© Springer International Publishing Switzerland 2015Brian Fitzgerald and John Gilchrist (eds.)Copyright Perspectives10.1007/978-3-319-15913-3_13
13. The Development of Copyright Offences in Australia
Thomas More Academy of Law, Australian Catholic University, 486 Albert Street, East Melbourne, VIC, 3002, Australia
A critical driving force behind the development of copyright law has been facilitating the requirements of the various entertainment publishing industries. The orthodox view of copyright law suggests that without the exclusive rights granted by copyright law, the trade in copyright works would simply not be possible,1 although it has been posited that this is an article of faith rather than an empirical reality.2
The offence provisions are no different in this respect. Their rationale is to deter activities that threaten to disrupt the copyright system. Legislators have been heavily lobbied by representatives of the publishing industries, in some jurisdictions even allowing the industry to draft the statutes themselves.3
It comes as a surprise to some observers of copyright issues that offences for copyright infringement exist at all. Even more people are surprised that they are far from a modern development. While there may be nothing new per se about the existence of copyright offences in Australia, it is evident that in the past 35 years there has been a substantial increase in the amount of offences and the severity of the potential penalties.
This increase is closely correlated to technological advancements in the domestic reproduction of entertainment media. This has led to a subsequent loss of exclusive control by industry over the ability to reproduce copyright works. The domestic availability of the Internet has meant the distribution of entertainment media has also been placed out of the exclusive control of copyright owners.
Another factor which has contributed to the development of more offences is the increase in global trade. Australia has entered into a number of treaties that require the signatories to implement offences in their copyright law.
Such technological advancement can be seen as something of a double-edged sword for the publishing industries. It has the potential to create new opportunities for people to produce, copy and disseminate knowledge and entertainment in new forms and by using new methods. However, the same technology can also be used to infringe the property rights granted to copyright owners, particularly where it is made widely available and at low cost.
Innovations in entertainment delivery have been made by both from inside and outside the publishing industries. Innovations originating from outside have been typically treated as a threat to the publishing businesses rather than an opportunity. The ultimate outcome of the application of technological innovation is highly unpredictable.
Inventions that were initially treated as apocalyptic threats by the publishing industries have in retrospect been of great benefit to the industry when they are harnessed for the creation of new markets and products.4 Conversely, some inventions produced with the support of the publishing industries have failed in the marketplace.
This chapter charts the expansion of the copyright offences in Australia. By chronologically tracking the changes to the law, a more comprehensive understanding can be gained of the factors that have driven the expansion of copyright offences during the last century and beyond. This allows a clearer picture to emerge of the merits of using the criminal law to sustain copyright policy.
13.2 Overview of the Legal Developments
The law of copyright in England and Wales has always contained criminal provisions of some form. Even the original Statute of Anne imposed monetary fines payable to the Crown and the copyright holder in moiety.5 The same offences were of course brought to Australia with the original colonists, and they have remained a part of the Australian legal landscape.
As each colony developed, their respective colonial Parliaments passed new copyright laws. Shortly after the Federation of the Commonwealth of Australia in 1901, a new national copyright Act was enacted in 1905. Since 1905 the Australian Parliament has passed two more copyright Acts. The last of these Acts, the Copyright Act 1968 (Cth), is the current Act governing copyright in Australia. All of these Acts, from pre-Federation until the present Act, have contained offence provisions for the infringement of copyright or other related rights, and for dealing in illicit copies of works.
There were three amendments to the offence provisions between Federation and 1980. Since 1980 there have been nine amendments that have substantially increased the scope of copyright offences. Five of these amendments have occurred since 1998, culminating in the current offence provisions brought about by the Copyright Amendment Act 2006 (Cth). The rapidity with which these amendments have occurred mirrors the pace with which technological advances in reproductive and distribution of copyright material have occurred, and agreements that Australia has made with its trading partners to harmonise and reciprocate copyright protection. The absence of an organised opposition to the demands of the publishing industries has meant that the scope of the Australian offences has almost never contracted.
This expansion in scope has occurred in four dimensions: (1) the subject matter of copyright has been expanded; (2) the length of copyright protection has increased; (3) new types of offences have been drafted for conduct peripheral to the infringement of copyright and for new related rights; and (4) the culpability required for offences has been lowered. In addition to expanding the scope, the penalties for the offences have also been raised, purportedly to increase their deterrent value.
Before Australian Commonwealth was formed in 1901, several Australian states had enacted their own copyright laws, some of which contained criminal sanctions for infringement.
Representing a unique approach in targeting criminals, the Copyright Registration Act 1887 (Qld) contained an offence of wilfully tendering a false entry in the copyright register, punishable by up to 3 years imprisonment.6
The Copyright Act 1895 (WA) contained two offences, both of which were punishable upon summary conviction by a penalty of up to 10 pounds.7
The Copyright Act 1890 (Vic) was fairly comprehensive. In addition to books,8 designs9 and works of fine art10 were both capable of copyright protection. Each of these categories had its own criminal offence with infringement of a design being the most severely punished by a fine of up to 50 pounds.11 The Copyright Act 1878 (SA)12 was very similar to the Victorian statute and contained identical offences and penalties.
Even before Federation, it is clear that the colonies of Australia had accepted a need for copyright legislation and the need for criminal sanctions to encourage compliance.
13.4 The Copyright Act 1905 (Cth)
The first Federal copyright law, the Copyright Act 1905 (Cth), contained a single summary offence for dealings in “pirated books” or “pirated artistic works”, punishable on conviction by a fine of not more than 5 pounds. Pirated books and artistic works were defined as reproductions made in any manner without the authority of the owner of the copyright.13
The various types of offending dealings with these books or artistic works were not dissimilar to the contemporary offences: selling; letting for hire; exposing, offering or keeping (possessing) for sale or hire; distributing; or exhibiting in public were all forbidden if the article was a pirated book or artistic work.14
13.5 The Copyright Act 1912 (Cth)
After the passing of the Copyright Act 1911 (Imp)17 in the United Kingdom parliament, the Australian Parliament adopted the imperial law by enacting the Copyright Act 1912.18 Section 11(1) of the Copyright Act 1911 (Imp) contained several summary offences,19 most of which were already part the Copyright Act 1905 (Cth).
Curiously, actually making an infringing copy of a work for sale or hire did not constitute an offence until it was included the Copyright Act 1912 (Cth).20 The various types of prohibited conduct under these offence provisions have remained virtually unchanged in the copyright law of several former members of the British Empire. A new offence was added under s 11(2) for making or possessing of a plate for the purposes of making infringing copies, or for causing a public performance of a work knowingly and for personal profit.21
The Copyright Act 1912 (Cth) incorporated section 11 verbatim, except for subsection (4), which was of no application in Australia since neither the Musical (Summary Proceedings) Copyright Act 1902 (England and Wales)22 nor the Musical Copyright Act 1906 (England and Wales)23 were adopted into Australian law. One of the major changes the Copyright Act 1912 (Cth) brought about was the extension of the copyright term to the life of the author and 50 years, thus extending the scope of the criminal provisions. Another major change that dramatically altered the scope of the offence provisions was the granting of mechanical rights,24 which meant that recordings of literary, dramatic or musical works were both protected by copyright and subject to the same offence provisions.
However, a minor change ran against the general rule and slightly contracted the scope of the offences in one aspect. Under the Copyright Act 1905 (Cth) it was an offence to distribute a pirated work or book. The distribution under that Act was not qualified, but under the Copyright Act 1912 (Cth) the distribution had to be either for the purposes of trade or to such an extent as to prejudicially affect the owner of the copyright.25
A great many of the countries which adopted the Copyright Act 1911 (Imp) still retain an offence for distributing an infringing copy to such an extent as to affect prejudicially the owner of the copyright,26 with the notable exception of New Zealand which limits criminal distribution offences to commercial infringement.27 The non-commercial distribution of infringing copies has really only in recent times come to the fore, due to the ease with which digital material can be disseminated over the internet.28
The penalty for summary conviction under either s 11(1) or (2) was a fine of 40 shillings for each copy dealt with, not exceeding 50 pounds for the same transaction. A second or subsequent offence was punishable by the same fine or by imprisonment for a period not exceeding 2 months with or without hard labour. This was the first time that a person was capable of being imprisoned for a copyright offence in Australia and represented a significant enhancement to the penalty provision.
The development of technological innovations such as cinema, radio and television in the years between the enactment of the Copyright Act 1912 (Cth) and the Copyright Act 1968 (Cth) also caused great difficulties for copyright law. However the disputes that they caused between broadcasters and copyright owners were settled through licensing and royalty collection rather than through changes to the criminal law.29
The cases of radio and television first illustrate the concept of new technology broadening the range of possible conduct that could constitute an offence, since the playing copyrighted work on a radio or television set in public, knowingly and for private profit, would have constituted an offence under the Copyright Act 1912 (Cth), s 11(2). Rather than the law moving to capture the new conduct, the new conduct strayed into the realm of the offence.
13.6 The Copyright Act 1968 (Cth)
The criminal provisions of the Copyright Act 1968 (Cth), as passed, were not substantially different from those of the Copyright Act 1912 (Cth), except the offences became housed in s 13230 and the penalty provisions for those offences were contained in s 133.31 By this time it had been firmly established that sound recordings and cinematographic films were subject matters capable of copyright protection and the new Act dedicated a new Part IV to the rights in these subject matters. The offence section made it expressly clear that they were to apply to Part IV subject matter.32
The scope of the offences was broadened slightly by altering what the purpose for importing an infringing copy had to be before an offence was committed. Under the Copyright Act 1912 (Cth) it had been an offence to import an infringing copy for the purpose of selling or letting it for hire.33 Under the new Act, this was extended to importations for the purpose of34: (1) by way of trade, offering or exposing the copy for sale or hire; (2) distributing the article for the purpose of trade or any other purpose to an extent that will affect prejudicially the owner of the copyright; or (3) by way of trade, exhibiting the article in public. A person was required to know that the imported article was an infringing copy before criminal liability was attracted.35
The penalty for a first conviction was extended to 10 pounds for each infringing article,36 not exceeding 200 pounds for the same transaction.37 Second or subsequent offences could alternatively be punished by a term of imprisonment of not exceeding 2 months,38 as they could under the Copyright Act 1912 (Cth).
The Copyright Act 1968 (Cth) is the same Act that we have today in Australia. There have been a substantial number of amendments to the Act, but only some have amended the offence provisions. These amendments have been made in reaction to a perceived problem caused by the introduction of technological innovations, unfavourable court judgments and to fulfil international treaty obligations.
13.7 The Copyright Amendment Act 1980 (Cth)
The invention and marketing of the video cassette recorder (“VCR”)39 in the late 1970s caused considerable concern to the motion picture industry, which saw it as a serious threat to its business model. VCRs were capable of recording motion pictures from television broadcasts, which could be copied and distributed, or kept privately as an archive. The motion picture industry approved of neither of these activities, but was particularly concerned about the implications on television aftermarkets.
In the United States, the long-time president of the Motion Picture Association of America Jack Valenti gave testimony before the House of Representatives Home Recording of Copyrighted Works hearings in 1982. His doom-laden testimony represented the concerns of the industry at the time. He stated:
…now we are facing a very new and a very troubling assault on our fiscal security, on our very economic life and we are facing it from a thing called the video cassette recorder and its necessary companion called the blank tape. And it is like a great tidal wave just off the shore. This video cassette recorder and the blank tape threaten profoundly the life-sustaining protection, I guess you would call it, on which copyright owners depend, on which film people depend, on which television people depend and it is called copyright […] these machines are advertised for one purpose in life. Their only single mission, their primary mission is to copy copyrighted material that belongs to other people. I don’t have to go into it. The ads are here. Here is Sony that tells you that you can record one channel while watching another. You can program to record a variety of shows on four different channels for up to 14 days in advance if you like […]I say to you that the VCR is to the American film producer and the American public as the Boston strangler is to the woman home alone.40
The impact of Valenti’s testimony was somewhat deflated by the following exchange with Congressman Robert Kastenmeier:
Mr. Kastenmeier: Jack, let me ask you. Do you consider yourself and your family infringers when you engage in that practice?
Mr. Valenti: I consider myself and my family believing what the plaintiffs in this lawsuit said and they said publicly, they have said it to the press, they have said it to the lawyers, they have said it to the courts. They do not intend to file any actions against homeowners now or in the future. I mean, that is obvious and they have said that publicly, Mr. Chairman, so I believe them. As far as I am concerned, I am going to continue taping because the plaintiffs have said they aren’t going to do anything to me. I am not committing any crime. They know that.
Mr. Kastenmeier: That wasn’t my question.
Mr. Valenti: Do I consider myself an infringer?
Mr. Kastenmeier: When you engage in such practice.
Mr. Valenti: Yes, sir, I do. I am taking somebody else’s copyrighted material without their consent and I know damn well I am infringing. But as far as court action or anything else, I am safe. First, it is not a criminal act. Again, the opposition would tell you video, police, and criminals. They show an astonishing lack of the copyright law. They know good and well that that is not a criminal infringement unless you do it for profit. But on the other hand the plaintiffs have said they are moving against anybody in the homes. There is no problem, but I know and everybody else knows they are infringing.41
While this hearing had no direct effect on the Australian legislature, it provides a vivid illustration of the level of concern that the VCR initially caused the motion picture industry and the lobbying process that occurs when new copying technologies emerge. The VCR did not have the destructive consequence on the motion picture industry that Valenti portended, instead becoming a lucrative aftermarket for motion pictures.
The Australian response in 1980 to the “problem” of the VCR was to increase the penalty for an offence under ss 132(1) or (2) of the Copyright Act 1968 (Cth) to $150 per infringing article,42 and to increase the penalty to $1,500 if the article was a cinematograph film.43 Second or subsequent offences under either subsection could alternatively be punishable by up to 6 months imprisonment,44 increasing the maximum term of imprisonment threefold.
13.8 The Copyright Amendment Act 1984 (Cth)
In 1984, further amendments were made to include provisions related to the transmission of computer programs and the advertisement for supply of infringing copies of computer programs. These provisions were a direct response to the judgment of Beaumont J in Apple Computer Inc v Computer Edge Pty Ltd.45 Beaumont J had held in the case that none of the computer programs in the case were literary works under the Copyright Act 1968 (Cth)46 and that the omission by Parliament to make any reference to computers or computer equipment meant computer programs were not afforded copyright protection.47
Although the decision was overturned in the Full Federal Court,48 the Australian Parliament was sufficiently concerned about the implications for the Australian software industry that the Copyright Amendment Act 1984 (Cth) was passed the week after the Full Federal Court handed down its decision. The Australian Parliament had correctly assessed the fragility of the Full Federal Court decision because it was subsequently overturned by the High Court of Australia.49 In addition to expressly extending the definition of literary work to include computer programs, the amendment added another subsection to the offence provisions contained in s 132:
(5A) For the purposes of this section, a transmission by a person of a computer program that is received and recorded so as to result in the creation of an infringing copy of the computer program shall be deemed to be a distribution by the person of that infringing copy.50
This amendment meant that the distribution offence in s 132(2) could be applied to cases of software transmitted by telephone modems, an activity that would eventually progress to the transmission of other digital works through the Internet. The addition of a new s 133A also made it a criminal offence to advertise for the supply of infringing computer programs, which was penalised by a fine of $1,500 for a first offence and the same fine or imprisonment for 6 months for a second or subsequent offence.51
13.9 The Copyright Amendment Act 1986 (Cth)
A significant change to the scope of all offences under s 132 of the Copyright Act 1968 (Cth) was made by the passing of the Copyright Amendment Act 1986 (Cth). Prior to the amendment, part of the mens rea of subsections (1) and (2) was the requirement of actual knowledge that the article in question was an infringing copy. The amendment broadened the mens rea of the offence by substituting the words “he knows” to “the person knows, or ought reasonably to know”.52 In addition to broadening the mens rea of the offences, the Copyright Amendment Act 1986 (Cth) also broadened the range of conduct that could constitute an offence by criminalising the possession of infringing copies for the purposes of either53: (1) selling, letting for hire, or by way of trade offering or exposing for sale or hire (2) distributing the article for the purpose of trade, or for any other purpose to an extent that will affect prejudicially the owner of the copyright in the work; or (3) by way of trade exhibiting the article in public. This offence section was housed in s 132(2A).
The effect of these changes is illustrated by the case of Pontello v Giannotis,54 which was the first reported prosecution under the Copyright Act 1968 (Cth) subsequent to the passing of the Copyright Amendment Act 1986 (Cth). The principle issue in the case was the question of the knowledge of the defendant.55 Giannotis was a partner in a video hire business who was found to be in possession of a number of infringing copies of copyrighted work for the purpose of letting them for hire, contrary to the new s 132(2A).
Giannotis had acquired infringing copies of some films that had been stolen from his shop56 from a contact called “Mimo”.57 In his police interview, Giannotis reported the conversation during the transaction between himself and Mimo as being:
[I said] What did you do, he said don’t ask me questions you’re happy, I say of course I’m happy, how much cost, he said nothing only if you like to swap some of your movies for some of my movies, and after that we started to swap some movies58
It was held that the prosecution had established beyond a reasonable doubt that Giannotis ought to have known that each of the articles were infringing copies for a number of reasons: his history in the video industry; his knowledge of copyright and pirate copies; his knowledge that videos could be copied and the unlikelyhood of not appreciating the danger of dealing with a vendor of secondhand tapes.59 Sheppard J stated:
I must confess that the case for holding that there is here demonstrated actual knowledge is a strong one, but I must bear in mind, as I have indicated, that the tapes which were purchased from Mr Mimo, who said to the defendant to ask him no questions, were not necessarily all the tapes which are the subject of the charge. The evidence does not enable one to tell. In the result I have reached the conclusion that I ought not to find actual knowledge but I do, as I say, find that the defendant ought reasonably to have known that each of the articles was an infringing copy of the films in question60
The prosecution had relied on the authority61 of Taylor’s Central Garages (Exeter) Ltd v Roper,62 in which Devlin J (later Lord Devlin) had discussed the various legal classes of “knowledge”. Devlin J stated in that case that the words “ought reasonably to know” encompass constructive knowledge, which is merely neglecting to make such enquiries as a reasonable and prudent person would make, and that generally constructive knowledge has no place in the criminal law.63 Giannotis was sentenced to be bound over for 3 years and ordered to pay costs of $6,500.
In the conclusion of his judgment Sheppard J commented upon the evidentiary difficulties of proving that a defendant possessed the required degree of knowledge of the status of the infringing copy. He stated that there the lack of familiarity with copyright was a problem in the video hire industry and it would be desirable for the Australian Film and Video Security Office to prepare a short explanation document for video hire shop owners. He suggested the video hire industry would be helped by this knowledge, and additionally it would be easier to prove a shop owner or employee had constructive knowledge that an article was an infringing copy in the event of a prosecution.64
The inclusion of a possession offence in the Copyright Amendment Act 1986 (Cth) allowed prosecutions to be brought against shop owners such as Giannotis without the need for trap purchases or witnessing transactions. An investigator could gather sufficient evidence from an inspection of the premises, and if the owner or employee of the shop was still in possession of the infringing copies when the police visited, they could usually be successfully prosecuted without the need to prove that the copies had been sold, hired, distributed or exhibited.
The Copyright Amendment Act 1986 (Cth) implemented a number of other changes to the offence provisions. It was thought that the scope of the offence of causing a performance in public would be inappropriately wide if the standard mens rea element of “ought to know” was applied to the offence.65 To counter-balance the effect of the change to the mens rea element, the circumstances in which the conduct had to occur were altered from “in public” to “in public at a place of public entertainment”.66 A place of public entertainment was defined as including any premises that are occupied principally for purposes other than public entertainment but are from time to time made available for hire for purposes of public entertainment.67 A new subsection 132(5AA) also made it an offence to cause the performance of a sound recording or a film at a place of public entertainment.68
The Copyright Amendment Act 1986 (Cth) also made substantial changes to the penalties for the offences.69 The penalty for a first offence was raised to a $500 fine per article for an offence committed by a natural person and a $2,500 fine for an offence committed by a body corporate. If the article was a cinematographic film, the penalty for an offence committed by a natural person could also be punished by not more than 2 years imprisonment, in addition to the existing $1,500 fine for each infringing article. The fine for a body corporate was raised to a $7,500 fine per infringing copy of a cinematographic film.
For second or subsequent offences, the penalty for natural persons was raised to $500 per infringing article, or $1,500 per article and/or 5 years imprisonment if the infringing article was a cinematographic film. The fine for second or subsequent offences committed by a body corporate was also enhanced for cinematographic films: $15,000 per infringing article as opposed to $5,000 in any other case.
13.10 The Copyright Amendment Act 1989 (Cth)
The Copyright Amendment Act 1989 (Cth) created a number of offences which were designed to strengthen the protection for performers.70 The penalties for contravening these offences were prescribed in s 248R and varied in severity according to factors such as the status of the defendant, whether the offence was a first or subsequent offence, whether the infringing article was a sound recording or a cinematograph film and in which court the person or corporation was prosecuted.71
The amendment as a whole (inclusive of the civil penalties) was ostensibly implemented to allow Australia to ratify72 the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations.73 However under the convention Australia is only obligated to implement civil laws to protect performance; there is no obligation to provide criminal laws.