Crown Use: The Government as User of Copyright Material Owned by Other Persons
© Springer International Publishing Switzerland 2015Brian Fitzgerald and John Gilchrist (eds.)Copyright Perspectives10.1007/978-3-319-15913-3_9
9. Crown Use: The Government as User of Copyright Material Owned by Other Persons
Thomas More Academy of Law, Australian Catholic University, 486 Albert Street, East Melbourne, VIC, 3002, Australia
An earlier version of this work was first published in the (2010) 9 Canberra Law Review 36.
An important differentiating feature of government under the law of copyright in Australia are those statutory provisions dealing with the government’s use of other copyright material it receives or deals with in the course of its work. No similar rights are given to other institutions or persons under the Copyright Act 1968 (Cth). These Crown use provisions provide wide entitlements to the Commonwealth and the States to do any acts comprised within the copyright without the express permission of the copyright owner, but subject to compensation. Similar Crown use provisions are also found in other intellectual property enactments of the Commonwealth.1
The Crown use provisions in the Copyright Act 1968 emanate from a recognition of the needs of government to use copyright material in the exercise of its fundamental responsibilities to the community it serves, such as defence, policing, essential communications and emergency relief, without the need to seek prior agreement from copyright owners and without the risk of an injunction to restrain it. The Crown use provisions in the Copyright Act 1968 are couched in broad language which enable any acts done for ‘the services of the Commonwealth or State’. This broad language is a reflection of the broad functions of modern government, which has assumed important regulatory, law enforcement and information-gathering roles across a wide spectrum of community activity in pursuit of goals, such as economic efficiency, better planning, budgeting and development. It is impractical, and sometimes inappropriate, to seek prior agreement with copyright owners if these functions are to be performed effectively.
The government’s entitlement to use material for its services without infringement of copyright does not solely arise under the Crown use provisions. It may arise in three ways.
One way is through an implied licence to the Commonwealth or a State to reproduce or even publish copyright material, such as letters, sent to it. For example, a licence to reproduce a letter would normally be implied from the sender of a letter to government, to enable proper consideration of the contents of the letter by ministerial or departmental officers and to assist in the preparation of a reply. This entitlement is further discussed in Part 9.3 of this chapter.
There are also a number of statutory provisions in various Australian jurisdictions which enable the Commonwealth or a State to do acts in relation to copyright material which provide immunity from civil and criminal proceedings. One example is s 90 of the Freedom of Information Act 1984 (Cth) which provides that where access is given to a document under the Act or where access is given in the bona fide belief that access was required to be given under the Act, then no action for defamation, breach of confidence or infringement of copyright lies against the Commonwealth by reason of the authorising or giving of access. Access may be given in the form of a copy of the document.2 These provisions are discussed further in Part 9.4 of this chapter.
Of greatest importance however, is a provision in Part VII, Division 2 of the Copyright Act 1968 which enables the Commonwealth and the States to do any act comprised in the copyright in a work or other subject matter if the act is done ‘for the services of the Commonwealth or State’.3 This ‘Crown use’ provision—s 183 of the Copyright Act 1968—and its ancillary provision (s 183A) operate as a statutory licence providing an unfettered entitlement to the Commonwealth and the States to do acts comprised in the copyright in works and other subject matter protected by the Copyright Act 1968.
The nature, scope and operation of the Crown use provision in the Copyright Act 1968, the extent to which licences may be implied to government to reproduce or publish copyright material it receives and the breadth of other statutory rights held by government and their relationship to s 183 of the Copyright Act 1968, are discussed in more detail in the remainder of this chapter. In particular, the writer examines arguments for construing s 183 to complement, rather than override, the special defences to infringement, such as s 40 (fair dealing for research or study) which users of copyright material may rely on generally under the Copyright Act 1968. The writer concludes that there are good reasons in law and policy for construing s 183 to complement these special defences.
Acts comprised in the copyright in material and, most importantly, the reproduction of copyright information within government agencies and across them, are a management demand required for the effective review and consideration of material and for government agency coordination and interoperability, and such acts are also necessary to fulfil the basic right of all citizens in a democratic society to be informed of, and to have access to, government information. Increased engagement with the community online and the internal transfer of agency information will inevitably increase. These practices of government may test the effectiveness of relying on an implicit licence from the provider of information and the present defences to infringement under the Copyright Act 1968. The writer concludes that the High Court decision in Copyright Agency Limited v New South Wales,4 and the changing technology in the way we communicate, suggest a need for an express special defence outside the operation of s 183 permitting certain public uses of copyright material deposited or registered in accordance with statutory obligations under State or Commonwealth law.
9.2 Crown Use
9.2.1 The Scheme of Section 183
The scheme of s 183 is, in essence, set out in ss 183(1), (4) and (5).
The scheme may be summarised as follows. Section 183(1) provides that the copyright in a work or other subject matter is not infringed by the Commonwealth or a State, or by a person authorised by the Commonwealth or a State, doing any acts comprised in the copyright if the acts are done for the services of the Commonwealth or a State.
Section 183(4) provides that where an act comprised in a copyright has been done under s 183(1), the Commonwealth or State shall, as soon as possible, unless it appears to the Commonwealth or the State that it would be contrary to the public interest to do so, inform the owner of the copyright of ‘the doing of the act’.
Section 183(5) provides that where an act comprised in a copyright has been done under s 183(1), the terms for the doing of the act are such terms as are, whether before or after the act is done, agreed or as may be fixed by the Copyright Tribunal.
Section 183(1) is thus expressed as a defence to infringement of copyright as are the special defences to infringement provided in Divisions 3, 4, 5 and 7 of Part III of the Act and in Division 6 of Part IV of the Act, but principally ss 40–53 and ss 103A–104A.5 One example is s 40 (fair dealing for the purposes of research or study).
Unlike the special defences, the requirements in s 183(4) and s 183(5) oblige the government to inform the copyright owner and to seek agreement on the terms for the doing of the act. This provides a mechanism for securing compensation for the copyright owner. Compensation is also a feature of other statutory licences under the Act, such as those dealing with the copying of works in educational establishments and the copying of works in institutions assisting handicapped readers in Divisions 2 and 3 of Part VB of the Act. It is distinguished from those statutory licences under the Act because the defence to infringement provided by s 183 is not expressed to be conditional on the giving of notice or on any other undertaking to the copyright owner.6
The Copyright Amendment Act (No 1) 1998 (Cth) also inserted provisions aimed at facilitating the payment of equitable remuneration for the copying of material under s 183(1). This is effected through the sampling of copying rather than notifying each instance of copying in accordance with the requirements of ss 183(4) and (5). The principal provision is s 183A, which enables the Commonwealth or a State to enter into arrangements with an approved collecting society acting on behalf of copyright owners to make payments to the collecting society in relation to copying under s 183(1). Where such arrangements have been made, they override the application of ss 183(4) and (5) and are capable of applying to nearly all copyright material covered by s 183(1). A significant exception is the Crown use of computer programs which can only be subject to the requirements of ss 183(4) and (5).
Neither s 183A nor its related provisions inserted by the Copyright Amendment Act (No 1) 1998 alter the defence to infringement of copyright provided by s 183(1). Section 183A simply provides a sampling scheme for calculating and making payments of equitable remuneration to copyright owners for the copying of their copyright materials in lieu of the notice requirements of ss 183(4) and (5). But other related provisions inserted by the Copyright Amendment Act (No 1) 1998 facilitate the rights of copyright owners by enabling the recovery of equitable remuneration under the sampling scheme as a debt due to the collecting society. The operation of s 183A and its related provisions is further discussed under Part 22.214.171.124 sof this chapter.
9.2.2 The Scope of Crown Use Under the Copyright Act 1968
The defences to infringement provided in the Copyright Act 1968 have historically been a part of copyright law and represent the balance struck between the rights of the copyright owners and the interests of the users of copyright material—the public—in their access to and dissemination of information. This has been a feature of the growth of this quasi-monopolistic right from its inception. That is, the law has, for many years, recognised that there is a strong public interest in the free flow of information in areas covered by these defences. Governments generate large amounts of information from material supplied to them in their regulatory, statistical, research, law enforcement, management, budgetary, fiscal and other governing roles and also receive large amounts of copyright information and material voluntarily. Information is regularly reproduced into databases, evaluated, dissected and manipulated to produce new information of value to the community or to a segment of it. It is manifestly impractical to seek permission from each copyright owner to use this copyright information in each case, nor should government be fettered in carrying out this work in the public interest by a copyright claim. On the other hand, the use by government of copyright information and material may be substantial and have a significant impact on the exploitation of that material. The balance arrived at in the Crown use provision is to subject the Crown use defence to later agreement on the terms for the doing of the act. The terms almost invariably lead to financial compensation to the copyright owner, although this is not expressed as a requirement in the section.
A fundamental question in relation to the scope of Crown use is whether the government is obliged to use s 183(1) in circumstances where an act would otherwise fall within the protection of the special defences to infringement provided in Divisions 3, 4, 5 and 7 of Part III of the Act and in Division 6 of Part IV of the Act but principally ss 40–53 and ss 103A–104A (the fair dealing provisions, library copying and acts done for the purposes of a judicial proceeding). One illustration of this question is where an officer of a Commonwealth department copies on a departmental copier a reasonable part of a copyright work for the purpose of that officer’s research or study within the scope of the fair dealing provision s 40, and the research or study concerns that person’s official duties. In these circumstances, is the officer entitled to rely on s 40 of the Copyright Act 1968 as a defence to infringement or must the Commonwealth rely on s 183(1) and thus be required to give notice of the copying to the copyright owner in accordance with the requirements of s 183 or have that copying sampled and subject to equitable remuneration in accordance with s 183A?
This question goes to the heart of the balance between copyright owners and government users.
The answer to this question in law is not absolutely clear. As a matter of statutory interpretation, it is arguable from a reading of the Copyright Act 1968 that acts involving the use of copyright material which fall within the special defences to infringement but which are done for the services of the Commonwealth are nonetheless ‘acts comprised in the copyright’ in the material within the scope of s 183(1). Thus, the procedural requirements of s 183 or s 183A must be adhered to in relation to such acts.
The alternative view, and it is suggested the better view, is that s 183(1) complements the special defences to infringement so that the Crown and citizen alike can rely on those special defences; and that s 183(1) confers on the Crown entitlements to the use of copyright material which are additional to the special defences available to all. That is, only if the use of copyright material for the services of the Commonwealth or State goes beyond that permitted by the special defences is the Commonwealth or State obliged to rely on s 183(1) as a defence to infringement.
The Copyright Law Committee on Reprographic Reproduction (the Franki Committee) stated in its report in 1976:
7.10 We think that the Crown, or a person authorised by the Crown, should be entitled to copy a work in the circumstances where a private individual would be entitled to copy it without obligation to the copyright owners. If it be accepted that this is the result presently achieved by section 183, no change in the Act would be required.7
There have been a small number of minor amendments made to s 183 since the original passage of the 1968 Act, the most significant of which is s 183(11) inserted by the Copyright Amendment Act 1980 (Cth). This amendment Act implemented much of the Franki Committee recommendations. No amendment to clarify the operation of s 183 was inserted in the Copyright Amendment Act 1980 in response to the recommendation contained in paragraph 7.10. No subsequent clarification has been made.8
The High Court of Australia in Copyright Agency Limited v New South Wales appears to have accepted the complementary view of the Crown use provision:
The State did not suggest that any of the fair dealing provisions (ss 40-42) or other provisions in Pt III, Div 3 (ss 43-44F) which provide that certain acts do not constitute an infringement, had any application to the uses of the survey plans described …. In cases where these provisions do apply, Pt VII, Div 2 respecting Crown use and equitable remuneration is not engaged.9
However, the joint judgment of the High Court in this case did not explore the question beyond that statement, as the application of the special defences was not argued by counsel for the State of New South Wales. Technically, the statement is obiter dicta and can be read equivocally.
126.96.36.199 Arguments in Support of the Wide Scope of Crown Use
There are a number of arguments, based on a reading of s 183 in the context of the Act as a whole, which support the interpretation of s 183(1) that it covers all acts comprised in the copyright in a work or other subject matter if done by the Commonwealth or State for the services of the Commonwealth or State.
The test of infringement in works and other subject-matter is described in ss 36 and 101 of the Act. These sections are expressed in similar terms and together provide that the copyright in a work or other subject matter is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright. The special defences to infringement (such as s 40 and its equivalent s 103C of the Act) are not expressed to limit the exclusive rights but in various circumstances enable acts comprised within the copyright, such as reproduction or communication to the public, to be undertaken beyond a substantial part of a work or other subject matter.
Part VII of the Copyright Act 1968 is headed ‘The Crown’ and Divisions 1 and 2 of that Part purport to define the position of the Commonwealth and the States in relation to copyright. An act done ‘for the services of the Commonwealth or State’ is the subject of s 183 and such an act would not arguably cease to be so characterised simply because the Commonwealth or a State could rely on a special defence to infringement. Section 183 appears to contemplate that acts done for the services of the Commonwealth or the State may otherwise not be an infringement by the person doing them. Under s 183(3):
(3) Authority may be given under subsection (1) … to a person notwithstanding that he or she has a licence granted by, or binding on, the owner of the copyright to do the acts.
An act done for the services of the Commonwealth or State therefore falls within, and is governed by, s 183(1) even though it may also be for a purpose specified in one of the special defences to infringement. However, if the act was not done for the services of the Commonwealth or State then the Commonwealth or State may be able to rely on the special defences to infringement of copyright if acting in accordance with those defences.
If this was not the proper interpretation of s 183(1), then it may be argued that it would not have been necessary to insert s 183(11) in the Copyright Act 1968 by the Copyright Amendment Act 1980 10:
(11) The copying (now, by later amendment, reproduction, copying or communication) of the whole or a part of a work or other subject-matter for the educational purposes of an educational institution of, or under the control of, the Commonwealth, a State or the Northern Territory shall, for the purposes of this section, be deemed not to be an act done for the services of the Commonwealth, that State or the Northern Territory.
That is, if s 183(1) did not apply to the doing of acts by the Commonwealth or a State, which would otherwise be excluded from infringement by virtue of the educational copying provisions in the Act, then it would not have been necessary to insert s 183(11). Following the Copyright Amendment Act 1980 (Cth), a Commonwealth or State educational institution could only rely on those educational copying provisions.
188.8.131.52 Arguments in Support of the Complementary Scope of Crown Use
The alternative view is that s 183(1) complements the special defences to infringement and does not overlap them.
While s 31 and ss 85–88 describe the rights created by those provisions as ‘exclusive rights’, the operation of each of those provisions is prefaced by the words ‘unless the contrary intention appears’. Those special defences in the Copyright Act 1968 which provide that the doing of certain acts does not constitute an infringement of copyright and do not provide any entitlement to compensation to the copyright owner, such as s 40 (fair dealing with a work for the purpose of research or study), may be construed as constituting a contrary intention for the purposes of s 31 and ss 85–88 and, therefore, limit the exclusive rights otherwise conferred by those sections. On this basis the doing of an act which by virtue of the special defences does not constitute an infringement of copyright is not the doing of an act comprised in a copyright to which s 183(1) applies. It follows that a notice under s 183(4) is not required to be given in respect of the doing of an act which is not, apart from s 183, an infringement of copyright and which is not, therefore, within the exclusive rights of the copyright owner.
Consistently, while s 183(3) provides that authority to do acts may be given to a person notwithstanding the person has a licence granted by, or binding on, the owner of the copyright, the acts in contemplation are acts comprised in the copyright within the meaning of s 183(1) described. That is, what is done pursuant to a licence granted by the copyright owner would, apart from that licence, amount to an infringement of copyright. It does not follow that because s 183(3) expressly contemplates acts which would not amount to an infringement of copyright as a result of the grant of a licence, the section has the effect of more broadly encompassing acts which would not be an infringement of copyright under the special defences in the Copyright Act 1968. There are other rationales for the express contemplation of licensed acts in s 183(3). For example, s 183(3) could be relied on in relation to defence activity when it is in the public interest not to notify the copyright owner of the doing of the acts for some time or when the terms of the licence may be unreasonable in the circumstances. In Copyright Agency Limited v New South Wales 11 both the Full Court of the Federal Court of Australia and the High Court of Australia accepted that the Crown may rely on an implied licence to do acts comprised in the copyright in material submitted to it, without reliance on s 183.
Similarly, the insertion of s 183(11) does not suggest the section more broadly encompasses acts which would not be an infringement of copyright under the special defences in the Copyright Act 1968. The insertion of s 183(11) followed a Franki Committee recommendation that the Crown should not be permitted to rely on s 183 for the making of multiple copies of copyright works for use in government schools and that their recommendations in respect of multiple copying in non-profit educational establishments (which first became s 53B and is now embodied in ss 135ZJ and 135ZL of the Act) should apply to government and non-government schools alike.12 The insertion was directed at multiple copying and not at the limited copying which may be undertaken under the special defences to infringement of copyright. Section 183 has unlimited scope and, apart from s 183(11), a Commonwealth or State school would be unfettered in its capacity to use copyright material and subject only to the notice and terms requirements of s 183. The purpose of the recommendation which led to the insertion of s 183(11) was to ensure similar treatment of government and non-government schools.13
The complementary view is also taken by Campbell and Monottti in their examination of immunities of agents of government from liability for infringement of copyright14:
If agents of government are sued for infringement of copyright, but are not able to rely on any of the statutory exceptions mentioned above, they may nevertheless rely on the provisions in the Act that allow for fair dealing with copyright material. The circumstances in which the fair dealing exceptions operate are limited but they include cases in which copyright material is reproduced for research or study. … An act of fair dealing may also be one for the services of the Crown. For example, an officer of a government department may have dealt fairly with copyright material by photocopying an article in a periodical publication for the purposes of the research required of him or her in the course of official duties. In such a case, the fair dealing exception will probably apply rather than the exception created by s 183 of the Act, and its attendant obligation to pay compensation.
The complementary view finds some support from an examination of extrinsic materials concerning the history and purpose of s 183.15
Section 183 was inserted in the Copyright Act 1968 following a Spicer Committee recommendation.16 The Committee considered the Gregory Committee recommendation that the Crown should be empowered to reproduce copyright material in connection with the equipment of the armed forces and possibly also for civil defence and essential communications, subject to compensation.17 This recommendation had, to a large extent, been given statutory effect in the United Kingdom.18 A majority of the Spicer Committee agreed with the view expressed by the Solicitor-General of the Commonwealth that the Commonwealth and the States should be empowered to use copyright material for any purposes of the Crown, subject to the payment of just terms to be fixed, in the absence of agreement, by the Court.
The occasions on which the Crown may need to use copyright material are varied and many. Most of us think that it is not possible to list those matters which might be said to be more vital to the public interest than others. At the same time the rights of the author should be protected by provisions for the payment of just compensation to be fixed in the last resort by the Court….
We note that the Commonwealth and the States have a right to use inventions, subject to the payment of compensation, under section 125 of the Patents Act 1952-1955. We recommend the enactment of a provision on similar lines in respect of Crown use of copyright material.19
The purpose of the equivalent provision in the Patents Act 1952 (s 125) was described by Barwick CJ in General Steel Industries v Commissioner for Railways (NSW) as providing ‘a means of securing the untrammelled use of the invention by the Governments and the authorities of the Commonwealth and of the States’.20
The object s 183 would appear to be aimed at is the unfettered use of copyright materials, such as in times of national exigency, where permission of the relevant copyright owners would otherwise need to be obtained.
The basis of the arguments in favour of the wide scope of s 183(1) ultimately lies in the view that Part VII represents the Crown’s position under the Copyright Act 1968 and overrides the operation of other provisions in the Act. That is if, say, an officer of a Commonwealth department copies on a departmental copier a reasonable part of a copyright work for the purpose of that officer’s research or study within the scope of the fair dealing provision s 40 of the Act, and the research or study concerns that person’s official duties undertaken within the department, the copying must be characterised as for the services of the Commonwealth rather than for that person’s research or study. In the absence of such a view, the insertion of s 183(11) in the Act begs the question whether the copying of the whole or a part of a work or other subject matter for the educational purposes of an educational institution of the Commonwealth or a State could have been undertaken in reliance on the educational copying provisions, rather than s 183(1), where that copying was for the services of the Commonwealth or a State. The insertion simply prevents reliance on s 183(1).
Part VII of the Act does not represent a complete code of the Crown’s position under the Copyright Act 1968. Evidence in support of that proposition is that at least some of the special defences expressly contemplate the Crown. For example, ss 49–51A enable acts to be undertaken by an officer in charge of a library, such as the making of a copy of an article in a periodical publication for a user or for another library, and the scope of these provisions expressly contemplates that the libraries may be administered by the Crown.21 In addition, s 48A (and its equivalent provision s 104A) provides that copyright is not infringed by an officer of a parliamentary library by anything done for the sole purpose of assisting a member of Parliament in the performance of that person’s duties as a member. This does not oblige parliamentary libraries to pay any compensation to copyright owners and would apply to both Commonwealth and State parliamentary libraries.
The consequences of the wide construction of s 183(1) are significant. It would mean that an individual or a person other than the Crown would be able to do certain acts comprised in the copyright free of compensation to the author while, in similar circumstances, the Crown would be subject to agreeing on terms or having terms determined by the Copyright Tribunal.22 That is, expressed generally, the acts which others may make lawfully without compensation would attract a right to compensation under s 183 or s 183A of the Act if done for the services of the Crown.
It is more reasonable in the light of the non-exclusive nature of Part VII dealing with the Crown to adopt the complementary construction of the operation of s 183(1). That is, those entitlements expressed in s 183(1) in broad terms and which comprise acts which extend far beyond the scope of the limited special defences to infringement are additional to the entitlements enjoyed under other sections of the Act. Additionally, if it is accepted that s 183(1) conflicts with the specific provisions that comprise those limited special defences to infringement in respect of acts undertaken for the services of the Commonwealth or a State—that is, the doing of an act which by virtue of the special defences does not constitute an infringement of copyright is the doing of an act comprised in a copyright to which s 183(1) applies—it would appear that the maxim of statutory interpretation generalia specialibus non derogant applies. This Latin maxim expresses the principle that provisions of general application give way to specific provisions when in conflict. The maxim applies more strictly in the interpretation of provisions in a particular Act, such as the Copyright Act 1968, than in the case of conflict between separate enactments.23 In this case, it follows that s 183(1) gives way to the special defences when in conflict and that s 183(1) gives additional benefits to the Commonwealth and the States beyond the scope of the special defences.
If the Commonwealth and the States are unable to rely upon the special defences to infringement, then government would be placed in a disadvantageous position with respect to its use of copyright material when compared with all other copyright users, such as private institutions, corporations and individuals. Despite the breadth of government functions and powers, and the calls and demands upon it in comparison with other legal users of copyright material, governments would be obliged to remunerate copyright owners in circumstances when other users would not. This would amount to inconsistent policy between the private and public users of copyright material.
Notwithstanding these arguments, the Copyright Agency Ltd on behalf of copyright owners in published works has, since the late 1980s, entered into licensing arrangements with the Commonwealth and the States for the reproduction of these works under s 183. The Copyright Agency Ltd’s present agreement with the Commonwealth is based on the premise that the Crown is able to rely on the special defence to infringement of copyright under s 43—reproduction for the purposes of a judicial proceeding or for the purposes of the provision of professional legal advice—but the agreement expressly states that reliance is not placed on other exemptions in the Copyright Act 1968.24 The Copyright Agency Ltd’s agreements with the States and Territories also do not appear to include the special defences to infringement as ‘copying exempt from payment’ within the Data Processing Protocols in those agreements.25 This appears to be largely attributable to practical difficulties in accurately identifying particular defences when surveying copying.26
184.108.40.206 The Effect of Section 183(1) on the Special Defences to Infringement
There is a suggestion in other contexts within the Copyright Act 1968 that the extent to which Crown servants may be able to rely on one of the special defences to infringement (s 40) could be limited simply because of the existence and effect of s 183(1).
In Haines v Copyright Agency Ltd,27 the New South Wales Director-General of Education had sent a memorandum to school principals containing a statement that s 40 of the Copyright Act 1968 (fair dealing for research or study) allowed for virtually the same amount and type of copying as s 53B or s 53D without imposing any need to keep records or make payments. Sections 53B and 53D28 then enabled the multiple copying by an educational establishment of copyright works for teaching purposes but imposed record-making and retention requirements and subjected the educational establishment to claims for payment by copyright owners in respect of that copying. Fox J of the Federal Court, in a judgment with which Bowen CJ and Deane J agreed, made it clear that it was wrong to say that s 40 allowed for virtually the same amount and type of copying as s 53B. Fox J stated:
What is fair dealing is not fixed by reference to the number of copies, but is to be determined by reference to the facts of each case. An answer to the question must take into account the existence and effect of s 53B (and s 53D). Moreover it is important to the proper working of the sections that a distinction be recognized between an institution making copies for teaching purposes and the activities of individuals concerned with research and study. The memorandum was in relevant respects addressing itself to the former situation.29
The Court ordered that the memorandum be withdrawn and destroyed and its reproduction or distribution be restrained.
McLelland J, at first instance, also considered that the availability to schools of the right to make copies under s 53B, upon compliance with conditions designed to provide ‘equitable remuneration’ to the owners of copyright, must necessarily have an influence upon what amount and type of copying done in a school and could properly be regarded as a fair dealing under s 40. He stated:
By way of example, it might be anticipated that a teacher who, even if he procured himself to be appointed as agent for every member of his class, made multiple copies for the purpose of classroom study, of substantially the whole of some separately published book, or sheet music, the subject of copyright, would not in ordinary circumstances be likely to be regarded as engaged in ‘fair dealing” under s 40, whereas if the teacher were satisfied after reasonable investigation that copies (not being secondhand copies) of the work could not be obtained within a reasonable time at an ordinary commercial price, such multiple copying could legitimately be carried out on behalf of the school under s 53B if the records required by that section were kept.30
It is important to note that the Court in Haines v Copyright Agency Ltd did not express a view on whether ss 40 and 53B overlapped. It simply stated that it was wrong to say that s 40 allowed for virtually the same amount and type of copying as the statutory licence (s 53B). However, it does not follow from the decision that some copying may not be undertaken legitimately under s 40 which might also be undertaken in pursuance of that statutory licence or in pursuance of s 183. The issue is essentially whether, on the facts of the case, the dealing is fair and for the purposes described; and this must take into account the number of persons a copier is acting on behalf of as well as the extent of the copying. Both are relevant to the factors set out in s 40(2) of the Act in determining whether a dealing is fair.
It may be fair to make a copy of a reasonable portion of a book for the purpose of research or study of the copier or to make a copy each for two persons for their research or study in accordance with their request but unfair for the copier to make a copy each for 60 persons for their research or study in accordance with their request, despite the fact that, individually, each person could make such a copy for himself or herself. It is submitted that the nature of the dealing in the last example is not fair because the scale of the copying affects the character of the dealing. It carries it beyond the notion of individual copying contemplated by s 40.
The copying of a journal article or a reasonable portion of another published work by an individual for that individual’s research or study is deemed by s 40(3) of the Act to be a fair dealing with that work for the purpose of research or study. If that individual is a Crown servant acting in the course of that servant’s work for the Crown and the copying is for either of those purposes of the Crown servant, then the extent to which Crown servants may be able to rely on s 40(3) is not limited simply because of the existence and effect of s 183. Likewise, there is nothing in the Haines decision to suggest that a Crown servant could not undertake acts which otherwise clearly fall within s 40 of the Act, even if that research or study assisted the Crown servant directly or indirectly in that servant’s work for the Crown. What the Haines decision does suggest is that courts may be reluctant to construe broadly the scope of the special defences, such as s 40, in their application to the Crown.
220.127.116.11 The Operation of Section 183 and Section 183A of the Copyright Act 1968
Assuming the dealings in question do not attract any of the special defences to infringement under Copyright Act 1968, how does the defence provided by s 183 and its related provision (s 183A) operate?
Section 183(1) applies when the person doing the otherwise infringing act is either the Commonwealth or a State or a person authorised in writing by the Commonwealth or a State, and the act is done for the services of the Commonwealth or a State.31
Two rights of a copyright owner whose work or other subject matter is affected by acts under s 183(1) are expressly protected by s 183(8). That subsection provides that any act done under s 183(1) does not constitute publication of a work or other subject matter and is not to be taken into account in relation to the duration of any copyright. As any act done under s 183 is done without the consent of the copyright owner, the effect of subsection (8) is to avoid subsection (1) being unfairly determinative of the subsistence of copyright in works that would have protection only on the basis of first publication in Australia, and unfairly determinative of the duration of copyright, for example, in the case of a cinematograph film or a sound recording that, upon publication, has a limited term of protection to 70 years after the year of publication. Acts done under s 183(1) are simply acts over which the copyright owner has no control.
Successors in title to any articles sold to them under s 183(1) are protected from any possible infringement action from subsequent resale by reason of s 183(7). By virtue of that provision, successors in title are entitled to deal with the article as if the Commonwealth or State were the owner of copyright.32 These provisions apply regardless of whether the act is notified under s 183(4) or recorded under s 183A.
The Meaning of ‘for the Services of the Commonwealth or State’
Section 183 provides some assistance in determining the meaning of the phrase ‘for the services of the Commonwealth or State’ by specifying acts which fall within and outside of the phrase. Section 183(2) deems
the doing of any act in connexion with the supply of goods in pursuance of an agreement or arrangement between the Government of Commonwealth and the Government of another country for the supply to that country of goods required for the defence of that country and
the sale to any person of such of those goods as are not required for the purposes of the agreement or arrangement,
to be ‘for the services of the Commonwealth’.
On the other hand, s 183(11) excludes from the phrase the copying of the whole or a part of a work for the teaching purposes of an educational institution of, or under the control of, the ‘Commonwealth, a State or the Northern Territory’.
There are very few reported cases dealing directly with s 183(1) of the Copyright Act 1968 or other similar Crown use provisions.33 Judicial consideration of the scope of the phrase ‘for the services of the Commonwealth or State’ has been largely confined to patent cases.
In General Steel Industries Inc v Commissioner for Railways (NSW),34 a single judge of the High Court considered whether the defendants in that action could rely on the Crown use provision (s 125 of the Patents Act 1952 (Cth)) as a defence to an action for infringement of a patent over certain railway vehicle bearing structures.35 This Crown use provision was similar in language and operation to s 183 of the Copyright Act and the major provisions are set out below. The Patents Act 1952 (Cth) has since been repealed, but there is a revised Crown use provision (s 163) in the current Patents Act 1990 (Cth).36
Section 125 of the Patents Act 1952 in part provided:
(1) At any time after an application for a patent has been lodged at the Patent Office or a patent has been granted, the Commonwealth or a State, or a person authorized in writing by the Commonwealth or a State, may make, use, exercise or vend the invention for the services of the Commonwealth or State.
(3) Authority may be given under sub-section (1) of this section either before or after a patent for the invention has been granted, and either before or after the acts in respect of which the authority is given have been done, and may be given to a person notwithstanding that he is authorized directly or indirectly by the applicant or patentee to make, use, exercise or vend the invention.
(4) Where an invention has been made, used, exercised or vended under sub-section (1) of this section, the Commonwealth or State shall, unless it appears to the Commonwealth or State that it would be contrary to the public interest to do so, inform the applicant or patentee as soon as possible of the fact and shall furnish him with such information as to the making, use, exercise or vending of the invention as he from time to time reasonably requires.
(5) Subject to sub-section (2) of this section, where a patented invention is made, used, exercised or vended under sub-section (1) of this section, the terms for the making, use, exercise or vending of the invention are such terms as are, whether before or after the making, use, exercise or vending of the invention, agreed upon between the Commonwealth or the State and the patentee or, in default of agreement, as are fixed by the High Court.
(8) No action for infringement lies in respect of the making, use, exercise or vending of a patented invention under sub-section (1) of the section.
Section 132 of the Patents Act 1952 expressly provided that ‘references to the Commonwealth include references to an authority of the Commonwealth and references to a State include references to an authority of the State’. Barwick CJ in General Steel took the view that the Commissioner for Railways was an authority of the State within the meaning of ss 125 and 132 of the Patents Act 1952.
Barwick CJ summarily terminated the action by the plaintiff with costs after being satisfied that the plaintiff’s claim did not disclose a reasonable cause of action and was ‘manifestly groundless’. He considered
Sub-section (8) of s 125, in providing that no action for infringement shall be brought for what would otherwise be an infringement of the letters patent, emphasises the clear intention of sub-s (1) and with sub-s (7) provides a means of securing the untrammelled use of the invention by the Governments and the authorities of the Commonwealth and of the States. On the other hand, sub-ss (5) and (6) ensure that proper compensation shall be paid to the owner of the letters patent for the acts of a Government or an authority of Commonwealth or State which makes use of the invention.
The railway system of the State is, in my opinion, undoubtedly a service of the State and the use of the invention in the construction of railway carriages to be used by the Commissioner in that railway system is a use for a service of the State or for the services of the State within the meaning of the expression in the Patents Act 1952, whichever may be the proper way to read the final words of s125(1). One could scarcely imagine that sections such as ss 125 and 132, with their evident practical purpose, did not extend to include within the expression the use of the services of the Commonwealth or State, the use of an invention for the purposes of one of the Government railway systems in Australia.37
The judgment did not consider the phrase ‘for the services of the State’ beyond this brief conclusion.
Shortly after General Steel Industries, the House of Lords in Pfizer Corp v Ministry of Health 38 held that the supply of the patented antibiotic drug tetracycline to National Health Service hospitals for administration to out-patients and in-patients was a use ‘for the services of the Crown’ and accordingly fell within the Crown use provision (s 46 of the Patents Act 1949 (UK)). The Ministry of Health had selected a tenderer who had obtained supplies of the drug manufactured in Italy. The United Kingdom patentee claimed, first, that the Ministry had no power under that section to authorise this method of supply and, secondly, that the supply was used for the benefit of the patients and not for the benefit of any service of the Crown. It is the second claim which is germane to this discussion.
Lord Reid stated in respect of this claim:
In Victorian times they were the armed services—the navy and the army—the Civil Service, the foreign colonial and consular services, the Post Office, and perhaps some others. Now there are many more Government activities which are staffed and operated by servants of the Crown, and are subject to the direction of the appropriate Minister. But it is not suggested that for this purpose any distinction is to be made between the older and the newer services, and it is not argued that the hospital service is not a service of the Crown.
The real controversy in the present case turns on the meaning of the word “for”—what is meant by “for the services of the Crown”? I think that it is a false dichotomy to treat some patented articles as made or used for the benefit of the department or service which uses them, and others as made or used for the benefit of those persons outside the service who may derive benefit from their use by the service. Moreover, I think that such a distinction would be unworkable in practice. Most, if not all, activities of government departments or services are intended to be for the benefit of the public, and few can be regarded as solely, or even mainly, for the benefit of the department or of members of the service.
It appears to me that the natural meaning of “use … for the services of the Crown” is use by members of such services in the course of their duties. Sometimes, as in the case of the armed services, that use will or is intended to benefit the whole community: sometimes such use will benefit a particular section of the community: and sometimes it will benefit particular individuals. I cannot see any good reason for making a distinction between one such case and another.39
Lord Evershed concurred stating:
As pointed out by the learned judges in the Court of Appeal, there is not and cannot be in this day and age a true antithesis between services of the Crown in the sense of services related to the functions of Government as such and services of the Crown in the sense of the provision of facilities commanded and defined by Act of Parliament for the general public benefit.40