast by Nine, but rather to recontextualise, analyse and problematise the meanings of the images contained in the excerpts. Further, it is suggested that Ten’s re-broadcasts do not affect the market for Nine’s broadcast programs. Although the parties are in competition with each other, a factor that generally favours the copyright owner, it is difficult to see how the value of Nine’s programs as a whole is affected by Ten’s conduct, since the objects of such programs are not superseded and the market for them not supplanted. These factors, when combined with the length of the excerpts relative to Nine’s programs, may well indicate that the parts copied by Ten were not substantial, and that Ten has not contravened ss87(a) and (c).
The issues in this case raise complicated questions of statutory interpretation and of the definition and application of key terms in the Copyright Act. It is suggested that although these questions are not easily resolved, the approach of the Full Federal Court in its interpretation of both ss87(a) and (c) was in error, and Ten’s appeal should be allowed. Ultimately, the High Court’s decision will provide some certainty in this vague area of copyright law. If the approach recommended in this article is heeded, the High Court’s decision may also provide some guidance on two of the more difficult aspects of copyright law, namely how copyright subject matter is to be defined and how a ‘substantial part’ of that subject matter is to be determined.
[*] BA, LLB (Hons) (Sydney), LLM (London); RIRDC Research Fellow, ACIPA, Australian National University. My thanks go to Robert Burrell for all his assistance, especially for locating the Public Record Office documents, and to Megan Jones and Brad Sherman.
 Special leave granted, unreported, S213/02, Gummow and Heydon JJ, 11 April 2003.
 The duration of each excerpt and the duration of each of Nine’s programs or segments from which the excerpts were taken are set out in TCN Channel Nine v Network Ten  FCA 108; (2001) 108 FCR 235 (hereinafter ‘Trial Decision No 1’) at 286–287 (Conti J).
 Although not required to do so, in Trial Decision No 1 Conti J determined whether Ten’s pleaded fair dealing defences would have been established. On appeal, Nine did not appeal, and Ten did not put on a Notice of Contention in relation to, nine of Conti J’s findings as to fair dealing.
 See Michael Handler & David Rolph, ‘“A Real Pea Souper”: The Panel Case and the Development of the Fair Dealing Defences to Copyright Infringement in Australia’ (2003) 27 MULR (forthcoming) for criticism of the way in which both Conti J and the Full Court articulated the legal principles governing fair dealing and applied the fair dealing defences. See also David J Brennan, ‘Copyright and Parody in Australia: Some Thoughts on Suntrust Bank v Houghton Mifflin Company’ (2002) 13 AIPJ 161 at 163–164; Melissa de Zwart, ‘Seriously Entertaining: The Panel and the Future of Fair Dealing’ (2003) 8 Media and Arts LR 1 at 12, 17
 As a result of the Copyright Amendment (Digital Agenda) Act 2000 (Cth), which came into force on 1 April 2001, s87(c) now reads: ‘in the case of a television broadcast or of a sound broadcast — to re-broadcast it or communicate it to the public otherwise than by broadcasting it’. This amendment does not impact on any aspect of the case.
 Trial Decision No 1, above n2.
 TCN Channel Nine v Network Ten (No 2) (2001) AIPC 39,722 (hereinafter ‘Trial Decision No 2’).
 Trial Decision No 1, above n2 at 272.
 Id at 288.
 Trial Decision No 2, above n7 at 39,724–39,725.
 Id at 39,726.
 TCN Channel Nine Pty Ltd v Network Ten Pty Ltd  FCAFC 146; (2002) 118 FCR 417 (hereinafter ‘Full Court Decision’) at 434.
 Id at 433.
 Id at 436. See also at 422 (Finkelstein J).
 Id at 436.
 Id at 437.
 Id at 422. Sundberg J purported to agree with both Finkelstein and Hely JJ’s reasons, at 419.
 Id at 436 (Hely J).
 The Full Court’s approach has received support in principle: see James Lahore, Copyright and Designs (Butterworths Looseleaf Service, updated June 2003) at 34,117.
 Compare Copyright, Designs and Patents Act 1988 (UK) s17(4): ‘Copying, in relation to a film, television broadcast or a cable programme includes making a photograph of the whole or any substantial part of any image forming part of the film, broadcast or cable programme.’ As a result, it has been suggested that making a film of a broadcast will infringe only if ‘a whole or substantial part of the broadcast’ is copied, see Kevin Garnett, Jonathan Rayner James & Gillian Davies (eds), Copinger and Skone James on Copyright (14th ed, 1999) (hereinafter Copinger) at para 7-101.
 Trial Decision No 2, above n7 at 39,725.
 See generally Lionel Bently & Brad Sherman, Intellectual Property Law (2001) at 75.
 Staniforth Ricketson & Christopher Creswell, The Law of Intellectual Property: Copyright, Designs and Confidential Information (LBC Information Services, 2nd revised ed, 2002) at para 8.100.
 See Ten’s submission, quoted in Trial Decision No 2, above n7 at 39,726 (Conti J). Hely J criticised this submission on the basis that it failed to recognise that television broadcast copyright can be infringed only by taking the actual images or sounds broadcast (Full Court Decision, above n12 at 437). However, cinematograph films and sound recordings can themselves only be infringed by the taking of actual images or sounds (see in relation to cinematograph films, Telmak Teleproducts Australia Pty Ltd v Bond International Pty Ltd (1985) 66 ALR 118 at 124 (Wilcox J); Norowzian v Arks Ltd (No 1)  FSR 394 at 400 (Deputy Judge Steinfeld QC); and in relation to sound recordings, CBS Records Australia Ltd v Telmak Teleproducts (Aust) Pty Ltd (1987) 17 FCR 48 at 51–52 (Bowen CJ)). To the extent that Hely J suggested that television broadcast copyright is narrower in scope than in relation to underlying subject matter, such a suggestion is erroneous.
 See Stephen M Stewart, International Copyright and Neighbouring Rights (2nd ed, 1989) at 190–192; Bently & Sherman, above n24 at 98–99.
 See section 4(B) below.
 Trial Decision No 2, above n7 at 39,729 (Conti J); Full Court Decision, above n12 at 426 (Hely J).
 Trial Decision No 2, id at 39,730.
 Full Court Decision, above n12 at 435.
 See R v L (1994) 49 FCR 534 at 538 (Burchett, Miles & Ryan JJ); D C Pearce & R S Geddes, Statutory Interpretation in Australia (5th ed, 2001) at 26–27.
 See Newcastle City Council v GIO General Ltd  HCA 53; (1997) 191 CLR 85 at 113 (McHugh J).
 See CIC Insurance Ltd v Bankstown Football Club Ltd (1997) 187 CLR 384 at 408 (Brennan CJ, Dawson, Toohey & Gummow JJ).
 See Pearce & Geddes, above n32 at 27.
 Full Court Decision, above n12 at 436–437 (Hely J).
 Before the commencement of the Copyright Amendment (Digital Agenda) Act 2000 (Cth) on 1 April 2001, ‘broadcast’ was defined in s10(1) of the Copyright Act as a verb, meaning ‘transmit by wireless telegraphy to the public’. It is now defined as ‘a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992’.
 Sir Hugh Laddie, Peter Prescott, Mary Vitoria, Adrian Speck & Lindsay Lane, The Modern Law of Copyright and Designs (3rd ed, 2000) at para 8.15.
 Compare Ricketson & Creswell, above n25 at para 9.520.
 Emphasis added. Section 135B is located in Part VA of the Copyright Act, which deals with copying and communicating of broadcasts by educational institutions.
 Copyright Act 1968 (Cth) s10(1)(a).
 See generally Brad Sherman & Lionel Bently, The Making of Modern Intellectual Property Law: The British Experience, 1760-1911 (1999) at 192–193, arguing that unlike patents, designs and trade marks, where the scope of the property was determined through representative registration, copyright law deals with the object itself rather than a representation thereof, leaving the courts to decide how the nature and limits of the object should be defined.
 Full Court Decision, above n12 at 419 (Sundberg J), 436–437 (Hely J).
 Id at 419 (Sundberg J), 422 (Finkelstein J).
 Id at 436 (Hely J).
 See Brad Sherman, ‘Digital Property and the Digital Commons’ in Christopher Heath & Anselm Kamperman Sanders (eds), Intellectual Property in the Digital Age: Challenges for Asia (2001) at 101–108.
 Id at 103–104; Nationwide News Pty Ltd v Copyright Agency Ltd  FCA 1045; (1995) 55 FCR 271 at 286–287 (Wilcox J); CCH Canadian Ltd v Law Society of Upper Canada (2002) 212 DLR (4th) 385 at 461-462 (Rothstein JA).
 See also Data Access Corporation v Powerflex Services Pty Ltd  HCA 49; (1999) 202 CLR 1 at 27, where Gleeson CJ, McHugh, Gummow & Hayne JJ held in part that individual words were not ‘computer programs’ as defined in s10(1) because each word was not a ‘set of instructions’.
 Copyright Act (1956), 4 & 5 Eliz II, c74.
 An approach supported by various text writers: see Stewart, above n27 at 220; Jeremy Phillips, Robyn Durie & Ian Karet, Whale on Copyright (4th ed, 1993) at 32; World Intellectual Property Organisation (ed), Introduction to Intellectual Property Theory and Practice (1997) at 120, 160.
 United Kingdom, Report of the Copyright Committee, Cmnd 8662 (1952) (hereinafter ‘Gregory Committee’) at para 328 (Recommendation 31) (emphasis added). See also at paras 117, 186, 192. See also the discussions of clause 14 of the Copyright Bill 1956 (UK) in UK Public Record Office Document BT 281/14, Board of Trade, Solicitor’s Department, Bill Papers, Copyright Act 1956: Department Papers: ‘The prohibition on the copying of the programme, for example the manufacture of a gramophone record from a sound broadcast or a film from a television broadcast, is in general lines with current thinking’ (emphasis added). See further UK Public Record Office Document BT 209/533, Board of Trade, Patent Office and Industrial Property and Copyright Department, Copyright Bill 1955–56: instructions and memoranda prior to introduction in Parliament, in which the President of the Board of Trade, in minute 5, made it clear that broadcast copyright was to subsist in programs.
 Copinger, above n22 at para 3–61.
 Full Court Decision, above n12 at 428 (Hely J).
 See, for example, the lack of any comment in the Second Reading Speeches in the House of Lords and the House of Commons: Mr P Thompson, UK, House of Commons, Parliamentary Debates (Hansard), 4 June 1956 at cols 498–559; UK, House of Lords, Parliamentary Debates (Hansard), 15 November 1955 at cols 715–811. Similarly, there is nothing in the 1958 edition of Copinger to indicate that the provisions of the Copyright Act 1956 (UK) were intended to extend beyond the recommendations of the Gregory Committee, see FE Skone James & EP Skone James, Copinger and Skone James on the Law of Copyright (9th ed, 1958) at 294–295, 297–298.
 Copyright Law Review Committee, Parliament of the Commonwealth of Australia, Report of the Committee appointed by the Attorney–General of the Commonwealth to Consider what Alterations are Desirable in the Copyright Law of the Commonwealth (Canberra: CCP, 1959) (hereinafter ‘Spicer Report’) at para 288.
 Id at paras 292–3. See also at para 286: ‘there seems to us, at least in the case of television, to be a case for protection against the display in public to a paying audience of the programme received.’
 In the Second Reading Speech for the 1968 Bill, the Attorney–General noted that the Bill established a ‘new category of protection’ for television broadcasts, in addition to the provisions under the Broadcasting and Television Act 1942 (Cth). These provisions prohibited the Australian Broadcasting Commission or a licensee of a commercial broadcasting station from broadcasting ‘the programme’ of another broadcasting station (see s121(1)). The Attorney–General’s reference to a ‘new category of protection’ suggests that under the Copyright Act broadcasters were to be granted rights in their broadcasts – it does not suggest that the scope of these broadcasts was any different from before: see Sir Nigel Bowen, Commonwealth of Australia, House of Representatives, Parliamentary Debates (Hansard), 16 May 1968 at 1533.
 United Kingdom, Report of the Committee to consider the Law on Copyright and Designs, Cmnd 6732 (1977) at para 464 (emphasis added). See also at paras 465, 468 (Recommendation (x)).
 Sections 1(1)(b), 7(1).
 Section 6(3).
 Section 69(1).
 During the passage of the Cable and Broadcasting Bill 1984 (UK), it was suggested that the new s14A of the 1956 Act was intended to provide cable operators with copyright in their own programmes comparable in extent to the right given to broadcasters, see Baroness Trumpington, UK, House of Lords, Parliamentary Debates (Hansard), 2 February 1984 at cols 846; Viscount Long, UK, House of Lords, Parliamentary Debates (Hansard), 1 March 1984 at cols 1422–1423. In the debate over the Copyright, Designs and Patents Bill 1988 (UK), s6(3) was seen as significant only because it meant that ‘programme contractors’ were to be treated as broadcasters, see Lord Young of Graffham, UK, House of Lords, Parliamentary Debates (Hansard), 2 November 1988 at cols 201–203. Section 69(1) in its present form was not commented on at all, see Lord Beaverbrook, UK, House of Lords, Parliamentary Debates (Hansard), 29 March 1988 at cols 655–656. In addition, commentaries on these new provisions did not suggest that they had altered the scope of copyright in broadcasts, see Gerald Dworkin & Richard D Taylor, Blackstone’s Guide to the Copyright, Designs and Patents Act 1988 (1989) at 29–30, 47; Copinger, above n22 at paras 4–73, 7–134, 9–102.
 See Neil Netanel, ‘Copyright and a Democratic Civil Society’ (1996) 106 Yale LJ 283 at 309.
 Id at 325–336; Sherman, above n47 at 105.
 As acknowledged by Nine, see Trial Decision No 1, above n2 at 260 (Conti J).
 See UK Public Record Office Document BT 281/14, above n52: ‘The production and emission of the programmes calls for considerable financial outlay and the exercise of considerable skill and it is nothing more than natural justice that the BBC or ITA (in the legitimate interests of the programme contractors) should be given power to control any subsequent copying of these programmes by any means whatsoever’. See also Newspaper Licensing Agency Ltd v Marks and Spencer Plc  UKHL 38;  3 WLR 290 at 295, 296, where Lord Hoffmann held that the term ‘published edition’ should be interpreted as understood by publishers in the publishing trade.
 See, for example, Robert Merges, ‘Are You Making Fun of Me? Notes on Market Failure and the Parody Defense in Copyright’ (1993) 21 American Intellectual Property Law Association QJ 305 at 306.
 Sherman, above n47 at 107–108.
 Unreported, UK High Court, Mr Hugh Laddie QC, 17 May 1991.
 Id at para 17. See also CCH Canadian Ltd v Law Society of Upper Canada, above n48 at 461 (Rothstein JA): ‘some limitations must exist on the degree of disaggregation that is permissible when characterising a work’.
 Hyperion Records Ltd v Warner Music (UK) Ltd, id at para 17.
 Trial Decision No 1, above n2 at 270.
 Id at 272.
 Id at 270. See also CCH Canadian Ltd v Law Society of Upper Canada, above n48 at 422 (Linden JA), 460 (Rothstein JA).
 Trial Decision No 1, id at 272.
 1 & 2 Geo V, c46, s1(2).
 Copyright Act 1912 (Cth) s8.
 Ladbroke (Football) Ltd v William Hill (Football) Ltd  1 WLR 273 (hereinafter Ladbroke) at 283 (Lord Evershed).
 Id at 276 (Lord Reid), 283 (Lord Evershed), 288 (Lord Hodson), 293 (Lord Pearce); Autodesk Inc v Dyason (No 2)  HCA 6; (1992) 176 CLR 300 at 305 (Mason CJ).
 Ladbroke, id at 287–288 (Lord Hodson), 293 (Lord Pearce). This focus on the originality of the part taken has been approved by the High Court in respect of computer programs: Autodesk Inc v Dyason (No 2), id at 305 (Mason CJ), 312 (Brennan J); Data Access Corporation v Powerflex Services Pty Ltd, above n49 at 32–33 (Gleeson CJ, McHugh, Gummow & Hayne JJ).
 Robert Burrell, ‘Reining in Copyright Law: Is Fair Use the Answer’  IPQ 361 at 372.
  FCA 1395; (1996) 65 FCR 399 (Jenkinson, Burchett & Sackville J) (hereinafter Nationwide).
  UKHL 38;  3 WLR 290 (hereinafter NLA).
 Nationwide, above n83 at 418–419 (Sackville J); NLA, id at 298 (Lord Hoffmann).
 NLA, id at 297, 298.
 Nationwide, above n83 at 416–417 (Sackville J).
 Gregory Committee, above n52 at para 117.
 Trial Decision No 1, above n2 at 274 (Conti J).
 See Bently & Sherman, above n24 at 179–180. Compare Kabushiki Kaisha Sony Computer Entertainment v Stevens  FCAFC 157 (Unreported, French, Lindgren and Finkelstein JJ, 30 July 2003) at para 224 (Finkelstein J).
 Copinger, above n22 at para 7–96.
 University of London Press Ltd v University Tutorial Press Ltd  2 Ch 601 at 610 (Peterson J), quoted with approval in Ladbroke, above n79 at 279 (Lord Reid), 288 (Lord Hodson), 293–294 (Lord Pearce).
 Laddie et al, above n38 at para 8.37.
 The ‘test’ was propounded by Peterson J in the context of determining whether subject matter could be regarded as an original literary work.
 Nationwide, above n83 at 417–418 (Sackville J); Hyperion Records Ltd v Warner Music (UK) Ltd, above n70 at para 31 (Deputy Judge Laddie QC); Lionel Bently, ‘Sampling and Copyright: Is the Law on the Right Track? (Part II)’  JBL 405 at 406. See also R v Licensing Authorities, ex parte Smith Kline & French Laboratories Ltd  AC 64 at 106 (Lord Templeman).
 Laddie et al, above n38 at para 8.37.
 Id at para 7.59.
 Copyright Act 1968 (Cth) s25(4)(a).
  Ch 593 at 606, quoting Chatterton v Cave (1878) LR 3 App Cas 483 at 492 (Lord Hatherley).
 Scott v Stanford  UKLawRpEq 23; (1867) LR 3 Eq 718 at 722 (Sir W Page Wood V–C), quoting Folsom v Marsh (1841) 2 Story 100 at 116 (Story J), a Massachusetts District Circuit Case on ‘fair abridgement’.
 Nationwide, above n83 at 419.
 Copinger, above n22 at para 7–31. Compare Kabushiki Kaisha Sony Computer Entertainment v Stevens, above n90 at para 224 (Finkelstein J).
 As was held in Trial Decision No 1, above n2 at 288 (Conti J).
 Id at 265–266.
 See Bently, above n95 at 408.
 See Cambridge University Press v University Tutorial Press (1928) 45 RPC 355 at 343–344 (Maugham J).