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High Court of Australia Transcripts |
Office of the Registry
Sydney No S95 of 1997
B e t w e e n -
PHONOGRAPHIC PERFORMANCE COMPANY OF AUSTRALIA LIMITED
First Appellant
EMI MUSIC AUSTRALIA PTY LIMITED
Second Appellant
BMG AUSTRALIA LIMITED
Third Appellant
CASTLE COMMUNICATIONS AUSTRALIA LIMITED
Fourth Appellant
DINO MUSIC PTY LIMITED
Fifth Appellant
ETC ELECTRICAL PTY LIMITED trading as SUBTERRANEAN RECORDS
Sixth Appellant
FESTIVAL RECORDS PTY LIMITED
Seventh Appellant
HADLEY RECORDS PTY LIMITED
Eighth Appellant
LARRIKIN ENTERTAINMENT PTY LIMITED
Ninth Appellant
MIDNIGHT RECORDS PTY LIMITED
Tenth Appellant
MCA MUSIC ENTERTAINMENT LIMITED
Eleventh Appellant
POLYGRAM PTY LIMITED
Twelfth Appellant
SONART MECA PTY LIMITED
Thirteenth Appellant
SONY MUSIC ENTERTAINMENT (AUSTRALIA) LIMITED
Fourteenth Appellant
STONEBARD PTY LIMITED trading as NATURAL SYMPHONIES
Fifteenth Appellant
THE MASSIVE RECORDING CO PTY LIMITED
Sixteenth Appellant
WARNER MUSIC AUSTRALIA PTY LIMITED
Seventeenth Appellant
MOIRA McCOURT trading as GIRL ZONE RECORDS
Eighteenth Appellant
MARTIN WRIGHT trading as MOVE RECORDS
Nineteenth Appellant
WAYNE SMITH trading as RIGID RECORDS
Twentieth Appellant
NEVILL LOUIS SHERBURN trading as SWAGGIE RECORDS
Twenty-First Appellant
and
FEDERATION OF AUSTRALIAN COMMERCIAL TELEVISION STATIONS
Respondent
GAUDRON J
McHUGH J
GUMMOW J
KIRBY J
HAYNE J
TRANSCRIPT OF PROCEEDINGS
AT CANBERRA ON MONDAY, 3 NOVEMBER 1997, AT 10.17 AM
Copyright in the High Court of Australia
MR D.K. CATTERNS, QC: May it please the Court, I appear with my learned friend, MR R. COBDEN, for the appellants. (instructed by Gilbert & Tobin)
MR P.G. HELY, QC: If the Court pleases, I appear with MR M.R.J. ELLICOTT for the respondents. (instructed by Boyd House & Partners)
GAUDRON J: Yes, Mr Catterns.
MR CATTERNS: May it please the Court, I think the Court has both our outline of submissions filed a week or so ago and our learned friends' outline and I think the Court has been provided today with a joint bundle of the extrinsic materials which we were going - - -
GAUDRON J: Yes. It might be the intrinsic materials that are more important in this case. I think we might be assisted by an analysis of the statutory provisions.
MR CATTERNS: Your Honour, with great respect that is our submission and our initial submission is that one does not need to go outside the definition provisions which, we submit, include section 23.
GUMMOW J: I think you have to go outside the definition provisions.
MR CATTERNS: Your Honour, one has to deal with, of course, the rights in section 85 and 86 and the other provisions relating to subsistence, ownership and so on.
GUMMOW J: Well, and sections 105, 106, 107, 108, 109, 110.
MR CATTERNS: Yes, your Honour. But we submit the basic structure is clear from looking at section 23 in the context of section 10, and then it is - - -
GUMMOW J: I understand all that, Mr Catterns, but just tell me how this litigation has come about.
MR CATTERNS: Yes, your Honour. It has come about by - - -
GUMMOW J: You made a sound recording, or your clients made a sound recording.
MR CATTERNS: Yes, your Honour.
GUMMOW J: What happened then?
MR CATTERNS: Well, your Honour, the sound recordings, both of them, were reproduced. Your Honour, the agreed facts appear at 44.
GUMMOW J: Yes, just tell me.
MR CATTERNS: Your Honour, our sound recordings were reproduced, or embodied in the sound track of two cinematograph films, with licence.
GUMMOW J: So, there was a licence to permit the film to be made using your sound recording?
MR CATTERNS: Yes, your Honour.
GUMMOW J: Okay.
KIRBY J: Presumably that was done a for consideration.
MR CATTERNS: Yes, your Honour, certainly. There is no fact about that, but no doubt, and then - - -
KIRBY J: This was not Vietnam or Taiwan?
MR CATTERNS: No, your Honour. And then those films were broadcast by Channel 7, Sydney. That is an agreed fact. The question, the only question - - -
GUMMOW J: Well, wait a minute. And then Channel 7, Sydney, had a licence from the owner of the copyright in the film.
MR CATTERNS: Yes, your Honour.
GUMMOW J: And they say that is all they needed.
MR CATTERNS: Yes, your Honour.
GUMMOW J: But what were you trying to do in the Copyright Tribunal?
KIRBY J: It sounds reasonable, in that you would therefore have been paid for the use of your copyright in the agreement you had with the filmmaker.
MR CATTERNS: But, no, your Honour, with respect, because that is - as your Honour knows, copyright is divisible into a number of rights. That is an exercise of our reproduction right, the right to copy a sound recording. We also have another right, which is the right to broadcast the sound recording, and we want to be paid for that. So, what happens is, your Honour, picking up his Honour Justice Gummow's question, the sound recording is broadcast - - -
GUMMOW J: So, you say that when Channel 7 telecast this film, they needed, if they were not to infringe, a licence in respect of your sound recording, as well as, which they did have, a licence for the cinematograph film?
MR CATTERNS: Yes, your Honour.
GUMMOW J: As well as, which they did have, a licence of the cinematograph film.
MR CATTERNS: Yes, your Honour, and the licence of the owner of the copyright in the music and so on.
GUMMOW J: How does that section 109 fit into it?
MR CATTERNS: Your Honour, that gives them the licence. That is the statutory licence. We say that they broadcast our sound recording pursuant to the statutory licence of 109 and we would like money under section 152. We are allowed to go to the Copyright Tribunal and get equitable remuneration for that statutory or compulsory licence.
GUMMOW J: So you say that the licence will give them a defence under 109 to an infringement?
MR CATTERNS: Yes, your Honour.
GUMMOW J: And the infringement would be under what section, infringement of your sound recording?
MR CATTERNS: First, your Honour, 85(1)(c), which we have the exclusive right to broadcast the recording, and then of course, your Honour, 101, which is the doing of an act comprised in the copyright, and by section 13, the acts comprised in the copyright include those ones set out in 85. So, your Honour, our position - - -
GUMMOW J: Yes. But do they say, do they, that they do not need a licence under 109, because they are not infringing?
MR CATTERNS: Because they are not broadcasting the sound recording?
GUMMOW J: Yes.
MR CATTERNS: Because by section 23 it is deemed not to be a sound recording.
GUMMOW J: Yes. But all these sections, starting at 105 and going through, they all say certain things will not be infringements.
MR CATTERNS: That is right, your Honour.
GUMMOW J: One of them is 109.
MR CATTERNS: Yes, your Honour, and 107.
GUMMOW J: But there is no section saying that it will not be an infringement to broadcast a cinematograph film, including, of course, the sound recording.
MR CATTERNS: No, your Honour, you need a licence from the copyright owner.
GUMMOW J: No, no, but there will not be an infringement of the sound recording merely by telecasting a film, the soundtrack of which embodies the sound recording.
MR CATTERNS: That is right, your Honour. Our friends get that - a defence from section 23.
GUMMOW J: Yes, all right.
MR CATTERNS: And we respectfully submit that that is a misconception, because section 23 is acting as an interpretation provision, classifying the relevant subject matter, namely the sounds.
GUMMOW J: Mr Hely says that section 110(3) is something against you.
MR CATTERNS: Yes, he does, your Honour and our answer to that is - - -
GUMMOW J: Now how does section 110 operate? I do not understand it at the minute.
MR CATTERNS: Your Honour, as follows, we have a sound recording, a pre-existing sound recording in which we own the copyright. Those sounds are embodied in the soundtrack of the film together with a lot of other material: dialogue, car crashes, shots, et cetera. Then, of course, the soundtrack of that film is part of the cinematograph film. By section 23 it is deemed not, in addition, to be a sound recording. If you then, looking at 110(3), make use of a record - now I add the words, your Honours, -
derived directly or indirectly from -
it, then, of course, you infringe the copyright in the film. But then, your Honour, what this does is make it clear that if a use of our pre-existing record which, after all, is at least possibly a substantial part of that film, assume our pre-existing record is the whole recording of Voss, that takes up 59 minutes of the 60 minute film.
A use of our sound recording, say, by copying a CD of our pre-existing sound recording, does not constitute an infringement of copyright in the film. So that is the work that 110(3) does. It says when you copy the sound recording, which happens to be part of the film, you do not infringe the copyright in the film, you infringe the copyright, as you always would, in the sound recording unless what you have copied is in the chain below the film "derived directly or indirectly" from the soundtrack of the film.
KIRBY J: Mr Catterns, may I just say you have jumped, in the space of seven minutes, through about 20 sections of the Act. I am not as familiar with the Act as Justice Gummow and I would not like you to assume that I have followed everything you have said so far.
MR CATTERNS: Thank you, your Honour. I am, of course, very grateful for his Honour taking me to the issues, but I do propose, if I may, to take your Honours to the basic structure.
KIRBY J: As far as I am concerned it is just another federal Act that needs to be dealt with in the proper way.
MR CATTERNS: Yes, your Honour. Thank you, your Honour, I certainly propose to do that.
GUMMOW J: Well before we leave section 110(3) though, Mr Hely says that would not be necessary unless you were wrong in your construction of the interpretation section. He may be right or he may be wrong in that.
MR CATTERNS: Well, your Honour, we would respectfully disagree with him because we say it works in the way that I have just put it to your Honour. Although I plan not to go to the legislative history until a long way down the track, there is a phrase in the legislative history that, we submit, makes that clear. It is consistent precisely with the way I have put it to the Court now.
Your Honours, just finishing how it got here, if I may. Our case is in the Copyright Tribunal that our learned friend's clients have broadcast our sound recordings, and they do that in two ways, they broadcast sound recordings direct about which there is no debate and 109 would apply and we would get royalties under 152. By "direct" I mean, for example, playing a record at the same time as the news is played or, in the old days, test patterns when they played less than 24 hours of programmes. But the debate is when a film is broadcast and, of course, that does not just include feature films, it may include programmes that are made by soap operas, all the series, even what is now called lifestyle programmes such as Burkes Backyard and so on. They are pre-recorded - there is a film made. Say they - - -
KIRBY J: Why is it called a lifestyle programme?
MR CATTERNS: I think that to improve your lifestyle, your Honours backyard, your Honours cooking skills, and so on.
KIRBY J: That is what a lifestyle is?
MR CATTERNS: Yes, your Honour.
KIRBY J: Thank you.
MR CATTERNS: When either the TV station itself or an independent contractor makes that film of an hour programme or half an hour programme, they embody in their film a sound recording with our licence - the jargon is a synchronisation licence. They synchronise the sound recording of the film. They have the licence for that. Then they broadcast that. We say, pursuant to 109, and perhaps if I can take your Honours to it. They say:
Subject to this section, the copyright in a published sound recording is not infringed -
so it is a defence -
by the making of a broadcast of that recording if:
(a) where there is no order .....in force.....the maker of that broadcast has given an undertaking in writing to the.....owner of the copyright.....to pay to the owner such amounts (if any) as may be specified in, or determined in accordance with, an order of the Tribunal.
I think that is all we need to go to there your Honours. Then 109(2) allows you to make an agreement rather than rely on what the jargon is called, "statutory licence" or "compulsory licence", so our friends do not have to rely on 109(1). They can come to our client, PPCA, Phonographic Performance Company, and get a licence. But, then one goes to the Copyright Tribunal, section 152, and under section 152(2) we have made an application to the tribunal for an order determining the amount payable by each of our learned friend's clients - all of the Australian commercial television stations - and they become a party; the tribunal considers it under 6; it determines the amount payable by the broadcaster etc - - -
KIRBY J: This is the procedure that was stood over whilst the question of law was submitted by the tribunal?
MR CATTERNS: That is right, your Honour.
KIRBY J: Because if you fail, then that is not necessary.
MR CATTERNS: Your Honour, this is answering your Honour's question, under (7) the tribunal takes into account, as you would expect, all relevant matters including the extent to which they use, for the purpose of broadcasting, records embodying sound recordings. Our friends say that because of section 23, the tribunal does not have to take into account all of the uses made via films, so, that is why there is a debate. Then, by section 161, his Honour Justice Shepphard, who was then the President of the tribunal, referred the question of law to the Full Court of the Federal Court, and those matters go direct to the Full Court, and that is what has occurred and that is how we are here, your Honours.
KIRBY J: But, is it correct that if you fail, that inquiry under section 152 is not necessary?
MR CATTERNS: No, your Honour, there is a tiny bit left but certainly a huge - - -
KIRBY J: That is the tiny bit under subsection (7)?
MR CATTERNS: No, your Honour. It would be just the amount of sound recordings that were broadcast direct.
KIRBY J: I see.
MR CATTERNS: Rather than via a film which, as a matter of fact, no doubt, would be a very small percentage. There are some cases where, for example, perhaps on a live broadcast of a football match somebody plays a record simultaneously, or something like that, or the test pattern - - -
KIRBY J: I have never had the pleasure.
MR CATTERNS: Yes, your Honour. But I think it is true to say that in modern TV broadcasting, much of the material will have been pre-recorded in the form of a film and, as I say, it is much beyond just what we would think of as feature films which are the ones that happen to be in the agreed facts. So, while it will not determine the copyright tribunal case, it will knock out a huge slice of our repertoire, to put it shortly.
Our friends say it does do that because by section 23, they are not broadcasting our sound recordings when they broadcast the film. Without section 23, your Honours, of course, there would be no doubt because when you broadcast a film you broadcast all the underlying material. You broadcast the literary work, if there be any in there. You broadcast the dramatic work which is the script. You broadcast all the musical works and the literary works that are sung along with the musical works and so on.
If, for example, there is a cinematograph film, some footage from another film in the film we are interested in, you are broadcasting that too. So, there is no doubt, we submit, and so far it has been common ground, that when you broadcast a film you broadcast all of the underlying subject matter.
KIRBY J: When a broadcast is made of, say, The Shoes of the Fisherman, would Morris West's copyright entitlement in the original idea still subsist or not?
MR CATTERNS: Yes, your Honour, but he probably granted an assignment of his broadcast right to the filmmaker.
KIRBY J: And you did not do that?
MR CATTERNS: No, your Honour.
KIRBY J: In the United States is there an equivalent entitlement or are they still outside this regime?
MR CATTERNS: They are outside this regime, your Honour, and if I may say so, that is reflected in our international protection regulations where, unlike the regime that applies with respect to works, where everybody in the Berne Convention gets what is called national treatment, the same treatment as Australians, we base our protection of the broadcast right and the performance rights in sound recordings on a question of reciprocity and there is Schedule 3 of the international protection regulations includes as protected - that is my phrase - as protected sound recordings those which have a broadcast or performance right the countries which give us an equivalent right, which includes the UK and most European countries, for example.
KIRBY J: So films from the United States would fall outside this regime?
MR CATTERNS: Yes, your Honour, because we do not hold a broadcast right.
KIRBY J: Reciprocal arrangements.
MR CATTERNS: So even if we win today, one of the inquiries before the Copyright Tribunal will be what percentage of - your Honour, I should not have accepted films in the US. It is sound recordings from the US embodied in films. It does not matter where the film is made. It is the sound recording, but sound recordings not made in the US, if I can use that as a shorthand. American sound recordings do not have the broadcast right and so there will be evidence based on our learned friend's logs of what they have and have not broadcast. There will be evidence that, say, 50 per cent of records are protected, in my jargon, namely - I am sorry, 50 per cent of sound recordings are protected in that they own the broadcast right.
So, your Honours, as we have submitted, if it were not for section 23(1), our learned friends would be broadcasting our sound recordings and the fact that we have granted a licence to reproduce our sound recording or, to be precise, to make a copy of our sound recording in terms of section 85(1)(a) does not answer the question. We have the other rights. It is utterly routine in copyright law to divide up your rights, give your reproduction rights or even a slice of your reproduction right to one person, your broadcast right to another and so on.
So, your Honours, then if I just perhaps come to 23 fairly shortly, can I just stress this. There is a fundamental copyright concept that needs to be borne in mind which is the distinction between the elements that make up copyright subject matter, the very thing that is protected, and the name we give it under the Act, of course, and then the physical thing that it is embodied in.
For example, your Honours, a musical work is a collocation of notes, ideas of melody and so on; literary works are collocations of words; a sound recording is an aggregate of sounds; a cinematograph film is an aggregate of images and sounds; a published edition - you protect the typography and layout, not the work itself, and so on. Now, your Honours, then there is the question of the material form, the physical object - - -
GUMMOW J: What did you say sound recording was?
MR CATTERNS: It is an aggregate of sound, your Honour. I am going to come to embodying it in the record.
GUMMOW J: Well, that is what the definition said. It has got to be embodied in something.
MR CATTERNS: Precisely, your Honour, and for the obvious reason that the - - -
GUMMOW J: That is what the definition says, anyway.
MR CATTERNS: Precisely. And, your Honour, the whole territorial notion of copyright is that you need a physical embodiment of each of these things, including the literary work, before copyright can subsist in it; hence, we have section 22, which provides for the making - this concept of making, whereby all of these elements, whether they be notes, words, sounds, images, are put into some material form.
KIRBY J: Does the Act now cover in the form only of electronic messages, if a thing is not, of itself, reduced to hard copy, but is simply in electronic form, or not?
MR CATTERNS: Well, your Honour, if it is stored in ROM - read only memory - it would be a material form, I would submit, without doubt. There is a definition, your Honour, of "material form" in section 10(1) - I think this is partially answering your Honour's question - - -
KIRBY J: Yes. Well, I will have a look at that. It is not relevant in this case.
MR CATTERNS: Yes, your Honour. There is a debate about whether RAM is a material form because it is so evanescent. On the other hand, you can leave your computer on forever and it is never wiped from the random access memory.
KIRBY J: Does the definition of "film" exclude films that are held in electronic form?
MR CATTERNS: No, your Honour, I think not. Your Honour, a film stored in a silicon chip - your Honour, the definition of "cinematograph film" is in 10(1):
the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing:
(a) of being shown as a moving picture; or -
There is a Full Court decision in Avel of the Federal Court which is coming up for special leave, holding that a video game, where the film is embodied in a silicon chip, is a cinematograph film. But, your Honour, with respect, your Honour's questions point up the question, which is - it is perhaps not the precise question today, of course, but all of these subject matter have to be embodied in some physical form, including, in the case of broadcasts, the embodiment is - if we can call it that - wireless telegraphy - electromagnetic radiation. But that distinction between those concepts of the elements that make up the subject matter and the physical thing, we submit, is important. Now, your Honours, if I could then go to the definitions, following which I was going to take your Honours to section 23. The definitions - - -
GUMMOW J: Well, you say "definitions," but the whole of these sections are in PartII, are they not? That is their interpretation.
MR CATTERNS: Yes, your Honour.
GUMMOW J: Throughout these sections, starting at section 11, there are two phrases. The sections say either "for the purposes of this Act" - some of them say that - and some of them say "a reference in this Act."
MR CATTERNS: Yes, your Honour, absolutely.
GUMMOW J: Now, what is the scheme of Part II?
MR CATTERNS: Generally speaking, they are interpretation provisions. Your Honour, so far - - -
GUMMOW J: What is the point in some sections in saying "for the purposes of this Act" and in other sections saying "a reference in this Act"? The draftsman obviously had some distinction in mind, but I cannot find, in the Full Court below, namely, as a product of the submissions given to it, any analysis of what Part II is all about.
MR CATTERNS: Your Honour, it is - - -
KIRBY J: The formula in 10(1) seems softer than the formula in 23. Section 10(1) is the usual interpretation provision; you can easily knock it out.
MR CATTERNS: Yes.
KIRBY J: Section 23 is a strong thing. It is, "For the purposes of this Act".
MR CATTERNS: Yes, your Honour. May I say that our submissions take that on board and we accept that section 23(1) applies for all the purposes of the Act. We do not say there are some purposes to which it could apply that it does not apply - - -
GUMMOW J: But what does "purpose" mean?
MR CATTERNS: Your Honour, it means for the purpose of the definition of cinematograph film and sound recording. It means for the purpose of the subsistence of copyright in cinematograph films and sound recordings - 85 and 86 - ownership, duration, and infringement and all the defences. So the purposes of this Act include, for example, your Honour, section 109. For the purposes of this Act section 23(1) applies to that, as our friends would want it to. We accept that, 23(1) applies for those purposes, and it is just a question about what 23(1) means.
May I draw a distinction, your Honours? In the Avel v Multicoin Case, concerning the question of whether the parallel importation of video games, the computer programmes being literary works, constituted a - - -
GUMMOW J: You had better give us the citation.
MR CATTERNS: I beg your pardon, your Honour?
GUMMOW J: What is the citation?
MR CATTERNS: Your Honour, it is in our list here.
GUMMOW J: I know, but it has to get on the transcript, Mr Catterns.
MR CATTERNS: Your Honour, it is Avel Pty Limited v Multicoin Pty Limited [1990] HCA 58; (1990) 171 CLR 88 at 93. Your Honours, what I was going to - - -
GUMMOW J: That used this expression - that was about section 29.
MR CATTERNS: Yes, your Honour.
GUMMOW J: That used this expression, "For the purposes of this Act".
MR CATTERNS: Yes, your Honour. And the point is this, your Honours: even without what his Honour Justice Kirby called "stronger provision" the Court nevertheless limited the purposes, at the pages that we have given reference to, the majority, his Honour the Chief Justice, Justices Deane and Gaudron, at 93 point 5, referred to the opening words of section 29(1)(a) on this question of whether - the question was whether a subsequent publication was an infringement by publication. Their Honours referred to the - - -
GUMMOW J: The meaning of that statement is not self-evidently apparent, Mr Catterns.
MR CATTERNS: I am sorry, your Honour.
GUMMOW J: You are going too fast.
MR CATTERNS: Thank you, your Honour. Your Honours - - -
KIRBY J: If you are going too fast for Justice Gummow, you are certainly going too fast for me.
MR CATTERNS: Thank you, your Honours. I had planned to come to this case a little later, but if I may just go back a step. Before taking your Honours to the passage, if I could attempt to put it in context. A computer programme, including a computer programme that runs a video game of these types, is a literary work. Then, your Honours, under section 36 of the Act a literary work is infringed by doing an act comprised in the copyright.
The acts comprised in the copyright in the literary work are, 31(1)(a):
(i) to reproduce the work in a material form;
(ii) to publish the work.
Now, your Honours, because that phrase "to publish the work" appears in 31(1)(a)(ii), attention came to section 29 which is the definition of "publish", but if I may come back to that in a moment. The applicant in the Avel Case sued for two types of infringement. Section 36 type of infringement, by publication, and section 37 and 38 type of infringement, by importation or by sale.
The trouble with the section 37 and 38 case was, you have to prove knowledge. Under the Act, as it then stood, you had to show that the importer knew, or ought reasonably to have known, that the making of the video games in Australia would have constituted an infringement. For that to be so, there had to be absence of licence established and part of the ratio of the case is it is a case about the onus on the proof of licence.
In addition, however, to the section 37 and 38 issues, the plaintiff said, "Well, I do not need knowledge because, merely - to import these games and sell them in Australia is to publish." The respondent said, "No, `publish' in section 31(1)(a)(ii) means, to split an infinitive, to first publish." The plaintiff said, "That is not right. Have a look at section 29 because it says":
for the purposes of this Act:
a literary.....work -
which is the computer programme -
shall be deemed to have been published if.....reproductions of the work.....have been supplied.....to the public -
so, bringing in these computer programmes, selling them to the public, constitutes publication. That is an infringement and the applicant says, "We win".
The Court held that was not right because despite the words, "for the purposes of this Act", we limit the operation of section 29 to being relevantly a definition of "first publish". Your Honours, it is described as a literalistic confinement of it by the three Justices on that now. So, your Honours, in that context at 93, the provision of 29(1)(a) defining when a work -
shall be deemed to have been published -
for the purposes of the Act, does not operate as a definition of what is accomplished by the words "to publish" for the purposes of 31(1). Stopping there, your Honours, it is not as forceful as it seems on first reading then, those words, "for the purposes of this Act". They are confined by all of the Justices in their operation. We do not need to do that, your Honours, here. Every purpose to which 23(1) can apply, we respectfully submit, it does apply. We do not require any confinement of it.
Your Honours see at point 5, their Honours say:
We are, of course, conscious of the fact that there is an element of artificiality involved in a literalistic confinement of s.29(1)(a) to defining when a work "has been published.....That confinement of s.29(1)(a) is, however, dictated by the content of other provisions.....by general concepts of copyright law and by considerations of policy.
Your Honours, Justice Dawson discussed the same point at 101 point 7 where his Honour says:
s.29(1)(a) is not a definition. By deeming a work to have been published if, but only, if, reproductions have been supplied to the public, the provision may afford assistance in determining whether or not publication has taken place at a particular point in time. For example.....for the purpose of.....subsistence.....or.....duration.....But to treat s.29(1)(a) as supplying the meaning of the word "publish" throughout the Act would be to produce a result that was obviously not intended.
Then his Honour Justice McHugh is at 116 to 117 - - -
GUMMOW J: His Honour points out in the House of Lords - - -
MR CATTERNS: In the Infabrics Case, yes, your Honour and his Honour, if I may skip from the passage that begins at the bottom of 116 point 6. Your Honours will see his Honour says:
The distributor also relied on s.29(1)(a).....That paragraph provides that, "for the purposes of this Act" -
et cetera. His Honour then agrees with the rest of the Justices and - - -
McHUGH J: I do not think it is right to say that I agree with the rest of the Justices. On this point, the rest of the Justices agreed with me, you mean.
MR CATTERNS: I beg your Honours pardon.
McHUGH J: I thought they did. I am just relying on my recollection, but I think that they just summarised. That passage at 93 is just a summary of their general agreement with what - - -
MR CATTERNS: I am suitably chastened, as I no doubt will be again, your Honour.
GUMMOW J: That is why I said his Honour referred to - - -
MR CATTERNS: Yes, your Honour. There had been some controversy before this case in the texts about whether the House of Lords was right or wrong in Infabrics, the argument being that section 29 said what it said and included the words "for the purposes of this Act". But, your Honours, we would respectfully submit that "for the purposes of this Act" - I am sorry, I still do not have the answer to your Honour Justice Gummow's question about the dual use of those two phrases. But so far as this phrase goes, we do not attempt to evade it or confine it and our submission is that the whole purpose of 23(1) is to say what falls into which category. What it says is that the sounds, the aggregate of sounds that form the sound-track of a cinematograph film, are put into the film basket, not the sound recording basket, because they could be in both, as I will - - -
GUMMOW J: That is a statement of conclusion, but how do the words work. When it says shall be deemed not to be the "sounds embodied in the sound-track", so it is talking about something being embodied.
MR CATTERNS: Yes, your Honour.
GUMMOW J: "Shall be deemed not to be a sound recording" and a sound recording, which you were explaining to us before, was "the aggregate of sounds embodied in a record", and a record is a disc or device, et cetera.
MR CATTERNS: Yes, your Honour, "in which sounds are embodied". But there is one more definition needed to go to. I have skipped quickly to cinematograph film a moment ago. If I could just remind your Honours, "cinematograph film", the definition of that, "includes the aggregate of the sounds embodied in a sound-track associated with such visual images". That then takes us to the definition of "sound-track", your Honours, which is just below that of sound recording. It says:
In relation to visual images forming part of the cinematograph film, means:
(a) the part of any article or thing, being an article or thing in which those visual images are embodied, in which sounds are embodied -
that is to allow for the physical idea of the celluloid film with a sound track physically in the same article.
KIRBY J: That would not be so now, if any films were - they would be in electronic form.
MR CATTERNS: Yes, your Honour, but they might both be stored in the same CD-ROM or other form. They are probably still in the same physical article or thing, so the physical article or thing in which the visual images are embodied will also embody the sounds or, alternatively, a separate article which is the (b)
a disk, tape or other device in which sounds are embodied and which is made available by the maker of the film for use in conjunction with the article or thing in which those visual images are embodied.
So, it is possible to have, say, a celluloid strip of film which embodies only the visual images and you provide a disk of some kind, or a tape, thinking in 1969 terms, which embodies those sounds. But, your Honours, looking at the definition - - -
KIRBY J: Even in 1969 that would have been very unusual.
MR CATTERNS: Even by then, your Honour, yes, your Honour, and in the other case, the Avel Case that I - - -
KIRBY J: So we are dealing with an Act which was addressed to a technology in which the physical form was the strip on the side of the film.
MR CATTERNS: Yes, your Honour, but also we would submit - - -
KIRBY J: There is a lot of law on deemed. Deemed requires a court to do something which is artificial and which otherwise would not have been. It would have been a sound recording, because it is the physical form of your recording, but the Parliament has said you deem that it is not.
MR CATTERNS: No, your Honour. Your Honour, there is a sentence in there - just one little phrase that I respectfully disagree with. I agree with your Honour as to the structure of how the deeming works, but, your Honour, looking at the definition of "sound-track", it includes "the part.....in which sounds are embodied". Now, your Honour, when we have our cinematograph film with its soundtrack, these sounds are embodied in a physical article or thing and it would otherwise, but for section 23, also be a sound recording and it is that that it is deemed not to be. It is not like deeming a man to be a woman.
KIRBY J: Exactly. Could I just ask you to pause for one moment? Soundtrack is an old technology. It is the thing on the side of the film.
MR CATTERNS: Yes, your Honour.
KIRBY J: Now, this case does not seem to have been argued on the point that films that are made otherwise than with soundtracks are going to fall outside this deeming provision of 23.
MR CATTERNS: No, that is right, your Honour.
KIRBY J: Because there will be a lot of films nowadays I would think - I do not know - which technologically do not have soundtracks at all.
MR CATTERNS: Yes, your Honour, but they definitionally do - - -
GUMMOW J: Because of (b).
MR CATTERNS: Or (a), your Honour. The modern technique, say, is a video camera or one that stores directly to magnetic tape or disc. Well, your Honours, that would be:
the part of any article or thing, being an article or thing in which those visual images are embodied, in which sounds are embodied;
So assume it is a video, just the type that one can buy for domestic use or the ones that we see that TV stations have, that is a video camera which stores it on to some magnetic or electronic medium, even electronic, your Honour, and so it stores it. It is certainly a cinematograph film within the definition of "cinematograph film", but it would also be a sound recording because a "sound recording" is:
the aggregate of the sounds embodied in a record;
and a "record" is:
a disc, tape, paper or other device in which sounds are embodied;
So that is why there is a need for a deeming provision in the way your Honour put it.
GUMMOW J: Let me understand this. If it were not for 23, someone would make a film and it would have a soundtrack. The film would be protected as an entity under section, what is it, 87?
MR CATTERNS: Section 86 and following sections, your Honour.
GUMMOW J: Yes, and there would also be though, because of the embodiments of the sound in this entity called a soundtrack, there would also be a sound recording.
MR CATTERNS: Precisely, your Honour.
GUMMOW J: There would be two new things.
MR CATTERNS: Two copyrights.
KIRBY J: Well, I am still worried by the word "embodied". The word "body" implies a physical form, to my mind anyway, and that if it is not bodied but is there in electronic form, I am still worried that that is embodied, but anyway this does not seem to have been argued.
MR CATTERNS: No, your Honour, and I think section 24 would help. I would submit section 24 helps. There is a very broad concept of "embodied".
KIRBY J: I see. Yes, that may be the answer.
MR CATTERNS: Your Honours, we did not bring the copy of the other Avel Case which dealt with this in another context because we had not apprehended that it was relevant, but perhaps if your Honours would not mind, we would give your Honours a reference to that. It is a Full Court decision and we will give your Honours a reference.
KIRBY J: Is that AFL, is it?
MR CATTERNS: Avel.
KIRBY J: Avel. I thought it was another football case.
MR CATTERNS: And, your Honours, also Sega, but I will give your Honours a proper reference to it.
GUMMOW J: Now, just tell me what happens if there is a pre-existing sound recording, which is your clients' rights, and that is reproduced in making this cinematograph film, would there be two sound recordings of the same thing, that is to say, your clients' sound recording and a reproduction of it which would otherwise infringe, I suppose, as part of the cinematograph film?
MR CATTERNS: Yes, your Honour.
GUMMOW J: And that is why they needed the licence to make the film?
MR CATTERNS: The only reason I am pausing, even momentarily, your Honour, is that they are two different aggregates though. Because my sound recording consisted the Sydney Symphony Orchestra and the Australian Opera singing Voss. The filmmaker's aggregate of sounds consists of that plus the car crashes and everything else.
GUMMOW J: That is right.
KIRBY J: But they have not had a separate orchestra whirling away in the film studio dual recording.
MR CATTERNS: No, your Honour. That is right, your Honour. The two films here - - -
GUMMOW J: But what does section 23 say about that situation. What does section 23 say about further use or the cutting down of the rights that flow to you from your first sound recording of the orchestra etc?
MR CATTERNS: Your Honour, we submitted it has no impact on it whatsoever. It does not refer back and cancel our pre-existing copyright.
GUMMOW J: All right. Well, we must look at the words, Mr Catterns.
MR CATTERNS: Yes, your Honour.
GUMMOW J: So, 23(1) says "shall be deemed not to be a sound recording".
MR CATTERNS: Yes.
GUMMOW J: Does that mean should we deem that these sounds are embodied, as explained in 24, are not to be treated as a fresh intellectual property right, as it were.
MR CATTERNS: A fresh subject matter in which intellectual property rights inhere.
GUMMOW J: Yes, and that is it?
MR CATTERNS: Yes, your Honour.
KIRBY J: Does not that suggest then that if they are to be treated, if they are going to be put in the box of cinematographic film and you just have to make your licence arrangements when you release them for use in that way?
MR CATTERNS: No, your Honour. With respect the error is in the word "they". Because "they" - my sounds in my pre-existing sound recording - is not the "they" referred to here because it is the sounds embodied in the soundtrack associated with visual images which we submit is focusing on the aggregate of sounds constituting a film soundtrack, including ours - - -
KIRBY J: A few crashes - you are worried about the crashes and so on?
MR CATTERNS: Yes, your Honour, and an hour and a half of dialogue. Americans shouting at each other. It is called acting, my learned friend says. But, your Honour, of course there is - and there are concepts of substantial part but there is five, 10 or 50 pre-existing copyright subject matter involved in any film.
KIRBY J: But the subsection does not break down the sounds. It says "all sounds embodied in the sound track".
MR CATTERNS: Yes, your Honour. But the first thing it does not say, it does not say "my sound recording".
GUMMOW J: Sound recording is an object, actually.
MR CATTERNS: No, your Honour, with respect. The record is the object.
KIRBY J: Your sound recording is part of the sounds and they are embodied in the sound track and they are going to be deemed to be part - not to be a sound recording separately but part of the film. That is how the Parliament has addressed the problem that you have on overlap. It said you put them in the film box , not in the sound recording.
MR CATTERNS: Yes, your Honour. You put the sound track in the film box but it does not take away anybody elses pre-existing copyright, whether it be sounds, music or dramatic works. Its job is to put them into the film box. We accept that, of course, that is the purpose of it.
GUMMOW J: Tell me, what do you say 23(1) would have had to have said if it was to do what Mr Hely said it does? What words would it have had to express in order to have what you say is a cutting down effect on your pre-existing sound recording right?
MR CATTERNS: Something like - - -
GUMMOW J: Because this is crucial to the case, it seems to me.
MR CATTERNS: Yes, your Honour. Anything done with respect to a cinematograph film does not constitute an infringement, whether it be a broadcast or a public performance or reproduction. Anything done with that does not constitute either an infringement or the broadcasting of a sound recording which is embodied in the soundtrack. Poorly drafted, but - - -
GUMMOW J: Well, on that way of bringing it, that would be section 110(4).
MR CATTERNS: Yes, your Honour, exactly.
GUMMOW J: All right. But it is not there.
MR CATTERNS: Yes, or 199(7) or something like that. It would be in another place, as my learned friend says. Your Honours, there is one little model, I think I am right in saying, of that type, and that is 110(2). That is probably a better model, in answer to your Honour's question. Now, the idea of this is that even the underlying literary work copyright does not survive the film. So, for example, in my Voss example, Patrick White, Life Plus 50 Years - or, assume he wrote the dramatic work just for a moment - The Libretto - where it says:
Where.....copyright has subsisted in a cinematograph film, a person who, after that copyright has expired, causes the film to be seen or heard.....in public -
quite a narrow thing, just the exhibition of the film -
does not, by so doing, infringe any copyright subsisting.....in a literary, dramatic, musical or artistic work.
That is the underlying - - -
GUMMOW J: Is that because the periods would be different?
MR CATTERNS: Yes, your Honour, precisely, because the film is 50 Years, and the underlying literary works are Life Plus 50 Years. But that is the sort of structure of a little section that you could do to do the job. Now, your Honours, why does this not - - -
GUMMOW J: What about 105?
MR CATTERNS: Yes, your Honour, well, that is the type - that is a defence. It is a corollary of this concept of protected and unprotected works, your Honour, and merely by first publication - - -
GUMMOW J: What does 105 do?
MR CATTERNS: It takes away - - -
GUMMOW J: Take your recording of Voss, what does it do to it?
MR CATTERNS: Well, your Honour, it would not do anything to Voss because I have made that in Australia. But if it was an American recording, in terms of 89, I would not get copyright - - -
GUMMOW J: Well, 89(3) is talking about - - -
MR CATTERNS: First publication.
GUMMOW J: Yes, in Australia.
MR CATTERNS: So, you cannot rely only on first publication to get over the reciprocity - - -
GUMMOW J: Section 89(3) is limiting 89 to first publication in Australia, and you say that is not Voss?
MR CATTERNS: Yes, your Honour, because I have assumed that Voss was made by Australians in terms of 89(1), or made the recording in Australia in terms of 89(2).
GUMMOW J: What does 105 do to these records?
MR CATTERNS: Your Honour, as part of the scheme whereby we only grant a public performance right or broadcast right to countries which gives is reciprocity, we say they do not get 89(3), and then your Honour will remember that the Copyright International Protection Regulations extend the provisions of 89 - see, 89(1) says where:
the maker was a qualified person -
the Copyright International Protection Regulations extend that to "citizens", et cetera, "of convention countries", and (2) "to making in convention countries" and (3) "first publication in convention countries", but, no, it is limited. So, 105 is part of that scheme that limits the protection of overseas recordings to, so far as the public performance and broadcast right goes, to countries in schedule 3.
GUMMOW J: Well, what do they get?
MR CATTERNS: They only get a reproduction right.
GUMMOW J: I see.
MR CATTERNS: Your Honour, a US recording, made in the US by a US company, only gets a reproduction right. There is a seven-week lag but, leaving that aside, they only get a reproduction right.
GUMMOW J: Anyhow, you would say that 23 would really find its place somewhere with these 105 sections?
MR CATTERNS: Yes, your Honour, a la 110 or 109 or 107, just as if it was a fair dealing provision and so on.
KIRBY J: So you say the work that 23 has to do is to say, in respect of the entire soundtrack, it goes into, including the shouts and car screeches and so on, it goes into the box of the film?
MR CATTERNS: Yes.
KIRBY J: But that for your severable recording, in so far as that was part of the sounds, you have retained this by a presumption that, if that was going to be taken away from you, it would have been done more clearly than it has been done in 23(1) and having regard to the scheme of the whole Act.
MR CATTERNS: Your Honour, perhaps alternatively my first submission is - I only say as to the presumption, your Honour, I submit that section 23 on its face is directed to doing a different job, but secondly, we submit that it is clear that its intention is, by looking at the structure of the Act and/or by the legislative history, have driven to it.
KIRBY J: What about where, as you sometimes see on civilised programmes like SBS, you have just the soundtrack, no screeches, and you have scenes of Czechoslovakia and recent recordings of Muldour going in the background, there is nothing else on the film except the recording, how does 23 work then?
MR CATTERNS: Your Honour, when it is embodied - so far as it is being embodied in the soundtrack associated with the visual images forming part of the film, it is not a sound recording. There it is, this physical soundtrack; that is deemed not to be a sound recording. It so happens that it is coextensive with our earlier sound recording, but our earlier sound recording does not lose its copyright, or does not lose this tranche
of its copyright, because the focus - section 23 talks about these sounds in the physical soundtrack; it does not talk about the pre-existing sound recording.
GUMMOW J: That has to be your point, does it not?
MR CATTERNS: Yes, your Honour. That really is the point, your Honour. If you just wanted to do something to my sound recording, it would say something about a sound recording losing its protection. What it is just saying is, "Let us look at this physical thing, article or thing, which is the embodiment of the soundtrack of the film." Normally it is a thing in which sounds are embodied. That is a record; therefore, that would normally be a sound recording, but that particular one is not.
You can reproduce something indirectly, of course, even if the intervening stage is not itself a sound recording, just as you could reproduce an artistic work by building a house and then copying the house. Sorry, that is a bad example, because perhaps a house can be an artistic work in the intervening step. But every intervening step does not have to be a sound recording. When our friends broadcast their film, the sounds embodied in my record, which constitute my sound recording, are broadcast. Even though there is a moment when all they are is electromagnetic radiation, my sound recording is broadcast. So, your Honours, one can repeat that any number of times - - -
GUMMOW J: Having given us that degree of understanding now, how does 110(3) work?
MR CATTERNS: Yes, your Honour.
GUMMOW J: Because Mr Hely is going to be talking to us about that, I think.
MR CATTERNS: I beg your pardon, your Honour?
GUMMOW J: Mr Hely relies on 110(3).
MR CATTERNS: Yes, your Honour. It works as follows:
Where the sounds that are embodied in a sound-track associated with the visual images forming part of a cinematograph film -
So here we have again physically our soundtrack - let us call it a celluloid soundtrack for the moment, but it does not matter - are also embodied in a record. Your Honours - - -
GUMMOW J: What does that mean?
MR CATTERNS: Yes, your Honour. There are three temporal possibilities, are there not?
GUMMOW J: Yes, but that is what I do not understand at the moment.
MR CATTERNS: Your Honour, the three temporal possibilities are: that it is embodied in a record before the film, as in our case here, or simultaneously, or later. If it is later, it can either be done - those same sounds could not be done later, because - - -
GUMMOW J: Suppose there is a film with original music in it and then there is a CD of the soundtrack of the film. What does 110(3) say about that?
MR CATTERNS: There are two possibilities there. The CD is either taped separately simultaneously, in which case 110(3) has some work to do, or the CD is derived from, in which case it comes within the little exception.
GUMMOW J: Yes.
MR CATTERNS: So, your Honours, the latter one we can put aside. If we just film it, as I understand is what happens often, and we then get a soundtrack recording which often includes gunshots and little snippets of dialogue, that then is a - - -
KIRBY J: That does not seem to work very well with the language though because the language says they are sounds, that is in generality, and they are embodied and therefore the sounds could have preceded the making of the film but are embodied in the soundtrack. I do not see how you can exclude pre-existing sounds.
MR CATTERNS: I do not, your Honour, I am sorry, I do not. I certainly accept that - - -
GUMMOW J: You say it covers all these temporal possibilities.
MR CATTERNS: Yes, your Honour, and it works with every one. So as far as the pre-existing one goes, if somebody copies my CD, well they infringe my sound recording as they always would have. If they copy it via the film, it does not infringe the copyright in the film. So it fits with - - -
GUMMOW J: What does it infringe?
MR CATTERNS: What does it infringe? It infringes my initial sound recording copyright, my initial Voss, but if it is, in fact, a CD of the film and therefore it is "derived directly or indirectly" then it will infringe the copyright in the film, assuming it is a substantial part.
KIRBY J: Does it not suggest - 110(3) is the sort of reciprocal provision of 23(1). You have a scheme whereby the Act is saying, the Parliament is saying through the Act, you just put these things in separate categories. Records take their own course, cinematographic films take another course, and you are supposed, if you are not happy about that, you deal with that in the licence arrangements you make for the use of your recording. You are in control, except in the case of Taiwan and Vietnam which, I think, we just have to dismiss. You are in control.
MR CATTERNS: Your Honour, it opens up a route of piracy via Vietnam, but if I can come back to that - - -
KIRBY J: Yes, that is a big problem, and that is being looked at by the international community but we cannot solve that in an Australian Act, and it should not control the construction of an Australian Act. Two rogue States cannot control the construction of a federal statute which is addressed to the world.
MR CATTERNS: Your Honour, with respect, fair enough but we rely on that, if I may, a bit later to show as an absurd result of a construction for which our friends contend. Incidentally, they now try to get over that by implying, as we read it, in 23(1), a requirement of licence. They appear to say in their written submissions now that 23 only applies to licensed films for which there is no statutory warrant.
KIRBY J: I think that is a very minor point in this case.
MR CATTERNS: Fair enough, your Honour. But, your Honour, in 110(3), in answer to what your Honours said before that, we submit this does fit within the - it is part of a package, if I may call it that, with section 23 because what is said is that the "sounds embodies in a soundtrack" are deemed to be the film; not the sound recording, they are film only.
GUMMOW J: Section 110(3) is a defence to infringement of the cinematograph film.
MR CATTERNS: Yes, your Honour, the film.
GUMMOW J: What is the relevant exclusive right, if one is talking about to which this is a defence?
MR CATTERNS: Each, your Honour, because it says "by any use."
GUMMOW J: The rights are in 86.
MR CATTERNS: Yes, your Honour. So, your Honour, if I may just imagine the pre-existing record of Voss, and then the film which embodies my record of Voss in the soundtrack - - -
KIRBY J: Has a few crows squawking in the background.
MR CATTERNS: And dialogue and so on. Now, your Honour, the soundtrack is not a sound recording, it is a cinematograph film. Somebody reproduces my record of Voss. Well, the right person to sue for that is me; I am the owner of copyright in my sound recording.
GUMMOW J: No one could possibly say that was infringing copyright for cinematograph film.
MR CATTERNS: Well, your Honour, they could for this reason - that is the difficulty. Your Honour, with great respect, I think probably the argument would lose, but this puts it beyond doubt.
GUMMOW J: What would the argument be? Explain it to me.
MR CATTERNS: The argument would be that these are the same sounds, he same sounds, or a substantial part of them, because in that film of Voss there is precisely the same sounds, and that is what the argument would be. Normally one would assume that you would only infringe the film if it was derived directly or indirectly.
KIRBY J: This is your fear, that you can walk outside your protections by the use of the sounds of the film, rather than the original recording.
MR CATTERNS: Yes, your Honour. May I have an attempt at - it shows something to be driven back to, but I just read your Honours a passage from the legislative history; the debates in the House of Lords in 1956.
GUMMOW J: Is this explaining how section 110(3) works?
MR CATTERNS: Yes, your Honour. Your Honours, in our little bundle of extrinsic material - your Honours, the predecessor of 110(3) was brought in the English Act in the House of Lords. Page 10 of our little bundle of handwritten - at the top right - behind tab 3. Your Honours will see, in the second column on page 10, turning it sideways, is 1084 and, at the top of the page we see the English equivalent of the proviso - I am sorry, of 110(3). This is the third paragraph in that column, 1084:
Provided that where those sounds are also embodied in a record -
your Honours see that is the sounds embodied in a soundtrack - - -
GUMMOW J: Where are you reading from, Mr Catterns?
MR CATTERNS: Your Honour, at the top of 1084, which is the column hard to read.
GUMMOW J: Yes, thank you.
MR CATTERNS: It says:
For the purposes of this Act, a cinematograph film shall be taken to include the sounds embodied in any sound-track associated with the film and references to a copy of the cinematograph film shall be construed accordingly:
Provided that where those sounds are also embodied in a record, other than such a sound-track or a record derived (directly or indirectly) from such a sound-track, the copy right in the film is not infringed by any use made of that record."
Which is the equivalent of 110(3). At the bottom of the page, your Honours, the paragraph at the bottom:
The purpose of the new subsection (8) is in part to clarify the drafting and in part, by the proviso, to deal with something of which we became aware after the Committee stage. There should be one copyright, and one only, in a cinematograph film to cover both the picture and a sound-track "associated with the film." The principle is already contained in subsection (5).....It becomes important to state this position clearly now that there is a different term of protection for recordings and for films. It is possible for a sound recording to be made, for commercial records to be made from that recording and for the same recording to be used subsequently as a sound track for a film.
These are the critical words, your Honour:
The proviso makes it clear that these commercial records are not an infringement of the copyright in the film unless they were made from the film's sound-track itself.
Now, your Honour, I respectfully agree with his Honour Justice Gummow that I do not think that is a very good argument. It probably would not have constituted an infringement of the copyright in the film unless it were derived from it. There is always a concept of causation in copyright infringement.
GUMMOW J: Yes.
MR CATTERNS: So, your Honours, I fully accept, with respect, that what your Honour puts to me is right, but that is the history.
GUMMOW J: Yes, I understand what you say, yes.
KIRBY J: But is that not against you, though? Because if it does not do that work, you are forced back to ask, "Well, what work does it do?" It does the two boxes' work. You are to treat this as a - - -
MR CATTERNS: But, your Honour, this is doing that. Your Honour, it is intended to do that work, the work that I have just read out, I submit, which is to make it clear beyond doubt that any argument that a copy of my Voss CD infringes the film, unless Voss is below the film in the chain of causation, to put that argument out of court, the argument - - -
GUMMOW J: Well, it means that this potential infringer is at risk of suit by you, not by the film owner. That is what it is doing.
MR CATTERNS: Correct, your Honour, which is the right - - -
GUMMOW J: And you say that is the way it should be.
MR CATTERNS: Yes, your Honour. The argument is open, even though, with great respect, I agree with your Honour that the better view is it should have lost because, comparing the sounds, they are the same sounds. My learned friend, Mr Cobden, and I lost a case before his Honour Chief Justice Bowen of the Federal Court about infringement of a sound recording by a sound-alike record, where somebody mimicked the sounds, and his Honour held it had to be the precise sounds. That is a worse case than the argument that 110(3) is to stop. So, your Honours, that is what we submit is the purpose of 110(3), which is to put beyond doubt that other argument.
Then going back to 23, we submit that the words "For the purposes of this Act" in a sense beg the question because it just depends on what the rest of the section does, but there is no provision that we wish to circumscribe the application of 23(1) to. We say that the purpose of 23(1) is to put the sounds embodied in the soundtrack - not my sound recording, but the sounds embodyied in the soundtrack - into the film box and that means that for all of the other purposes of the Act subsistence, ownership, duration, infringement, defences, it is in that box. Fair enough.
GUMMOW J: You say the words in 23(1) "shall be deemed not to be a sound recording" would have to have said rather, in order for you to lose and Mr Hely to win, "shall be deemed not to infringe copyright in any already subsisting sound recording" or something like that.
MR CATTERNS: Something like that, your Honour. Yes, your Honour.
GUMMOW J: It does not do that. It looks to the future. It does not disrupt rights coming in the past.
MR CATTERNS: Yes, your Honour, that is precisely our submission. Your Honours, it is skipping a bit, but perhaps since I have already, as it were, been driven to the legislative history, it might be convenient to look at the English provision, 12(9) of the English Act, which, we submit - - -
KIRBY J: You are doing this because Attorney-General Bowen did not make any explanation of this change, though there is the history that Justice Lockhart points out, but there is nothing in the explanatory memorandum and nothing in the Attorney's speech which explains the purpose of these provisions.
MR CATTERNS: Yes, your Honour, that is right. There is no explanation of why we moved from the provision - - -
KIRBY J: We just have got to do this in the old-fashioned way that Justice Meagher likes, just look at the Act.
MR CATTERNS: Well, your Honour, I have attempted to do that so far, but I am still entitled to try and shore it up if I can, with respect. Your Honours, behind tab 5 of our joint bundle at page 19 relevantly we have the UK Act of 1956 and section 12 deals with copyright and sound recordings and there is the usual provisions of subsistence and so on. Your Honours, in 12(5) there are the rights which are the equivalent of our section 85 and then critically there is 12(9) and your Honours can see that that is clearly a definition:
In this Act "sound recording" means the aggregate of the sounds embodied in, and capable of being reproduced by means of, a record of any description, other than a sound-track associated with a cinematograph film.
So by that single phrase in a definition what we say the job of section 23(1) was done. They took out the "soundtrack" from the definition of "sound recording" and left it in the definition of "cinematograph film" and that, we submit, is all that has been attempted to be achieved.
Your Honours, just for completeness, the film section is section 13 following on the next page 21 and again in 13(1) there is a provision for subsistence, 13(5) sets out the acts restricted by the copyright - as the English call it, we call it the acts comprised in the copyright. In (9) the film is -
taken to include the sounds embodied in any soundtrack associated with the film and references to a copy of a film shall be construed accordingly.
And then there is the proviso which was, your Honours will remember, it was subsection (8) at the stage of the Committee of the House of Lords. That is the equivalent of our 110(3). And, your Honours, there is a definition of cinematograph film which says:
material of any description (whether translucent or not) -
Your Honours can see that there has been some technical changes between 56 and 68. And then, your Honours, there is a definition of "soundtrack" that follows the express definitions:
references to any record of sounds which is incorporated in any print, negative, tape or other article on which the film or part of it.....is recorded, or which is issued by the maker of the film for use in conjunction with such an article.
Now, your Honours, we do not have anything in the extrinsic material that says why we move from the 12(9) approach of the UK Act to the 23(1) approach of our Act except this, your Honours, the English Act is much more densely drafted, it is just as much - - -
GUMMOW J: How was the Avel v Multicoin situation dealt with in the English Act, in drafting terms?
MR CATTERNS: The definition of publication, your Honour, of publish?
GUMMOW J: Yes. Do not go to it now, it is just a useful parallel, that is all.
MR CATTERNS: Yes, your Honour, including what it says "for the purposes of this Act".
GUMMOW J: Yes.
MR CATTERNS: My learned friend, Mr Cobden, will look at that your Honour.
KIRBY J: You say that Parliamentary Counsel of the Commonwealth tried to do a job simplifying the English Act?
MR CATTERNS: Yes, your Honour. That is the structure of all of our Part II. It is a vastly superior structure of drafting because the English Act is full of provisos and the English Act is much more dense with provisos and then one concept and then another concept taking away from it. For example - - -
GAUDRON J: But all in one place, conveniently all in one place.
MR CATTERNS: Well, your Honour, that is right but it is not a matter of - your Honour means when one looks for sound recordings, there it is.
GAUDRON J: Yes.
GUMMOW J: Yes, and one does not have the torment of Part II headed "Interpretation", sections 10 to 30
MR CATTERNS: Yes. But, your Honour, at least - I have always, perhaps, your Honours, will think this is a little narrow of me, but I have always preferred the drafting of ours because it sets each little concept out separately. For example - - -
KIRBY J: It has made many cases for you, Mr Catterns.
MR CATTERNS: Yes, that is true, your Honour. But, for example, rather than deal with this little concept of what box you put the sound-track in, by putting it in as a little parenthetical remark in the middle of section 12(9) our draftspeople, as a matter of style at least, had this more complicated Part II. Similarly, a structure of interpretation and then Part III and Part IV with their grants of rights subsistence and so on, and then defences and so on. That is just a different structure.
But, your Honours, we would submit that if one assumes for the minute that 23(1) is intended to do the same job as 12(9), and there is nothing to the contrary except, perhaps, the Rome Convention which we will come to, if we assume that they are doing the same job, our submission is that as a matter of reading 12(9) is that it is clearly about putting the subject matter, namely the sounds embodied in the physical soundtrack, into the right box.
Your Honours, perhaps just while we are on the legislative history, in answer to your Honour Justice Gummow's question about publication, the English Act 1956, the section in relation to publication, was in section 49 which your Honour will remember was a grab bag of supplemental provisions as to interpretation. The phrase is this, subsection (2) of 49 of the English Act:
With regard to publication, the provisions of this subsection shall have effect for the purposes of this Act, that is to say -
And so on.
GUMMOW J: Justice McHugh pointed out in Avel the different structure of our Act but the end result being comparable - - -
MR CATTERNS: Yes, your Honour, if anything our Act was a fortiori, I think. Your Honours, if I may, we set out the legislative history in our written submissions, in summary form, adopting his Honour Justice Lockhart's analysis at page 6 of our written submissions, paragraph 23 and following. Our submission is, as your Honours remember, sound recordings after a debate in England in 909 and up to 1911 - in the 1911 Act in the UK, sound recordings were protected in like manner as, as if they were musical works. So, they got the same copyright as a musical work did.
Then, in due course, when broadcasting developed by the Cowardine Case which we give a reference to at the top of page 7, Gramophone Co Limited v Cowardine and Co (1934) Ch 430. It was held that that right included a broadcast right. Your Honours, the Gregory Committee looked at the issue and said, the sound recording makers ought to continue to have a broadcast right and a public performance right over the vehement opposition of our learned friends. They have maintained their vehement opposition with today's part of this battle that has been going on all those years. But the Gregory Committee said we should have that right and it also said, while it was there, that there ought to be an express, discrete right for the makers of a cinematograph film. Cinematograph films, your Honours, had previously been protected in a really rather accidental way and it is summarised in our transitional provisions. We can see the reflection of the old way they were protected in section 222. They were protected as by the predecessors of 222(1) as original dramatic work and as photographs which is 222(2). The definition of "dramatic work" which we see from 204(2), again, this is picking up the old law, is:
"dramatic work" includes.....a cinematograph production where the arrangement, the acting form or the combination of incidents represented gives the work an original character.
That was an old fashioned idea by 1951-52 when Gregory was reporting, and they recommended a separate copyright.
GUMMOW J: The definition of "dramatic work" now excludes cinematograph films, does it not?
MR CATTERNS: Yes, your Honour, precisely. In section 10, it includes a scenario or a script for a cinematograph film but does not include a cinematograph film as distinct from the scenario or script, so the Gregory Committee recommended that there be a discrete copyright in films. But, your Honours, in addition to the - I am sorry, and the continued copyright but under a new little heading of its own, "for the copyright and sound recordings" previously called "mechanical contrivances". But, your Honours, in addition to the fight on the right flank from the broadcasters, the owners of copyright in films and sound recordings have a fight on the left flank from the authors, who say, "Well, that's fine to give a copyright, if you must, to the maker of a film or a sound recording, but you must not impact upon my copyright." That is the source of debate; that is the source of our section 113, which is also important here.
If I could just take your Honours to the passage in the Gregory Committee Report and then to section 113. It is behind our tab 2, your Honours. At page 5 of our bundle, 37 of the report, there is a discussion of cinematograph films - and we would not take your Honours through all of the detail of that - but after the discussion at 94 to 100 they recommend, in paragraph 101 that:
a film, together with its' sound track if it has one, should be regarded as a distinct type of work in which a distinct copyright may subsist, and that such copyright should subsist in the film as a whole, and should relate both to copying the film and to its performance in public. If there should be any other copyrights subsisting in any parts of that film, eg, in any individual photography, in the story on which it is based, its own particular script or in its music, these should be independent of the "film copyright" -
and your Honours will see that word in section 113 -
The relation of this "film copyright" to ordinary "photographic copyright" and to the other literary or musical copyrights mentioned will be discussed as this Section proceeds.
Then, your Honours, at 181, in relation to records, this is on the next page, your Honours:
To begin with we wish to make it quite clear that we regard the rights we recommend for broadcast programmes or gramophone records as subsidiary to the primary right of the composer or author of a copyright work reproduced by these technical means -
There, your Honours, they are talking about the owner of copyright in a musical work, whose musical work is reproduced by a sound recording in a record.
and that performing rights in programmes or records should be without prejudice to that primary right. (The composer's right to authorise the recording or broadcasting of his work is, of course, unaffected.) In so far as it may be necessary to do so, we recommend that this principle should be recognised in any future legislation. We think that consideration should be given to the question whether rights of this kind should not be described by some term distinguishing them from copyright in its primary sense.
From that we get, in our Act and the British Act, works in Part III and subject matter other than works in Part IV, and we get out section 113(1) - - -
KIRBY J: Can I just ask you to pause for a moment. You, I suppose, assert that you have a property interest in this right.
MR CATTERNS: Yes, your Honour.
KIRBY J: And that - is there any constitutional issue here that if in fact the construction which is being argued for were correct, that in effect you have had your - you have been deprived of or had your property interest acquired?
MR CATTERNS: I think, your Honour, that in the Nintendo Case this Court held that what the legislature giveth, the legislature can take away without it being, if I can put it so crudely, an acquisition of property.
KIRBY J: It depends in each case of what was giveth and what was taken away. This issue was argued recently. Anyway, that has not troubled us so far.
MR CATTERNS: No, your Honour, and we have proceeded on the basis that, for example, just as in 109, the legislature can take away our right to withhold our licence to broadcast and that is the scheme here, that we get the right, but that we cannot - - -
GUMMOW J: Well, you get some compensation.
MR CATTERNS: Yes, your Honour, that is true and that is the role of the tribunal. Your Honours, that takes us to section 113, where - - -
KIRBY J: By the way, who was Mr Gregory? That is not revealed in your - I suppose he is a Lord Gregory or sure to be somebody terribly important.
MR CATTERNS: I think it was Mr Gregory, your Honour. I will double check, if I may. Your Honours, section 113 is expressed to be subject to 110(2). Your Honours will remember 110(2) is the one where the 50 years is up for the copyright in the film:
where copyright subsists in any subject-matter by virtue of this Part, nothing in this Part shall be taken to affect the operation of Part III in relation to any literary, dramatic, musical or artistic work from which that subject-matter is wholly or partly derived -
So stopping there, that is the purpose of protecting the copyright in works, which is Part III, from the derivative subject matter, which is Part IV. You do not lose the copyright in your work by it being subsumed into a film or sound recording.
GUMMOW J: Well, there is a composer in the background here somewhere who has assigned his rights, I suppose, or her rights at some stage.
MR CATTERNS: Yes. That is the person that - - -
GUMMOW J: But you are not in that creative class of person.
MR CATTERNS: No, your Honour, but leaving the second part aside of 113(1) for a minute, we are in the class of persons in 113(2) where:
The subsistence of copyright under any provision of this Part does not affect the operation of any other provision of this Part -
so the idea being that the copyright in other subject matter can peacefully co-exist, the Part IV subject matter, and then the second half of section 113(1) is that:
any copyright subsisting by virtue of this Part -
that is the Part IV copyright -
is in addition to, and independent of,
So, your Honours, copyright in the sound recording is in addition to and independent of the copyright in the musical work and the composer and vice versa. They are independent of each other and these are additional copyrights. The most striking example is the idea in Part IV of the Act of a published edition of a work, where the person who sets it up in type, arranges it and layout and so on, has a separate copyright to that of the author of the work and, of course, if it is a first folio of Shakespeare, the copyright in that has long expired, but the person who makes a new edition of it, just photographically or typographically, gets a separate copyright which is independent of any copyright in the pre-existing work.
KIRBY J: Even though it is a pure facsimile?
MR CATTERNS: Yes, your Honour. If I could just quickly - just for completeness, your Honour, that is in section 88.
KIRBY J: It seems a little unmerited in today's reproduction efforts.
MR CATTERNS: I am sorry, your Honour, I beg your pardon. Your Honour, what is protected:
a published edition of a literary, dramatic, musical or artistic work.
Your Honour, there is no requirement of originality, so that is why perhaps I am not wrong in assenting so quickly to your Honour's proposition. But you would not infringe it if you then went and did your own facsimile - went back to the original work and made your own facsimile. But that is a limited type of copyright, limited to typography and layout and things like that, or the skill of even making a facsimile. But, your Honours - - -
KIRBY J: So, every time I photocopy something from the new reproduction of Quick & Garran I am breaching the copyright of those who have reproduced it?
MR CATTERNS: Yes, your Honour, assuming it is a substantial part.
KIRBY J: Even though it is a purely facsimile edition?
MR CATTERNS: Well, I think so, your Honour, yes - unless it is a substantial part. But, your Honour - - -
GUMMOW J: But it is hopefully a fair dealing.
KIRBY J: What is the point you are making?
MR CATTERNS: Well, your Honour, it is my own fault for getting onto published editions. All I wanted to say was that the copyright in the subject matter in Part IV is in addition to, and independent of, the copyright in any underlying works. Your Honours, then, if I may just - because these were raised in argument - quickly take your Honours to 107, which says:
Where the broadcasting by a person of a sound recording would not (whether by reason of an assignment or licence or of the operation of a provision of this Act) -
which would largely include 109 -
constitute an infringement of the copyright -
Our friends are allowed to make what is called an ephemeral copy; they are allowed to make a copy of the sound recording for the purpose of its being broadcast. So, that is just a little defence which runs along with the 109 right. Then, your Honours, 108 is a defence in relation not to the broadcast right, but to the public performance right that there is in sound recordings.
Your Honours, this arose - my discussion of 113 - in discussing the Gregory Committee recommendation that the Act make it clear that the underlying works be protected. Then your Honours know - just doing this quickly - that 12(9) was enacted. The Spicer Committee really does not add anything to that and, by 1967, the government had decided that sound recordings would continue to have a broadcast right, although, in an earlier response to Spicer, it was thought that they would not have a broadcast right.
KIRBY J: That is the Snedden response, is it?
MR CATTERNS: Yes, your Honour.
KIRBY J: I see.
MR CATTERNS: That is Mr Snedden's response. But in both the 1967 and 1968 versions, we were to get the broadcast right, but limited by statutory licence under section 109, and our right - we cannot forbid the broadcasting of our works, I say either directly or via films. Our friends, if they give an undertaking to pay the amount determined by the tribunal, can broadcast without licence, or with a statutory licence, and we go to the tribunal under 152 for our remuneration. May I take your Honours to the Rome Convention, which our friends make something of?
KIRBY J: Is the United States not a party to the Rome Convention?
MR CATTERNS: That is right, your Honour. Australia only was able to accede to the Rome Convention in 1992, because we did not grant performer's protection. Your Honours know that this is a convention intended to protect performers, producers of phonographs and broadcasting organisations.
Your Honours, the critical thing to notice about the Rome Convention is, as with all copyright or related - this was called the Neighbouring Rights Convention - with all those types of conventions, they have two basic jobs to do. The first job is to provide for a regime of national treatment whereby you promise to treat the citizens and nationals of member countries in like manner as you treat your own citizens. That is the idea of national treatment.
The other concept in these conventions is that they provide for minimum standards of protection that you promise that you will give, not maximum standards of protection. There are many cases where Australia, in enacting legislation so that we can accede to or ratify one of these conventions, gives more than the minimum protection required by the convention and that has happened here. It seems that we have also given less than is required, but that is another question.
Your Honours, just quickly, the Rome Convention is behind our tab 6 of 24. Your Honours will notice that Article 1 - - -
KIRBY J: What is your proposition in relation to the convention?
MR CATTERNS: Your Honour, that the convention does not take our learned friend's arguments any further and that the submissions that they try to derive from it, which is essentially, to put it crudely, that sound recordings get a second class copyright, does not in any way impact upon the construction of section 23 and, in particular, that our learned friends get nothing out of Article 12 which I am going to come to. Article 12 is a minimum protection.
KIRBY J: Do I remember correctly that they say that your construction will put us in breach of our obligations under the convention?
MR CATTERNS: No, I do not think they say that, your Honour. But I accept that it would accede our minimum obligations as set out in Article 12, hence my preamble, your Honour.
KIRBY J: I thought I had read that there was a suggestion that there was a breach. Anyway, go on.
MR CATTERNS: If they submit that, we would respectfully submit they are wrong, your Honour. Your Honours, Article 1 says - it is the equivalent of section 113 as your Honours can see -
Protection granted under this Convention shall leave intact and shall in no way affect the protection -
of copyright -
in literary and artistic works. Consequently no provision of this Convention may be interpreted as prejudicing such protection.
So that is a bit of comfort for authors and composers and filmmakers because filmmakers have protection under the Berne Convention and then, your Honours, there is the concept in Article 2 of "national treatment" whereby you give the protection accorded by your domestic law to the performers of other countries, "to producers of phonograms" and so on. That is us, relevantly, your Honour, "to producers of phonograms" who are the nationals of the original country -
as regards phonograms first fixed or first published on its territory;
Then, your Honours, our learned friends get something out of Article 3(b), the definition of "phonogram". We submit it helps us. It says:
`phonogram' means any exclusively aural fixation of sounds of a performance or of other sounds.
That is precisely the same approach of putting the sound recording in one box and the cinematograph film in the other box. So sound recordings are, just as they are under our Act, purely in the aural box, the sound box, and cinematograph films which are not "exclusively aural" are excluded from the idea of a phonogram and section 23(1) does a job the same as Article 3(b) in our submission.
KIRBY J: My recollection, Mr Catterns, was paragraph 42 of your submissions where you said that majority view would be contrary to Australia's international obligations.
MR CATTERNS: Yes, your Honour, we say that because of the argument that the reproduction right is lost if the majority is right. Your Honour knows that is our public policy argument which does not only depend on Taiwan and Vietnam.
KIRBY J: I am glad to hear that.
MR CATTERNS: Your Honours, here, we submit, in Article 3(b) there is a concept which is precisely the same as that intended by 23(1) and then, your Honours, there is a definition of the "producer of phonograms" as the person who -
first fixes the sounds of a performance or other sounds -
et cetera.
Then, your Honours, Article 4 is "national treatment to performers". Article 5 is we will give "national treatment to producers of phonograms" who are nationals of other States, made in another State, first published in another State. Your Honours, that parallels section 89 that we discussed earlier. Then, your Honours, Article 6 is national treatment for broadcasters. Then, your Honours, the following articles set out the minimum standards: Article 7 for performers; Articles 8 and 9 for performers; but then, your Honours, relevantly so far as producers of phonograms go, we get:
the right to authorise or prohibit the direct or indirect reproduction of their phonograms.
Article 11 says if you require formalities such as registration, putting a "P" in a circle will do the job, which is like the "C" in a circle that the Universal Copyright Convention had. Then, your Honours, Article 12:
If a phonogram published for commercial purposes, or a reproduction of such phonogram, is used directly for broadcasting or for any communication to the public, a single equitable remuneration shall be paid -
and that is both to the performers and to the producer of the phonogram and there may be some domestic law as to how you share the money. Now, your Honours, we accept that. That is narrower than the rights that we contend that the Act confers upon us. Probably the phrase "used directly for broadcasting" means literally putting the CD on the player and broadcasting it, whereas used via a film would be indirectly. So we accept that. On our argument the Copyright Act 1968 gives broader protection than the convention minimum, but there is just no suggestion in the convention that these minimums are maximums and the whole way they work is to confer minimum protection, as we can see, your Honours, a minute later by Article 14 because it says that you shall have at least 20 years -
for phonograms and for performances incorporated therein -
and for broadcasts (c). As it so happens, we get 50 years in our Act, which is more than those minima. So, your Honours, we submit that the fact that our Act goes beyond the minimum protection of Rome carries this matter no further at all. As it happens, it appears that our Act gives our learned friends less protection than they are entitled under Article 13(d) because under 13(d) they should have the right of public performance for payment of their broadcasts and their rights do not extend so far as we read it in section 87, where they have the right to make a copy and to rebroadcast, but not to perform in public for a fee.
So, your Honours, with great respect, the Rome Convention does not take the matter much further. Your Honours, our submissions thus far are that on its face 23 read with the definitions and in the context of the whole of the rest of the Act it is clear for the construction for which we contend and our submission is that the legislative history supports it in the way that we have put forward.
KIRBY J: If it is not clear, and if it is ambiguous, I suppose that you would be entitled - leave aside the constitutional argument - to say that, if a valuable property right which you otherwise would enjoy by the Act is to be taken away from you, it ought to be done so in language clearer than section 23.
MR CATTERNS: Yes, your Honour. But as I say, I do not think I can push it too far because it is an Act which does confer broad rights, and takes them away in various places by means of defences and so on. So, keen as I am to embrace what your Honour has put to me, I think one has to be cautious in carrying that too far. But that is within the Act itself. As a temporal matter, if I may say so, your Honour, what your Honour has put to me has greater force; namely, that we had this right until 1968, unequivocally, and there is really very little indication that it was intended to go - there is indication that it was intended to go away, and we submit that the English Act preserved it, and our Act is attempting to do the same job.
KIRBY J: Do we know what the situation in the Canadian, New Zealand and South African or other Commonwealth country Acts provide? Has that been studied?
MR CATTERNS: No, your Honour.
KIRBY J: We have just looked to Mother England, have we, because of the prominence of our Act but - - -
MR CATTERNS: Yes, that is the reason, your Honour.
KIRBY J: - - - if you could show, for example, that the argument for which you contend is not only the position in England, but also the position in other Commonwealth countries, that would be a factor relevant to my thinking.
MR CATTERNS: Well, your Honour, I am sorry we have not done that work.
KIRBY J: Conceding that the statutes are likely to be different in different States.
MR CATTERNS: Well, your Honour, as I say, I am sorry we have not done that workand we will try and do it over lunch. The reason we have focused on the English Act, on both sides - I am not blaming our friends, but accepting the blame myself - is that the providence - - -
KIRBY J: I understand why you concentrate on that. But the point being made, in answer to your point about the English Act, is that the structure and drafting took a different course and it may be that, if one looks at the New Zealand Act, or some other Act, it will provide some light to the way in which - in an area which is, in part, affected by an international convention - States of a similar kind have tried to deal with this problem.
MR CATTERNS: Well, I am sorry we have not given the Court that help yet.
KIRBY J: Because it would be funny if we were entirely out of step with other countries which have given protection here. It would be a reason to look closely at the construction of our Act.
MR CATTERNS: Yes, your Honour. Well, we will do our best to assist in that regard.
McHUGH J: Mr Catterns, what would be the effect of your argument if section 23 was part of section 85, if what is now 85 was 85(1), and 23(1), instead of saying "for the purpose of this part" said "for the purpose of this section"?
MR CATTERNS: Your Honour, it would not fit, is my submission- - -
McHUGH J: No.
MR CATTERNS: - - - because, as I have answered some questions from his Honour Justice Gummow, it would not read as a limitation on the rights. It fits better in section 10, not in the - - -
McHUGH J: But does not the history of the section and the way the draftsman has dealt with it tend to tell against you, that instead of adopting the form of 12(9), is it, of the English legislation, the draftsman has, in effect, drafted a definition of the exclusion in 12(9) and put it in 23(1). But if you translated 23(1) back to 85, your argument would be in serious trouble, would it not?
MR CATTERNS: But, your Honour, a provision that is clearly at least dealing with classification just does not fit in 85, because 85 is saying, "Once you have put something into the sound recording box it gets these rights."
McHUGH J: You are using these metaphors, and getting into vicious abstraction is not really - I mean, just let us - - -
MR CATTERNS: Your Honour, it says "copyright, in relation to a sound recording," 85(1) does. Then we have to ask ourselves, what is a sound recording? And that is defined in section 10 and, I submit, further defined in section 23(1). But - - -
McHUGH J: Not necessarily. Certainly sound recording is defined in section 10 and you would give it that interpretation. But if what is now just the plain subsection 85 and became 85(1) and 23(1) became 85(2), but with the word "section" substituted for "Act", that would be end of the case, from your point of view, would it not?
MR CATTERNS: No, not at all, your Honour, because - - -
GUMMOW J: It would help you, would it not?
MR CATTERNS: I am sorry, your Honour?
GUMMOW J: Would it not help you?
MR CATTERNS: Because it would be just saying what is and what is not a sound recording.
GUMMOW J: No, no, would it not be making clear that you got your initial sound recording but that you do not get - there is not a second sound recording, as it were, created by reason of the production of the film.
MR CATTERNS: Your Honour, the reason I am - I do not disagree with what his Honour has put to me - - -
McHUGH J: But the problem is that you have got to get your copyright out of 85, do you not?
MR CATTERNS: No, your Honour, 85 defines what the copyright is.
McHUGH J: Exactly, but that is the point, is it not? It says that:
copyright, in relation to a sound recording, is the exclusive right to......
(c) to broadcast the recording.
MR CATTERNS: Yes, your Honour.
McHUGH J: If 23(1) says that sounds forming part of a cinematograph film are not a sound recording, then you have no exclusive rights in respect of that - - -
MR CATTERNS: No, your Honour, the "then" does not work, with respect. The first part of what your Honour goes is heading in the right direction, then the sounds embodied in the soundtrack are not a sound recording and they do not have the exclusive rights. But it does not say a word about "my pre-existing sound recording".
McHUGH J: But you talk about pre-existing, but is there anything pre-existing, apart from what you get in this Act?
MR CATTERNS: I am sorry, your Honour, pre-existing in time. The answer is no to your Honours question. But, your Honour, one of the critical words in 23(1) is "be", because it is saying what is and what is not a sound recording. It is not saying what it can and cannot do with a sound recording. So "be" - 23(1) can come up into 85 if we want to put it there, if it is telling us what is and what is not a sound recording - but we submit that 23(1) does not have any job at all to do about the acts comprising the sound recording. In the copyright - - -
GUMMOW J: Not the sound recording, that is the whole source of the problem.
MR CATTERNS: Did your Honour say "the sound recording".
GUMMOW J: Yes, we are talking about "the sound recording".
MR CATTERNS: Well, your Honour, I agree, with great respect. It is fundamental to our argument that we need to focus on which aggregate of sounds we are talking about and our sound recordings, the ones that are embodied in this film, are an initial, separate aggregate of sounds. Then the soundtrack of the film is a different aggregate of sounds, which includes - - -
GUMMOW J: It is a different act of aggregation, anyway.
MR CATTERNS: Yes, but I am using the phrase that is in the definition of cinematograph film.
GUMMOW J: Yes.
MR CATTERNS: But it is a different aggregate. I understand what your Honour says, as a matter of grammar, but the definition says an aggregate of sound. It is a different and, of course, larger, as it happens, aggregate of sounds and it is deemed not to be a sound recording, therefore, it is categorised in a different way. With respect to your Honour
Justice McHugh, this wording will not fit in 85 because 85 is setting out a list of rights whereas 23(1) is saying what something is and is not.
McHUGH J: I am not sure. I will have to write it all out, I think, but I think it does - it can be fitted in and maybe it fits in favourably to your argument.
MR CATTERNS: Well, your Honour, we can write a proviso, do it as a proviso in the English manner and say that "provided that for the purposes of this Act sounds embodied in the soundtrack shall be deemed not to be a sound recording". But all we have done there is move the problem from point A to point B, your Honour. We can write those words in there as a proviso or as a subsection which says "notwithstanding subsection 85(1)", but I mean it is conceptually inapt to fit there because it is a categorisation provision and not a list of the exclusive rights which are the acts comprised in the copyright.
McHUGH J: That may be so, but having regard to its drafting history, it seems to me it is very much associated with 85 in which you have to - that is what the whole key of the case is, the interrelationship between 85 and 23.
MR CATTERNS: Your Honour, with great respect, that is right. It is a truism. It is related to 85 because that is the nature of copyright and sound recordings and it is related to 89 which tells you which sound recordings get a copyright and it is related to 93 which tells you they last for 50 years and so on, but - - -
GUMMOW J: And 101.
MR CATTERNS: Which tells you how they are infringed. And 109 which tells you how they are not infringed. All of that is true, with respect, but that in a way just postpones the evil moment of having to construe the job that 23(1) is doing.
KIRBY J: If 85 is the source of the copyright then you are broadcasting the recording. They are not broadcasting your recording. They are broadcasting the recording in the film soundtrack and that, by section 23, is deemed not to be a sound recording.
MR CATTERNS: But, your Honour, that is the nub of the case, really, and we submit that this is how it works. We have got over here a sound recording. A record company has taped the Sydney Symphony Orchestra et al performing Voss. That is a sound recording, it is an aggregate of sounds. It is embodied in a cinematograph film with other sounds. That embodiment, the sounds embodied in that soundtrack, is not a sound recording. I am still a sound recording. Nobody says - - -
KIRBY J: Yes, you are but that is not the recording which was put to air, which was broadcast. They have put to air the soundtrack, they have not put to air your recording at all. Your recording remains just as good as ever for you.
MR CATTERNS: With respect, your Honour, that is not right, I am sorry. Because they have put to air the musical works too, and they have put to air the dramatic works. They have put to air every one of the - they have put to air the cinematograph film that is also embodied in there. I am assuming we have got some footage of another film in there. They have put to air all of those elements, and so far as the sound - - -
GUMMOW J: You say they have made a copy.
MR CATTERNS: No, your Honour, they have broadcast.
GUMMOW J: And then broadcast the copy?
MR CATTERNS: Yes, your Honour, of course there is a physical video cassette, say.
KIRBY J: But it is a separate piece, it is a separate work and they have not broadcast your work, they have broadcast the film soundtrack.
McHUGH J: Taking us Justice Kirby's point, "sound recording" is defined to mean:
the aggregate of sounds embodied in a record.
And "record" is defined to mean:
A disc, tape, paper or other device in which sounds are embodied.
So, a sound recording is the aggregate of sounds embodied in a disc, tape, et cetera, and it is to broadcast the recording. Now, perhaps - - -
MR CATTERNS: But, your Honour, they do not broadcast the physical CD, of course.
McHUGH J: No, they do not.
MR CATTERNS: If we have just got a radio station and a CD, your Honour, my CD, my aggregate of sounds is embodied in my initial recording. It is copied down the line a thousand times and now I have the CD that appears on the turntable of this radio station.
KIRBY J: Yes, but unluckily for you, the thing that they are broadcasting is not that, or a reproduction of it, but the separate film soundtrack which is deemed not be a sound recording.
McHUGH J: You see, you put all the weight of your argument, it seems to me, on that recording there means broadcasting the aggregate of sounds, and maybe that is not what it means.
MR CATTERNS: Your Honour, if we are wrong in that, we are wrong, that is for sure. But, your Honour - - -
McHUGH J: If I could just take you, for example, when you look at 86, when you are talking about film, it is:
(b) to cause the film.....in so far as it consists of sounds, to be heard in public;
Or:
(c) to broadcast the film
Surely, in 86, unless somebody reproduces the film in some way containing those sounds or images, there is no infringement, is there?
MR CATTERNS: No, your Honour, with respect. Let us look at the question of causing something to be heard in public. When you cause a recording to be heard in public, or a film to be heard in public, the physical thing is not what goes into people's ears, of course, you hear the sounds, disembodied from the physical record. Just as on the radio station, when the radio station broadcasts my CD, of course the physical record is left behind, as your Honours know, and the sounds are - because it is the sounds that are protected, though, for substance, they must have been embodied in a record, and those sounds go to a listener's ear. Turning their radio on, that sound recording is broadcast. Otherwise the whole thing - the right in the sound recording simpliciter, or film, does not work.
You would not even have a copyright in the exhibition of a feature film, because you do not get hit in the ear with a piece of celluloid. You see, through your eyes, the images that are embodied in the physical article or thing, and you hear through your ears the sounds that are embodied in the physical article or thing. That is what performance. Similarly, broadcasting is sending the things, those same things, visual images and sounds, by wireless telegraphy to a receiver, which emits them visually and orally.
That is the narrow point but, with great respect, what your Honour Justice Kirby puts to me is not right, I am sorry to say, because when you broadcast the film you are broadcasting everything else and, but for 23, you would be broadcasting the sound recording. Assume we have not got 23 for the minute, when you broadcast that - - -
GUMMOW J: Well, just to take the example, forget about broadcasting television, just assume it is being shown in a cinema. Now, how does all this work?
MR CATTERNS: Well, your Honour, the film is shown in the cinema. May I put section 23 aside for the minute? The film is shown in the cinema. That film is caused to be seen in public and, in so far as it consists of sounds to be heard in public, we all hear it and see it as we sit in the Hoyts. There are underlying musical works. We hear them in public. The cinema gets a licence from APRA because the composer gets a royalty for that. There is an underlying film, assuming that this film has included footage from another film. The film, too, is seen in public, so far as it consists of visual images, and heard in public. So, all of the underlying things: dramatic works, musical works, literary works, being the lyrics of songs, and sound recordings are all, themselves, heard in public. Section 113, amongst other things, is designed to make sure that I have not lost my right in my song - - -
GUMMOW J: I think it is being put to you that, translating it to the cinema situation, the music that is being heard in the cinema is not, in relation to the first sound recording that was made, causing that recording to be heard in public but it is, rather, causing to the film to be heard in public.
MR CATTERNS: Yes, your Honour. My answer is, it is causing both to be heard in public. It is causing all of those elements - - -
KIRBY J: Indeed, the scheme of the Act seems to contemplate that they are separate entities.
MR CATTERNS: Yes, your Honour, and each of them has their own copyright and, but for section 23, every one of them is heard in public.
KIRBY J: But 85 seems to slip this particular sound recording out of it because it deems it not to be a sound recording.
MR CATTERNS: 23, your Honour means.
KIRBY J: Section 23 does that in combination with 85.
MR CATTERNS: Well, your Honour, I submit not, but that is - - -
KIRBY J: That is the question?
MR CATTERNS: Yes, but for 23 - - -
KIRBY J: Can I ask you this? In your written submissions, you rather criticised the majority view that the consequence of this is simply, as a matter of practicality, if the court declares this to be the law, that you have to have arrangements in the licence agreements that make allowance for the fact that it will be reproduced down the line.
MR CATTERNS: Yes, your Honour.
KIRBY J: Now what is so wrong with that? That works nicely. If you give it to filmmakers, then you have got to get such a remuneration from releasing it at that point that will compensate you down the line for the reproduction save for the rogue cases of Taiwan and Vietnam, maybe Thailand and other countries, you get compensation that way. What is so wrong with that? That seems to work quite well.
MR CATTERNS: Your Honour, let us leave Taiwan out of it and just assume this: my sound recording is reproduced in the film Peter's Friends which is the one in suit. Somebody then goes to the video shop, hires it, copies it, takes my record off it, assuming we have got good quality all the way through, takes my sound recording off it and sells a million CDs.
KIRBY J: Yes, but they have got to put up with all the crows and other things, and smashes and crashes in the film.
MR CATTERNS: But, your Honour, you can pull it out of it. You just tape the three minutes where Kiri Te Kanawa is singing beautifully. I am picking something from Mozart so there is no composer involved with the copyright.
KIRBY J: Mahler, perhaps.
MR CATTERNS: Your Honour, we can pull that out, we can take that out and in beautiful quality, put that on a CD and sell a thousand copies. Now if 23 is right, we, the owner of the copyright in the sound recording, cannot sue for that. It does not infringe my copyright.
KIRBY J: Well, maybe Dame Kiri Te Kanawa just has to take that into account for her performance fee.
MR CATTERNS: Well, your Honour, that is another right altogether. That is the performer's right. But, your Honour, the question is whether - there is a possibility, of course, that the record company, when they allow that say, "Well, you have to allow for all forms of piracy". But then, your Honour, what happens? We say to the filmmaker, "Excuse me" - I am the record company and I say to the filmmaker, "Would you please sue these people who are now reproducing my sound recording via your film.", because I cannot stop it if the construction of 23 is right. Only the cinematograph filmmaker, who may or may not be there.
Then, your Honour, the first question is, is it a substantial part of the film? It is no longer my normal infringement question which I have when I am suing for infringement of copyright in my sound recording where, when they take my whole sound recording it is a substantial part and I get my injunction. I have got to persuade the filmmaker to sue or contractually bind him to sue. He has to sue, he has to establish that it is a substantial part of the copyright in his film, not in my sound recording, in his film. So that the three minutes of Dame Kiri's singing has to be a substantial part of the whole of that film, which might last four and a half hours, et cetera, et cetera. So I am in a vastly worse position in terms of the various things that can happen with section 23.
I mean, of course people can deal with these things contractually if - and sometimes contractual things can be passed down the line and that gets over problems of privity and so on. But, your Honour, we submit it is a vastly impractical position, not to mention pure piracy, and nobody else gets that position when their work or other subject matter is embodied in the film. If Dame Kiri is not longer singing Mozart but she is singing something by Richard Meale he can sue; he does not have to go by the filmmaker to sue. On our friends and the majority's construction of 23, the sound recording owner cannot.
KIRBY J: Yours is a construction which limits the flowing of ideas and of music and of - - -
MR CATTERNS: Not at all, your Honour, because section 109 deals with that problem, we cannot forbid this.
KIRBY J: No, you cannot forbid it, but by levying your costs at this point you put a - - -
MR CATTERNS: Yes, your Honour, but that is what the Copyright Act 1912 is all about, giving people remuneration for the use of their work. Your Honour, my learned friend's clients can look after themselves and they can pay us such royalty as the copyright - - -
KIRBY J: But you can look after yourself too, at the licence point.
MR CATTERNS: Your Honour, we can have a policy debate about what is the right point to do it at, and - - -
KIRBY J: You opened the policy debate. It is relevant, in my opinion, looking at how the Act is supposed to work.
MR CATTERNS: Yes, your Honour, I accept that, because as you say we put a policy argument about the consequences that can flow, but these consequences that I have put to your Honour flow entirely in the area of unauthorised reproductions; we have been talking about broadcasts. It is a yet, and further, we submit, unintended consequences, that it goes down the line to all of the rights under section 85. Anything done with respect to a film - - -
KIRBY J: May I ask a last question and then I will not interrupt again. Is it not in the reality of the practicalities that normally a broadcaster would want to use the original perfect recording without all the background noise and so on that typically a film would produce and that therefore this is, in practical terms, a relatively minor problem?
MR CATTERNS: No, your Honour, with respect, because when they want to broadcast the feature film, they just broadcast the film. Your Honour is only referring to the case where they want to use a particular record to accompany the news and so on, well, they will do that and if this interpretation of section 23 is right, then we will only get royalties for those very few uses.
KIRBY J: So you want to get your licence fee from the filmmaker and the fee from the broadcaster?
MR CATTERNS: Yes, your Honour, because they are different rights. We license the filmmaker our 85(a) right "to make a copy of the sound recording". We want to license our learned friends the 85(c) - subsection (1) now, your Honours. We want to license our learned friends "to broadcast the recording" and your Honours know from time immemorial, since 1709 to be precise, authors have been able to chop up their copyrights and the whole structure of section 31 on the one hand and 85, 86, et cetera, on the other is that the copyright owner gets a bundle of rights which they can divide up right by right and, your Honour, just for completeness, by section 196(2) they can assign their right by subrights. You can limit an assignment - and also a licence, I interpolate:
so as to apply to one or more of the classes of acts that, by virtue of this Act, the owner of the copyright has the exclusive right to do (including a class of acts that is not separately specified in this Act as being comprised in the copyright but falls within a class -
So you can grant not just your reproduction right, if you are a book author, but you can grant the right to reproduce it in a film, reproduce it in a magazine, reproduce it in a book sold in New South Wales and so on. These rights are infinitely divisible as to rights, territory and period and, your Honour, we submit there is nothing in the structure of the Act that supports an idea that there is a once and for all conveyance in this one particular area of discourse, whereas nowhere else is there a once and for all conveyance of your rights. Nowhere else does the Act require you at the point of consent to assume and take into account in negotiating your remuneration every other possible use that can be made via the film. I hope that is - - -
KIRBY J: This goes back to some of the earlier debates, that it is in your client's interest to have the film popular and the film reproduced and that that, as it were, increases your visibility in the market and is advantageous to you economically.
MR CATTERNS: Yes, your Honour, and his Honour Justice Gummow, a long time ago, in another case, a case where I was led by my learned friend, Mr Hely, that argument is called "airplay" and radio stations and TV stations have hated the idea of paying record companies since 1920 something, because they say, why should we pay you for the broadcasting or your sound recording - - -
KIRBY J: We are doing you a favour.
MR CATTERNS: Because we are doing you a favour. Well, no doubt that argument will surface again in the Copyright Tribunal when we get back there. But, your Honour, we submit that that debate, as a matter of legislative enactment, has been resolved in a balance by 85(1)(c) and by the statutory licence in 109. And, your Honours, there are even some limits in 152 about how much money we can get paid with respect to radio, namely, 1 per cent of the radio station's revenue. So this debate has been carefully worked out - I am sorry, this balance of those competing considerations has been worked out and we respectfully submit that the - almost by accident - 23 does not alter it by opening up a whole avenue of use of sound recordings via the film.
KIRBY J: Is there any academic writing on this, apart from Mr Silverton's article on this case?
MR CATTERNS: Your Honour, we have given your Honours a reference to what Laddie Prescott & Vitoria say on the text, on the English section, which we submit supports us.
KIRBY J: In the context of the English text.
MR CATTERNS: Of course, your Honour. But your Honours know that really what we say is here is this jump from 12(9) to 23, with no explanation other than what we submit is the apparent one, which is that it is a structural approach to the sending out and drafting of the Act, pulling proviso out of the definition - or a parenthesis, in effect, out of the definition. Your Honours, if we are right on this submission, that 23(1) does not have the effect our friends contend for, the result of that would be that the separate questions would be answered "Yes" - it may only be necessary to answer the first of each group of separate questions.
GUMMOW J: Why would that be?
MR CATTERNS: Because, your Honour, the questions are - - -
KIRBY J: Justice Lockhart said that, as they were in the alternative, he did not have to answer them.
MR CATTERNS: Yes, your Honour. The questions are - - -
KIRBY J: That does not mean we would have the pleasure of a revisit, does it?
MR CATTERNS: No, your Honour. Your Honours, 104 to 105 set out the formal answers of the questions. For our purposes, an answer to 1(a) "Yes" and 2(a) "Yes" is sufficient. I think the only reason that the alternative question was put in was that our friends wished to leave open an argument that there was some difference between 152 and 85, but I do not know if that is - - -
GUMMOW J: I am just looking at your notice of appeal, that is all, page 112. People always ask things in the notice of appeal when they do not want them in oral argument, then they complain that they wish to get what they did not want. You just want 1(a) and 2(a), do you? And you want "Yes" for both, so, we treat the notice of appeal as amended.
MR CATTERNS: Would your Honour just parton me a moment. Your Honour, the answer is, the only answers we require are yes, we would respectfully submit ought to be given, are yes to 1(a) and 2(a). We do not need answers - for our point of view there is no difference and therefore we do not need answers.
GUMMOW J: So we just say "unnecessary to answer", would we?
MR CATTERNS: Yes, your Honour, as his Honour Justice Lockhart would have done. It relates to an argument that we think has not arisen, may it please the Court.
GAUDRON J: Thank you, Mr Catterns. Yes, Mr Hely.
MR HELY: If the Court pleases, whether one approaches this question through section 85 or through section 109 or through section 152, and the basic question is whether the broadcast of a cinematograph film also involves a broadcast of the sound recording in which the appellants have copyright. If one looks at the definition of cinematograph film in section 10, one can see that it has two components. The first component is the visual images, the second component is the aggregate of the sounds embodied in a soundtrack, and when combined together and affixed with the visual images the product is this Part IV creature called a "cinematograph film".
Because of its origin, some provision needs to be made for determining the continuing interrelationship between the sound recording which came into the film and the film which is the product of the incorporation of that sound recording and with other matter.
In our submission in section 23, is that provision. What it was intended to do, and what it in fact does, is to affect a severance or to break a link between the sound recording and the cinematograph film into which it has been incorporated.
If I can test it this way: if one looks at section 85, just taking the broadcasting right for convenience and looking at 85(1)(c), the question is whether we are broadcasting the sound recording.
GUMMOW J: Which one?
MR HELY: The sound recording in which the appellants have copy right, because, clearly, what we are doing is broadcasting a different aggregation of sounds on the aggregation of sounds on which they have copyright. We are doing so and they have been embodied in a different record from the record in which their sounds have been embodied. But Mr Catterns' fundamental contention is that by broadcasting a film, we are broadcasting, amongst other things, his sound recording. One then goes to the definition of "sound recording" and sees that it is, "the aggregate of the sounds embodied in a record".
KIRBY J: Does that mean that, really, you do not need 23, because on your construction 85 is enough all on its own because the sound recording which is being broadcast is a different sound recording than that in which copyright inheres in the appellants.
MR HELY: It is a different record but some of the sound that we broadcast in our soundtrack are the same sounds as those embodied in Mr Catterns' sound recording.
KIRBY J: But are they? Are they not a separate combination of sounds with background sounds possibly, and other sounds and they will hit the ear possibly with some variations, the whole will not be the same and therefore it is a different recording?
MR HELY: That may be but there some, I am told, films which have no soundtrack other than music. It does not necessarily follow that there will be additions or even, perhaps, subtractions from the sounds that originally constituted the pre-existing sound recording. But, if there is this addition, the argument against us is that by broadcasting the film, we are broadcasting both, but one has to attend to section 23, in our respectful submission, and section 23 says:
For the purposes of this Act, sounds embodied in a sound-track associated with visual images forming part of cinematograph film shall be deemed not to be a sound recording.
It therefore follows, by the application of section 23, to the definition of "sound recording" - - -
GUMMOW J: No, but it does not say it shall be deemed not to be a copy of the sound recording Mr Catterns already has, you see.
MR HELY: No, but the question is, what for the purposes - - -
GUMMOW J: It is consistent with it saying "shall be deemed not to be", as it were, itself a sound recording, do you see what I mean, and, therefore, with its own life from the point of view of - - -?
MR HELY: Section 23, in our submission, does two things. First, it makes it clear that the copyright which subsists in a film is section 86 copyright and the second thing which it does is to determine what the consequences of broadcasting a film are in so far as that relates to the pre-existing - - -
GUMMOW J: It is not talking about "broadcasting". It does not mention the word "broadcasting".
MR HELY: No, but that is its effect when you incorporate it into section 85. Section 85 says Mr Catterns' rights are infringed - - -
GUMMOW J: But it cannot be just 85(c).
MR HELY: No, the same thing would apply to - - -
GUMMOW J: It has at least to be 85(b).
MR HELY: Well, the same. The position is the same with (b), (c) and (d). I simply pick - broadcasters are a convenient example - - -
GUMMOW J: Because you are a broadcaster. I understand that.
MR HELY: - - - because I am a broadcaster and I have an affinity, at least professionally, for broadcasting. So that our submission, if your Honour pleases, as to the way section 23 works is that one starts with section 85 and one says to oneself, "Are we broadcasting the sound recording in which Mr Catterns has copyright?" That takes us back to what a sound recording is and we cannot stop there because section 23 expands upon that idea and it says:
For the purposes of this Act, sounds embodied in a sound-track -
if I can put it loosely, is not a sound recording. Therefore, when you broadcast a soundtrack you are not broadcasting a sound recording. What section 23 does, and it is a deeming - - -
GUMMOW J: What does 23(2) do? They are put in the same section. Do they have any relationship?
MR HELY: I would submit not. We would submit that section 23 is in the nature of a deeming provision and we have referred in our submissions to the decision of this Court in Hunter Douglas [1970] HCA 63; 122 CLR 49 as to the way in which such provisions ought to be construed. If I could go first to page 51. This was a case in which a provision of the Trademarks Act provided that a mark was deemed to be registered from a particular time. The Act also provided for expungement if there was non user for a period and the question was does the period run from the date of actual registration or from the deemed date of registration? Justice Kitto, on page 51 at about point 4, said:
Its manifest purpose is to control the meaning and application of every provision of the Act relating to the date of registration of the trade mark, except any provision, such as s. 109, that cannot be so controlled because it makes a different provision for its own special purposes.
And so on, and then at about point 5:
the operation of s. 53(2) is that of an addendum or proviso to every provision of the Act for the purposes of which the date of registration of a trade mark needs to be ascertained and which does not itself prescribe a different method of ascertaining that date.
We submit that section 23 is in like position. It is in the nature of an addendum or proviso or specification that one takes into account when construing the term "sound recording" wherever one comes across it in this Act.
KIRBY J: But would you not have expected, if that were the effect of it, that to take away such a valuable right which exists as a separate right of broadcasting, that there would have (a) have been something in the Spicer Report; (b) have been something in the Minister's statement and, (c) have been something in the second reading speech?
MR HELY: If there was an antecedent right I would have to answer each of those questions "yes". But my friend's rights are referable to this legislation and to nothing else. There is no pre-existing right which he had prior to and separately and distinct from this legislation which, on my construction, qualifies, takes away or derogates from, and one simply has this Act to the 1968 Act which created a wall of my learned friend's rights. All of the rights that are related to sound recordings and all of the rights that related to cinematograph films came into existence at the same time in this 1968 statute. So it is not a case to have derogation from the grant, as it were, which, if I take your Honour's point, one would expect to see dealt with conspicuously and after discussion.
GUMMOW J: In a section like 110?
MR HELY: In a section like 110, if that is the only work it had to do. But, of course, this does more than provide a defence. It also goes to the section 85 and section 89 questions, whether you do have an 85 copyright in a soundtrack in addition to an 86 copyright in the film. It is not just a defensive provision. It is one which has a broader reach than that which may perhaps explain why it is in section 23 and not in the sections that Justice Gummow was just directing my attention to.
GUMMOW J: Like 89(3). Section 89(3) cuts things back.
MR HELY: Yes.
GUMMOW J: We are grappling with the international situation first.
MR HELY: I have no doubt, with respect, and I know I do not mean to not respond to the point that your Honour is putting to me, that this provision could have been located in a large number of places in this Act if its function was intended to be one thing rather than the other. But when it has a function which goes beyond a defensive function and when what it is doing is talking about the conception of sound recording when it appears in Part II it is hardly surprising that any qualification upon that conception is to be located in the same part as the conception itself.
GUMMOW J: I think Mr Catterns concedes it has more than an offensive function because it stops the film having two characteristics, is generative of two sorts of Part IV rights: one, cinematographic film, and two, generative of a sound recording right.
MR HELY: That is one of its functions, but that does not exhaust its functions, on our case. It is because it has more than one function, and because it operates as a qualification to the conception of sound recording, that it is unsurprising that one finds it in Part II rather than in sections which are limited in their operation to defences.
GAUDRON J: Would that be a convenient time, Mr Hely?
MR HELY Yes, your Honour.
GAUDRON J: Adjourn until 2.15.
AT 2.48 PM LUNCHEON ADJOURNMENT
UPON RESUMING AT 2.16 PM:
GAUDRON J: Yes, thank you, Mr Hely.
MR HELY: If the Court pleases. Your Honours, I was looking at the decision in Hunter Douglas 122 CLR, by taking your Honours to a passage in the judgment of Mr Justice Kitto at page 51.
McHUGH J: Well, you read us that.
MR HELY: Yes. Can I refer to a passage in the decision of Sir Garfield Barwick at page 57, point 6, and 64, point 3, but perhaps of more assistance is a passage in the judgment of Mr Justice Windeyer on page 65. His Honour deals with this topic in the long paragraph commencing, "However", but at about point 7 his Honour says this:
The words "deem" and "deemed" when used in the statute thus simply state the effect or meaning which some matter or thing has - the way in which it is to be adjudged.
And we submit that section 23 is simply a premise to be applied generally in the construction and application of this Act.
HAYNE J: May I take you back a stage, Mr Hely, and see if I understand the argument you have advanced thus far? You say the question we begin with is, is there a broadcast of the sound recording within section 85? You go from that to the proposition a soundtrack is not a sound recording, see section 23; and you conclude, therefore, there is no broadcast of the sound recording because the soundtrack is not a sound recording, is that so?
MR HELY: Yes, your Honour.
HAYNE J: Is that to confuse the medium of the broadcast, namely, a soundtrack, with the subject matter that is broadcast, namely, the sound recording, in this case, of Boom Crash Opera, or whichever it was?
MR HELY: We submit not. Can I perhaps just go back one step which was not expressed but I suspect was implicit in what your Honour was putting to me. In a sense the starting point is section 101 because the issue is: are my clients doing acts which are comprised in the copyright? That takes us, as your Honour says, back to section 85(1)(c) using broadcasting right as the example and that involves the question, are we broadcasting the recording in which copyright subsists? Our submission from section 23 is we cannot be broadcasting the recording if we are broadcasting a collocation of sounds which the statute says in section 23 are not a sound recording.
GUMMOW J: Yes, but the sounds there referred to are any or all, if you like, sounds embodied in the soundtrack because they will have these bird calls and so on.
MR HELY: The bird calls I think were something else, but that is the essential case we put, your Honour, which, subject to the introduction of section 101, is as your Honour puts to me and in a sense that is what this case is about and, if I could just add, we would submit it makes no difference in response to what Justice McHugh was putting before lunch whether section 23 is located where it is or whether it is located within section 85.
McHUGH J: I am just having difficulty in my own mind grasping this problem. If there is a concert and EMI and Festival both record that concert, they record exactly the same sounds. In that situation for the purpose of 85 it is impossible to say, it seems to me at the moment, that they are broadcasting the recording of each other.
MR HELY: Correct. I am sorry.
McHUGH J: Yes.
MR HELY: I agree with what you say.
McHUGH J: So, the recording in 85 must be referring to a physical thing. Although it must embody sounds, it must be the physical thing - that is plain from (a), you cannot make a copy of the sound recording and you can cause the recording to be heard in public. I do not know where that leads to but it seems to me that one has to be very careful to distinguish between the copyright and sound recordings and artist's copyright or author's copy - - -
MR HELY: Because of the absence of any requirement for originality.
McHUGH J: Yes. So, it keeps pushing you back - it has to be something physical which does something or transmits something. I do not know where that leads to but - - -
MR HELY: It is pivotal to the concept of sound recording that the sounds embodied in it are fixed in some way. Because it is only once there is an embodiment in the sense of sounds being fixed into a record that one does have a sound recording. But, nonetheless, the copyright, once the affixation has occurred, is in the sounds embodied in the recording.
HAYNE J: And thus there can be a single sound recording which is produced as a vinyl disc, a CD disc or a tape.
MR HELY: Yes.
HAYNE J: Which brings me back to the point of the medium. Does not section 23 focus only on whether a particular kind of medium is itself a sound recording, saying nothing about whether, through its use, there may be a broadcast of another sound recording.
MR HELY: Except, section 23 talks not just about a record. It talks about sounds embodied in a soundtrack and those sounds in that way, or when in that condition, are just not a sound recording, and I come back to the response I first gave to your Honour's question - - -
HAYNE J: There is the point.
MR HELY: I do not want to simply repeat the proposition I have already put. So that is the case that we put or that is what we submit is the proper construction of the legislation. We submit that one gets some assistance or perhaps some slight assistance from other provisions of the Act which are consistent with the construction for which we contend and the first is section 110(2).
I am sorry, before I come to that, one thing I did mean to refer to was a decision of this Court in Avel v Multicoin Amusements Pty Ltd [1990] HCA 58; 171 CLR 88 that Mr Catterns refers to and to the passage in the joint judgment at page 93 where the Court said at about point 7:
That confinement of s.29(1)(a) is, however, dictated by the content of other provisions of the Act.....by general concepts of copyright law and by considerations of policy -
Mr Catterns, I think, did not refer to any other specific provisions of the Copyright Act which, he says, would require the generality of section 23 to be confined, nor is there any general concept of copyright law which would produce that result and if one comes back to considerations of policy, another relevant policy is that the Attorney said that he was implementing the Rome Convention and Mr Catterns accepts that if he is right, the rights which he gets under the Australian legislation are broader than those to which the convention refers. If one takes each of the limiting factors that are referred to in the decision in Avel, our submission is that none of them are present here.
Could I come then to section 110(2) which says, in substance, that once copyright in a film:
has expired, causes the film to be seen or heard,.....in public does not,.....infringe any -
of the Part III copyrights.
There is no reference to sound recordings, hence it seems to be - or hence, in our submission, it is implicit in subsection (2) that causing a film to be seen and heard in public does not at the same time involve causing the sound recording to be so seen and heard; otherwise one would expect to find a reference to "sound recordings" in subsection (2), which are absent.
GUMMOW J: Why? All subsection (2) is doing is pursuing what is spelt out in 113. It is an exception. It trenches upon the general regime of 113, which allows all these rights to run together for their maximum length and with their incidence. In a specific circumstance, when one turns to subsection 2, is cutting into these rights of "literary, dramatic, musical or artistic work". It is not cutting into anything else, as 113 would suggest.
MR HELY: I see the force of that. I put the submission, for what it is worth, that 110(2) talks about the Part III matters but not the Part IV matter and it is implicit in the section that the causing of the film to be heard in public does not simultaneously produce the same result in relation to the sound recording. We would submit that the submissions that we put are consistent with section 110(3). That is the section that provides that:
Where the sounds that are embodied in a sound-track.....are also embodied in a record, other than such a sound-track or a record derived directly or indirectly from such a sound-track, the copyright in the cinematograph film is not infringed by any use made of that record.
We submit that this is a reciprocal provision of section 23 and that what it says, in effect, is that things derived from the film are for the holder of the copyright in the film to complain of are things derived from the record, matters for the holder in the copyright of the record to complain of. Section 110(3) shows the same pattern, have division and separation, as comes from section 23 itself. We would submit that some assistance comes from section 113(1).
KIRBY J: It has some rather odd consequences, though, as pointed out at the end of his argument by Mr Catterns, that you can then say for reproduction purposes, copy the recording in the film, which may be all there is on the soundtrack, and that then becomes the source of the rebroadcast and the use which deprives the owner of the benefit of copyright protection.
MR HELY: If the soundtrack was incorporated in the film without the licence of the copyright owner in the soundtrack, then there has been an infringement of his reproduction right, and so that if something happens without his consent, he is protected to the extent to which he has consented to this being incorporated into the film. We would submit, there is nothing unfair or odd about - - -
KIRBY J: You give the answer the majority gives, the time to think about that is the time that you settle your terms of your licence.
MR HELY: Yes, but this legislation provides, in effect, that had the copyright in the film subsisted independently of the copyright in the sound recording, rights are given, and the time for complaint is at the time of the reproduction or the time for negotiation is at that point.
We would submit that there is some assistance flowing from section 113 because it is confined to Part III Works. There is no equivalent provision in relation to Part IV Works, subsection (2) is not an equivalent provision because it is confined to the subsistence of copyright, that is to say, it is confined to the matters appearing in Division 3. It says, in effect, that subsistence of copyright under, for example, section 89 does not affect the operation of any other provision of this Part under which copyright can subsist such as, for example, section 90. So that one can have different Part IV copyrights in relation to overlapping subject matter.
If a film is incorporated into a film, or if a broadcast is incorporated into a film, and if the film is broadcast, that may produce a broadcasting of the antecedent film which has been incorporated into it or it may produce a broadcast of the broadcast. Because of the exclusive rights given in relation to the film which is incorporated and the broadcast which is incorporated, it may be that one needs the consent of the holders of those incorporated matter before one can broadcast the film. But in the case of a sound recording, once a sound recording becomes incorporated into a cinematograph film, a broadcast of the film, on our submission, pursuant to section 23, is not a broadcast of the sound recording, it is a broadcast of something different. So far as the history of the legislation is - - -
McHUGH J: Before you come to the history, I must say at the moment I am starting to harden up against your arguments. I want you to deal with this point. If you carry the definition in 23(1) across to 85, you have to read the section this way, do you not, "For the purpose of this Act, unless the contrary intention appears, copyright in relation to a sound recording, not being sounds embodied in a soundtrack associated with visual images", et cetera, "is the exclusive right to do all or any of the following acts." Now, that would mean that there is no copyright under 85 in respect of those sounds that are in a film - one has to go to 86 - and the copyright in those sounds in the film is then given to the maker of the film. But people in the position of Mr Catterns' clients can go back to 85 and say, "In respect of our original recording, we do have all those particular rights in respect of the sounds, so long as they are not caught by the exclusionary part, and we are entitled to enforce those rights."
MR HELY: It comes back to section 101 - - -
McHUGH J: Well, 101 just simply defines - - -
MR HELY: It tells one, or teaches one, what in - - -
McHUGH J: It says who is the owner of the copyright.
MR HELY: Section 101 talks in terms of what an infringement is.
McHUGH J: Yes, doing:
any act compromised by the copyright.
MR HELY: Comprised in the copyright. So, one comes back to 85(1)(c)to broadcast "the" recording.
McHUGH J: Yes, but it does not give you any authority. Neither 101 or 85 gives you any authority to breach the original recording. What it does is it says that Mr Catterns' clients have no copyright in respect of the sound recording embodied in a film, but they do have copyright in their original recording. You get copyright in the film sounds, but that gives you no authority. That does not mean you are not committing an infringement of his original rights.
MR HELY: That gets back to the question as to whether it can be said that we are broadcasting in terms of 85(1)(b) contrary to section 101, the recording, if what we are broadcasting is a collocation of sounds which the statute says is not a sound recording.
McHUGH J: Yes, but 86 gives you the right to stop other people doing it. It does not give you any rights as against what I call Mr Catterns' original copyright.
MR HELY: It does not give me any rights to copy his sound recording, but once his sound recording - - -
McHUGH J: No, it is not a question of copying. It is not a question of infringing.
MR HELY: Once his sound recording becomes incorporated into a cinematograph film, we submit that section 23 produces the severance that I referred to before lunch.
McHUGH J: It seems to me at the moment that what 86 sort of does to you is it enables you to prevent others from making a copy of your film or causing the film in so far as it consists of sounds to be heard in public or to broadcast the film.
MR HELY: I agree that that is what section 86 does, but the question is, am I infringing 101 through 85.
McHUGH J: Yes. Well, the argument against you at the moment, it seems to me, is that that says what your rights are against other people in relation to your film. It says nothing at all as to whether you can infringe the rights which she has and which are dependent on or arise from 85.
MR HELY: I agree that section 86 is not the source of an authority qua Mr Catterns.
McHUGH J: Yes.
MR HELY: But the question is, am I infringing Mr Catterns' rights, and that takes one back to section 101 through section 85 to sound recording to section 23 and our submission is that we cannot be broadcasting what section 85 describes as "the recording" if we are broadcasting a collocation of sounds which the Act says, not because of section 86, but because of section 23.
McHUGH J: No, but if you go back to 101, all it says is:
copyright subsisting by virtue of this Part is infringed by a person who, not being the owner of the copyright -
and that is you. You are not the owner of the 85 copyright.
MR HELY: That is right. I agree.
McHUGH J:
does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.
And the doing of the act is, for example, broadcasting the recording.
KIRBY J: You say it gets back to the whole argument. You are broadcasting the film.
MR HELY: I would agree with Mr Justice McHugh completely and without reservation if it were not for section 23, but the question then becomes what is the effect of section 23?
McHUGH J: What I was putting to you is that all it does is put brackets after "sound recording" where it first appears in 85 and says "not being sounds embodied in a film".
MR HELY: I suppose it would be possible to construct an amendment to section 85 that would produce that result - - -
McHUGH J: I think it follows fairly naturally. In fact, I have written it out - and seemingly that was the result that you got that from. Anyway, I understand.
KIRBY J: But the point made earlier ought not to be lost and that is that the recording contemplates something physical or tangible which is - because of the terms of paragraph (a) and that in the case of the film score is different from the case of the original recording.
MR HELY: Yes, but ultimately, one does, I submit, come back to the construction of section 23 and what is meant by the recording. And, as I have said, it is our submission that we cannot be broadcasting the recording if we are broadcasting a collocation of sounds in which the Act says are not a sound recording. That is what I wanted to put on the questions of construction. So far as the - - -
McHUGH J: You were going to go to the history - - -
MR HELY: As far as the history is concerned, sections 12 and 13 of the United Kingdom Act throw up precisely the same question of - when I say precisely the same, I should not say that- throw up a very similar question of construction to what is thrown up here. There are no decisions on those sections. They have the same ambiguities inherent in them as are inherent in section 23 when read in conjunction with the rest of the statute - - -
KIRBY J: The text is against you, though, apparently.
MR HELY: No, I would submit not. But if one is looking at sections 12 and 13 of the United Kingdom Act one comes back to the same question - - -
KIRBY J: I did not mean the text of the Act, I meant the text - - -
MR HELY: The text of Laddie, yes, it is. That is an opinion of the author which is inconsistent with the submissions that we put. It is not based upon anything other than the author's opinion. If one comes back to section 12 of the United Kingdom Act the question still is - is the broadcast of a soundtrack the broadcasting of a sound recording in terms of 12(5)(c), having regard to the definition of sound recording in 12(9). We would submit that there is excepted from 12(5)(c) the soundtrack associated with the cinematograph film. It is, perhaps, not as clear, on our view, as it is only in the context of the Australian Act, but we would submit that the same result would follow.
So far as the Roman Convention is concerned, there are two matters that we seek to take from it. The first is that Mr Catterns accepts that the rights for which he contends, if they subsist, are greater than the rights conferred under Article 12, because Article 12 is confined in its operation to direct broadcasting of sound recordings which is the situation which arises when his record is purchased then and broadcast. Page 88 of the materials that were handed up is part of a second reading speech by Mr Bowen. On the right-hand column, at about point 4, there is a reference to the convention:
That Convention requires certain rights to be given to record manufacturers, to broadcasters and to performers of musical and dramatic works. The present Bill will give effect to that Convention in so far it relates to records to broadcasts, it being appropriate to deal with these matters in a Copyright Bill.
So that this Act, the Australian Act, was intended to give effect to the convention, and we submit that one would not ordinarily construe it as giving greater rights than those afforded by the convention itself. The second thing that we seek to get from the convention is that it is concerned only with aural fixations. There is nothing in the terms of the convention itself, or in the WIPO discussion which is associated with it, which would tend to indicate that its focus or concern was the respective rights of record companies and filmmakers when sound recordings have been incorporated into a soundtrack of a film. So that we would submit that both in its express terms, in terms of the rights that it confers, and in terms of the discussion of its content, it does not lend any support to the case for which Mr Catterns contends. Those are our submissions, if the Court pleases.
GAUDRON J: Thank you, Mr Hely. Yes, thank you, Mr Catterns.
MR CATTERNS: May it please the Court. Your Honours, if I may just deal with a number of the matters that the Court asked questions about before lunch - and I am sorry we do not have copies of all the material. So far as your Honour Justice Kirby's question about other jurisdictions, the position if this. The Court has seen, of course, the 1956 UK Act. The UK Act was amended in 1988. I am sorry, we do not have copies but we can certainly provide them. They are conveniently found in volume 2 of Laddie, Prescott & Vitoria. And the - - -
GUMMOW J: The second edition.
MR CATTERNS: 2nd Edition, your Honour, yes, thank you and the compartmentalisation issue, or categorisation issue, has, in fact, gone the other way in the new Act, namely the definition of "sound recording" now includes the soundtrack of the film and the definition of the "film" is just an article or thing, I am sorry, any medium from which a moving image may be produced.
Your Honour, we submit that is entirely consistent with our argument that this is all a question of categorisation and is a matter for the legislature to decide under what category those sounds, which could otherwise be in two categories, should fall.
Your Honour, so far as the New Zealand Act goes, we do have copies of the 1962 New Zealand Act and a copy from Brown & Grant's Law of Intellectual Property in New Zealand. Your Honours, the short point is that the New Zealand Act of 1962 followed the same approach as the UK Act of 1956 and, in their definition provisions, which were section 2(1) the definition of "sound recording" said "The aggregate of the sounds embodied in and capable of being reduced by means of a record of any description other than a soundtrack associated with a cinematograph film" so that is, in effect, the same as 12(9) of the UK Act. We can hand these to the crier afterwards, rather than cause delay now, your Honours, if that is convenient.
Your Honours, so far as Canada goes, until recently, where I think the Act has been amended and, if our friends do not object and if your Honours would think it convenient, we could give the Court the current Canadian legislation which we do not have now, but as at 1968 the provision was the old Canadian Act of 1921 which was very similar to the UK Act of 1911, reminding your Honours that, of course, the UK 1911 Act was a schedule to our Commonwealth Copyright Act .
By section 4(3) of the UK Act there was a copyright in mechanical contrivances, very like section 19 - I am sorry, of the Canadian Act, there was a copyright in mechanical contrivances in like manner as musical works in the same way as section 19 of the UK Act 1911 but, by section 4(4), the next subsection of the Canadian Act, that right was limited only to the reproduction right.
So, unlike the provision in England and Australia, at least until 1968, there was no broadcast right or public performance right in sound recordings in Canada and I think that is why, until recently, Canada was not in the schedule to the international protection regulations.
Your Honours, I gave some references on the run in answer to some questions, also, from your Honour Justice Kirby to the case that dealt with the video games, its name is Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 145 ALR 21. In fact, I think it was due to be heard for special leave this week but that has been moved. But I do not think it bears particularly on this case, but it is the reference to the cinematograph film being embodied in video game ROMs.
Your Honours, the Gregory Committee was chaired by Sir Henry Gregory, H.S. Gregory. It had earlier been chaired by the Marquis of Reding. Your Honours, just a couple of other substantive issues - - -
KIRBY J: He became Viceroy of India. He obviously did it well.
McHUGH J: No, I think it was the son, it was the son there. Lord Reding died in 1935.
MR HELY: I have learned not to pretend I have knowledge that I do not, your Honour, so I cannot take that further. Your Honours, a critical issue is that we submit that the fact that a sound recording, when it is mixed in with a film or embodied in a film, it does not lose its separate identity. It is a broadcast of our sounds, the sounds in our initial sound recording, even if other sounds are mixed in. So, even if, for example, voices talk over our sound recording or guns fire, or birds chirp, or cars crash - - -
KIRBY J: It is not the same, the combination is not the same. You are hearing a different thing. Your ears are picking up different messages. Yours may be the dominant one, but it is still a different combination.
MR CATTERNS: Yes, your Honour. But then, that takes me back to section 14, which is the "substantive part", and to broadcast a substantial part of my sounds, the sounds which constitute my sound recording, is still to infringe. So, your Honour, that could become a factual question, for example, before the tribunal, where our friends could say, "In 23 per cent of cases, on the sample that we have done, your sound recordings are so buried, cut up, the segments are only 15 seconds long," et cetera, but, your Honour, on the facts here, these sound recordings were embodied in the film, and I respectfully submit that that issue does not arise.
KIRBY J: No crows squawking in Voss.
MR CATTERNS: Well, there are no facts about it one way or the other, your Honour. Of course, your Honour, that whole concept of substantiality stops people avoiding infringement by chopping a little bit off or adding a little bit on, in all areas of copyright.
KIRBY J: I suppose, in any case, there would some films where it just pure recording and says nothing at all.
MR CATTERNS: Yes, your Honour. But, of course, in many cases people do talk over the song, yes. Your Honours, the example of the initial permission having to take into account any possible uses, including ones which the filmmaker himself or herself does not contemplate, perhaps can be given more starkly when we take ourselves away from the idea of a feature film, where the copyright owner in the sound recording is doing a deal in a serious way with the maker of Peter's Friends.
His Honour Justice Gummow dealt with a video in the APRA Case, Australasian Performing Right Association v Commonwealth Bank, which was just a training film where there was music. Well, if the Commonwealth Bank makes a little training film and puts one our sound recordings in it, if our friends are right, that is the one permission that needs to be granted and, if somebody somehow has access to that training film and reproduces it on CD, broadcasts it to the world and so on, or puts it in another film, we have lost our sound recording copyright or our ability to stop them, and we just cannot deal with that in our initial contract with the Commonwealth Bank. His Honour Justice Gummow raised the structural question of a reference in this Act versus for the purposes of this Act - - -
GUMMOW J: It sounds as if I am going to remain puzzled.
MR CATTERNS: No, your Honour, I was going to attempt to help your Honour. Your Honour, a reference to "this Act" is when a specific word or phrase is going to be defined, and that precise word or phrase would be used in the Act, for example, section 12:
A reference in this Act to a Parliament -
13(1):
A reference in this Act to an act comprised in the copyright in the work -
That is the structure of how it works, your Honour. The concepts are very close, as I have submitted before. "For the purposes" is used when the legislature proposes to apply a concept more broadly expressed rather than the precise words often by deeming as in 23. Your Honour Justice Gummow also asked a question about section 23(2) and how well it fits with 23(1). We respectfully agree with our learned friends on its own there, but it does a similar job to 24, your Honour, not precisely the same, but it is of the same type as 24 and I think we agree that it perhaps does not belong terribly well with 23(1).
Your Honours, we respectfully agree with what fell arguendo from your Honour Justice Hayne that attention to the distinction between the elements and the subject matter and the physical thing is important - critical - and that is why we stressed that at the beginning of our written submissions and orally too. So far as the example your Honour Justice McHugh gave of EMI and Festival recording the same concert, well, it is possible, if they both sit there, each of them is piped into the same microphones or hears it coming over the air into their own microphone, each will have a sound recording on their own tape, say it is on a tape or a cassette, so that each of those is a sound recording in which copyright subsists. The tape or cassette is a record and if our learned friend gets one or other of them and broadcasts it, they would need our licence, EMI or Festival's licence respectively, just respectively though, but for section 109, which gives them a statutory licence.
Your Honours, just finally to remind your Honours that a work is physical too. Just as when one broadcasts a sound recording, the physical record is left behind, if your Honours will pardon my putting it in that shorthand way. The physical record, of course, does not travel, but nevertheless it is a broadcast of the sound recording which is a different concept from the physical record.
The same goes for a work. When I read a poem over the air, my collocation of words, which had to be made in writing or some material form by section 22, the writing is left behind but the concept of broadcasting the work is apt to cover the reading out of words into a microphone, which gets converted into electromagnetic radiation and which transmits it down to a receiver and so on. So, your Honours, the solution to some of the problems that have arisen in discussion is a strict concentration on the difference between the concepts, in particular, here, the concept between the sound recording, on the one hand, the physical record in which is embodied initially in the other, and critically, for the purposes of section 23, the record which constitute the sound track, remembering, your Honours, that the soundtrack is a physical thing, by definition, as being part of one article in which the visual images are also embodied, or a separate article if the maker of the film provides it separately.
Your Honours, we believe that the new New Zealand Act - and again if your Honours do not mind, we will provide your Honours proper copies of these Acts that I have just dealt with on the run - follows the UK Act of 1988 and puts the sounds of a soundtrack into the sound recording category rather than the cinematograph film category. May it please the Court.
McHUGH J: Just before you go, what do you say about the discussion I had with Mr Hely about the interrelation with 23 into 85 and 85 and 86?
MR CATTERNS: Being as cautious as one is, from gifts from the Bench, your Honour, with respect, we think your Honour is right, but we noted this: in your Honour's redraft of section 85 it was almost exactly the UK Act.
McHUGH J: That is exactly right, yes.
MR CATTERNS: Because your Honour took the words "sound recording" in section 85 and added the little parenthesis of the UK Act - - -
McHUGH J: Yes.
MR CATTERNS: We submit that that makes it clear, and there seems to be a little disagreement that the UK Act probably means the same thing as our section 23, but we submit that when you look at the UK Act it is doing that categorisation job, and it is not saying what does or does not constitute an infringement of our pre-existing sound recording.
McHUGH J: Yes.
MR CATTERNS: Reminding your Honours, finally, that picking up the point of his Honour Justice Kirby, that, although my learned friend is right to say no pre-existing copyrights were extinguished, because a pre-existing sound recording before the 1968 Act is preserved by the transitional provisions, and one made after the Act lives under the new regime. But, really, that is a rather narrow approach, with great respect, because the whole class of rights, the whole class of copyright owners in sound recordings had broadcast rights including via films pre-1969. Our submission is that it would be surprising if that suddenly disappeared without something more express post-1969. May it please the Court.
GAUDRON J: Thank you, Mr Catterns. The Court will consider its decision in this matter.
AT 3.02 PM THE MATTER WAS ADJOURNED
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