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FEDERAL COURT OF AUSTRALIA
Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2)
[2012] FCA 34
Citation: Singtel Optus Pty Ltd v National Rugby LeagueInvestments Pty Ltd (No 2) [2012] FCA 34
Parties: SINGTEL OPTUS PTY LTD (ACN 052 833 208) andOPTUS MOBILE PTY LTD (ACN 054 365 696) v
NATIONAL RUGBY LEAGUE INVESTMENTS PTY
LIMITED (ACN 081 778 538), AUSTRALIAN RUGBY
FOOTBALL LEAGUE LIMITED (ACN 003 107 293),
AUSTRALIAN FOOTBALL LEAGUE (ACN004 155 211) and TELSTRA CORPORATION
LIMITED (ACN 051 775 556)
File number: NSD 1430 of 2011
Judge: RARES J
Date of judgment: 1 February 2012
Catchwords: COPYRIGHT infringement internet and mobiletelephony service providing user with ability to record freeto air television broadcast and play on users PC, mobiletelephone or other compatible device whether service
provider or user made cinematographic film of broadcastwhen user clicked record button for the purposes of ss86(a), 87(a), (b) and 111 of the Copyright Act 1968 (Cth) whether making of recordings in each of the 4 formats used
by any device compatible with service infringed copyrightin broadcast
COPYRIGHT infringement whether user maderecording solely for private and domestic use by watchingat a more convenient time than when the broadcast wasmade within the meaning of s 111 of the Copyright Act1968 (Cth) whether s 111 applies where recordingcapable of being viewed from approximately 2 minutesafter commencement of broadcast on certain compatibledevices whether, when user viewed a recording madeusing the service, the streaming of the recording to his orher compatible device was a communication to the publicwithin the meaning of the Copyright Act 1968 (Cth)
whether digital file of recording is article or article or
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thing within meaning of ss 103 or 111(3)(d) ofCopyrightAct 1968 (Cth)
Held: the service provider did not infringe copyright in thebroadcasts by providing service to its users to make and
play recordings
Legislation: Acts Interpretation Act 1901 (Cth) s 23(b)Copyright Act 1966(Cth) (Cth) ss 10(1), 21, 22, 24, 85,86, 87, 90, 91, 98, 99, 101, 103, 109A, 111, 202Copyright Amendment Act 2006(Cth)Copyright, Designs and Patents Act 1988 (UK) s 20(2)
Laddie, Prescott & Vitoria, The Modern Law of Copyrightand Designs (Vol 1, 4th ed, LexisNexis, 2011)
Cases cited: Arista Records LLC v Myxer Inc (C.D. Ca unreported1 April 2011; 2011 US Dist LEXIS 109668) not followed
Australian Securities and Investments Commission v DB
Management Pty Ltd(2000) 199 CLR 321 citedAustralian Tape Manufacturers Association Ltd vCommonwealth (1993) 176 CLR 480 followedCartoon Network LP, LLLP v CSC Holdings Inc 536 F 3d121 (2008) followedCBS Songs Ltd v Amstrad Consumer Electronics Plc[1988] AC 1013 followed
ITV Broadcasting Ltd v TV Catchup Ltd (No 2) [2011] FSR40 distinguished
Network Ten Pty Ltd v TCN Channel Nine Pty Ltd(2004)218 CLR 273 followed
Record TV Pte Ltd v MediaCorp TV Singapore Pte Ltd[2011] 1 SLR 830 followed
Roadshow Films Pty Ltd v iiNet Ltd(2011) 194 FCR 285consideredStevens v Kabushiki Kaisha Sony Computer Entertainment(2005) 224 CLR 193 citedTelstra Corporation Ltd v Australasian Performing Right
Association Ltd(1997) 191 CLR 140 consideredTwentieth Century Fox Film Corporation v CablevisionSystems Corporation 478 F Supp 2d 607 (2007 SD NY)not followedUniversity of New South Wales v Moorhouse (1975) 133CLR 1 followed
Date of hearing: 19 and 20 December 2011
Place: Sydney
Division: GENERAL DIVISION
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Category: Catchwords
Number of paragraphs: 115
Counsel for the Applicants: Mr R Cobden SC with Mr J M Hennessy SC
Solicitor for the Applicants: Baker & McKenzie
Counsel for the First andSecond Respondents:
Mr N C Hutley SC with Mr N R Murray
Solicitor for the First andSecond Respondents:
Kennedys Lawyers
Counsel for the ThirdRespondent and Telstra
Corporation Limited:
Mr D K Catterns QC with Mr P W Flynn
Solicitor for the ThirdRespondent and TelstraCorporation Limited:
Mallesons Stephen Jaques
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IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION NSD 1430 OF 2011
BETWEEN: SINGTEL OPTUS PTY LTD (ACN 052 833 208)First Applicant and Cross-Respondent
OPTUS MOBILE PTY LTD (ACN 054 365 696)
Second Applicant and Cross-Respondent
AND: NATIONAL RUGBY LEAGUE INVESTMENTS PTY
LIMITED (ACN 081 778 538)
JUDGE: RARES J
DATE: 1 FEBRUARY 2012
PLACE: SYDNEY
REASONS FOR JUDGMENT
1 The operators of two of Australias popular football codes, the Australian Football
League (AFL), the third respondent, and the National Rugby League partnership (between
the first and second respondents) (NRL) own the copyright in broadcasts on free to air
television of games played between teams in their respective competitions. Telstra
Corporation Ltd is the AFLs exclusive licensee of broadcasts of the footage of AFL games
in respect of communicating them to the public on, or via, the internet and mobile telephony
enabled devices. Telstra also has a similar licence from the NRL.
2 In mid July 2011, Singtel Optus Pty Ltd and its subsidiary, Optus Mobile Pty Ltd,
began a new service called TV Now. I will refer to both companies simply as Optus, as
did the parties. The TV Now service offers Optus private and small to medium businesscustomers in Sydney, Melbourne, Brisbane, Adelaide and Perth the ability to record free to
air television programs, including AFL and NRL games and play them back on any one or
more of the following four types of device (compatible devices) operated by a user of the
service (user), namely:
a personal computer operating on Microsoft Windows or an Apple
system including iPads or tablets (collectively a PC), by accessing TV Now
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through a web browser, such as Internet Explorer, at the TV Now website
using specified URLs (the TV Now website);
iPhone or iPad devices using Apples iOS TV & Video App that could
be downloaded from Apples AppStore (an Apple device);
Android mobile devices, including a tablet, using the Android TV &
Video App that could be downloaded from Googles Android Market Place or
the Optus Application Store (an Android device) ;
most 3G mobile devices, including Android devices, but not Apple
devices (a 3G device) using that devices web browser application to access
the TV Now websites using specified URLs (the TV Now 3G website).
3 The user of the TV Now service could select a program to record from an electronic
program guide that would appear on any one of those four kinds of device. Unknown to the
user, Optus technology then caused a set of four unique recordings to be made of the
program its user had selected, for the sole use of that person. Each of those four recordings in
the set was in one of the four respective formats necessary to enable the user to view the
recorded program on any one of the four kinds of device supported by the TV Now service.
If several users selected the same program to record, the TV Now service made separate,
unique sets of four copies (one in each format) for each of those users.
4 The facts and issues are largely agreed because of the commendably sensible
approach that the parties have taken in bringing these complex questions to trial quickly. The
resolution of the controversy will depend on the construction of a number of provisions of the
Copyright Act 1966(Cth) and their application to the facts.
5 The central issue in these proceedings is whether Optus, through the operation of its
TV Now service, infringed the copyright interests of the AFL, NRL and Telstra (the
rightholders) in the free to air broadcasts of some live and filmed AFL and NRL games
played in September 2011. The rightholders alleged that Optus made cinematograph films
within the meaning of the Act, being infringing copies, of those broadcasts and later
communicated those films to users of the service. The users had utilised the TV Now service
to record and later play the films on their compatible devices. Optus contended that the users,
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rather than it, had made the films or copies and played them without any infringement of
copyright because of the exception for private and domestic recording in s 111 of the Act.
6 The parties agreed that there were seven issues for determination. I will set these out
later, but it suffices to say that they focus on whether and how Optus, or the user, made, or
later viewed, cinematograph films or copies of the broadcasts. I will first identify the
principal relevant provisions of the Act, then set out the facts and then the issues.
THE STATUTORY CONTEXT
7 The key provision of the Act that is engaged in these proceedings is s 111 which
provides:
111 Recording broadcasts for replaying at more convenient time
(1) This section applies if a person makes a cinematograph film or soundrecording of a broadcast solely for private and domestic use bywatching or listening to the material broadcast at a time more
convenient than the time when the broadcast is made.
Note: Subsection 10(1) defines broadcast as a communication to the publicdelivered by a broadcasting service within the meaning of the BroadcastingServices Act 1992.
Making the film or recording does not infringe copyright
(2) The making of the film or recording does not infringe copyrightin the broadcast or in any work or other subject-matter included inthe broadcast.
Note: Even though the making of the film or recording does not infringethat copyright, that copyright may be infringed if a copy of the film orrecording is made.
Dealing with embodiment of film or recording
(3) Subsection (2) is taken never to have applied if an article or thingembodying the film or recording is:
(a) sold; or (b) let for hire; or (c) by way of trade offered or exposed for sale or hire; or(d) distributed for the purpose of trade or otherwise; or(e) used for causing the film or recording to be seen or heard in
public; or(f) used for broadcasting the film or recording.
Note: If the article or thing embodying the film or recording is dealt with asdescribed in subsection (3), then copyright may be infringed not only by the
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making of the article or thing but also by the dealing with the article or thing.
(4) To avoid doubt, paragraph (3)(d) does not apply to a loan of thearticle or thing by the lender to a member of the lenders family orhousehold for the members private and domestic use. (boldemphasis added)
8 Importantly, the earlier version of that section had been repealed and the current s 111
enacted by the Copyright Amendment Act 2006 (Cth) along with a number of other
provisions. Those included the definition in s 10(1) of private and domestic use which,
unless the contrary intention appears, means private and domestic use on or off domestic
premises. Relevantly, s 10(1) also contains the following definitions that apply unless the
contrary intention appears:
cinematograph film means the aggregate of the visual images embodied in an articleor thing so as to be capable by the use of that article or thing:
(a) of being shown as a moving picture; or
(b) of being embodied in another article or thing by the use of which it can be soshown;
and includes the aggregate of the sounds embodied in a sound-track associated with
such visual images.
communicate means make available online or electronically transmit (whether over apath, or a combination of paths, provided by a material substance or otherwise) awork or other subject-matter, including a performance or live performance within themeaning of this Act.
copy, in relation to a cinematograph film, means any article or thing in which thevisual images or sounds comprising the film are embodied.
infringing copy means:
(b) in relation to a sound recordinga copy of the sound recording not being asound-track associated with visual images forming part of a cinematograph
film;
(c) in relation to a cinematograph filma copy of the film;
(d) in relation to a television broadcast or a sound broadcasta copy of acinematograph film of the broadcast or a record embodying a soundrecording of the broadcast; and
(e)
being an article (which may be an electronic reproduction or copy of the work,
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recording, film, broadcast or edition) the making of which constituted aninfringement of the copyright in the work, recording, film, broadcast or edition
sound recordingmeans the aggregate of the sounds embodied in a record.
television broadcast means visual images broadcast by way of television, togetherwith any sounds broadcast for reception along with those images.
9 Next, s 22 deals with the making of literary, dramatic, musical and artistic works,
sound recordings, including of live performances and, pertinently provides:
22 Cinematograph films
(4) For the purposes of this Act:
(a) a reference to the making of a cinematograph film shall be read asa reference to the doing of the things necessary for the productionof the first copy of the film; and
(b) the maker of the cinematograph film is the person by whom thearrangements necessary for the making of the film wereundertaken.
Broadcasts and other communications
(5) For the purposes of this Act, a broadcast is taken to have been made by
the person who provided the broadcasting service by which thebroadcast was delivered
(6) For the purposes of this Act, a communication other than a broadcastis taken to have been made by the person responsible for
determining the content of the communication.
(6A) To avoid doubt, for the purposes of subsection (6), a person is notresponsible for determining the content of a communication merely
because the person takes one or more steps for the purpose of:
(a) gaining access to what is made available online by someone else
in the communication; or
(b) receiving the electronic transmission of which thecommunication consists.
Example: A person is not responsible for determining the content ofthe communication to the person of a web page merely because the
person clicks on a link to gain access to the page. (emphasis added)
10 Part IV of the Act (comprising ss 84-113C) makes specific provisions for copyright in
subject matter other than literary, dramatic, musical and artistic works. In addition to s 111,Pt IV relevantly provides:
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85 Nature of copyright in sound recordings
(1) For the purposes of this Act, unless the contrary intention appears,copyright, in relation to a sound recording, is the exclusive right todo all or any of the following acts:
(a) to make a copy of the sound recording;
(b) to cause the recording to be heard in public;
(c) to communicate the recording to the public;
(d) to enter into a commercial rental arrangement in respect of therecording.
86 Nature of copyright in cinematograph films
For the purposes of this Act, unless the contrary intention appears, copyright,in relation to a cinematograph film, is the exclusive right to do all or any ofthe following acts:
(a) to make a copy of the film;
(b) to cause the film, in so far as it consists of visual images, to be seenin public, or, in so far as it consists of sounds, to be heard in public;
(c) to communicate the film to the public.
87 Nature of copyright in television broadcasts and sound broadcasts
For the purposes of this Act, unless the contrary intention appears, copyright,in relation to a television broadcast or sound broadcast, is the exclusive right:
(a) in the case of a television broadcast in so far as it consists of visualimagesto make a cinematograph film of the broadcast, or a copy ofsuch a film;
(b) in the case of a sound broadcast, or of a television broadcast in so faras it consists of soundsto make a sound recording of the broadcast,or a copy of such a sound recording; and
(c) in the case of a television broadcast or of a sound broadcasttore- broadcast it or communicate it to the public otherwise than by
broadcasting it.
90 Cinematograph films in which copyright subsists
(1) Subject to this Act, copyright subsists in a cinematograph film ofwhich the maker was a qualified person for the whole or a substantial
part of the period during which the film was made.
(2) Without prejudice to the last preceding subsection, copyrightsubsists, subject to this Act, in a cinematograph film if the film was
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made in Australia.
91 Television broadcasts and sound broadcasts in which copyright subsists
Subject to this Act, copyright subsists in a television broadcast or soundbroadcast made from a place in Australia:
(a) under the authority of a licence or a class licence under theBroadcasting Services Act 1992; or
(b) by the Australian Broadcasting Corporation or the SpecialBroadcasting Service Corporation.
101 Infringement by doing acts comprised in copyright
(1) Subject to this Act, a copyright subsisting by virtue of this Part isinfringed by a person who, not being the owner of the copyright, andwithout the licence of the owner of the copyright, does in Australia,or authorizes the doing in Australia of, any act comprised in thecopyright.
103 Infringement by sale and other dealings
(1) Subject to sections 112A, 112C, 112D and 112DA, a copyrightsubsisting by virtue of this Part is infringed by a person who, in
Australia, and without the licence of the owner of the copyright:
(a) sells, lets for hire, or by way of trade offers or exposes forsale or hire, an article; or
(b) by way of trade exhibits an article in public;
if the person knew, or ought reasonably to have known, that themaking of the article constituted an infringement of the copyright.
.
(3) In this section:
article includes a reproduction or copy of a work or othersubject-matter, being a reproduction or copy in electronic form.
11 Finally, s 202 enables a person threatened with proceedings for breach of copyright to
sue the person making the threats and the latter to counterclaim, in order to determine
whether an infringement of copyright occurred to which the threats related.
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Sydney, Melbourne, Brisbane, Adelaide and Perth and then only for those
channels in that users home address broadcast region;
he or she can both schedule and watch recordings using a mobile or
computer;
he or she can delete, re-record and watch as many times as desired;
Optus stores the recorded shows in the cloud instead of on your
phones or computer;
recordings expire after 30 days.
HOW THE USER CHOOSES TO RECORD A PROGRAM
18 Once signed up for the TV Now service, a user logs in and is directed to the electronic
program guide. He or she navigates that guide to look for and select the program to be
recorded. The user cannot use the TV Now service when in another capital city to record any
broadcasts that are not made in his or her home address broadcast region. A user is only able
to change his or her home address details once every two months. The TV Now service can
only record a program that a user wishes to record if the broadcast of the program has not yet
commenced. Thus, a user cannot begin any recording once a program has commenced beingput to air. The program guide appears on the screen of a PC as follows:
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19 A user who has an Apple or Android device must download the appropriate TV &
Video App or application suitable for that device in order to use the TV Now service. He or
she then navigates to the equivalent screen to that above for a mobile device, an example of
which is shown below:
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20 The TV Now service calculates when a recording will begin using a clock in one of
the two MACF (media application control framework) servers that control the system. These
are programmed to commence recording 2 minutes before, and cease 10 minutes after, the
scheduled broadcast times so as to allow for variations in the television stations schedules.
21 In essence, from the users point of view, the TV Now system is simplicity itself.
After logging in, he or she looks at the electronic program guide, decides what he or she
wants to record and clicks the record button. Next, a pop up box appears on the screen
displaying further information about the chosen program. This box invites the user to click
on the Record button it displays to confirm that he or she wishes to record the program.
That is the last the user does from then until he or she wants to play the recording. Users of
the TV Now service can cancel a scheduled recording by clicking on an appropriate button.
They can also change their TV Now service plan if they choose.
22 I will describe the complex system that the TV Now service uses to make and
transmit recordings later in these reasons. However, from the users perspective, his or her
involvement is similar to programming a recording device connected to a home television to
record a program in advance and then playing it later at his or her leisure; indeed, the TV
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Now system is apparently easier for a user to employ than some of the technologies available
to record programs that can be viewed on the users own equipment, such as a DVD recorder,
DVR (digital video recorder) or VCR (video cassette recorder).
HOW THE USER WATCHES A RECORDED PROGRAM
23 When the user wants to watch a recorded program, he or she can do so on any of the
four kinds of compatible device supported by the TV Now service. Once the user logs into
the service and seeks to view a recording, the TV Now system detects the particular kind of
device the user is then utilising and transmits a stream of data in the form suitable for that
device from one of the four recordings of the program held in Optus datacentre. If the user
subsequently wants to watch some or all of the same recording on another compatible device,the TV Now system will stream data to that device from another of those four recordings that
is appropriate for the device.
24 If the user wishes to watch a recorded program using a PC, he or she logs into the TV
Now website and is presented with the My Shows web page. That brings up the Recorded
Shows tab. It lists the programs or shows that have been recorded and remain available (i.e.
within 30 days of the original broadcast) with play and delete buttons next to them. If
the user clicks play, a web page appears with a video player that the user can control to
watch, pause, advance or rewind the recording as he or she wishes.
25 If the user wishes to watch a recorded program using a 3G device, he or she must use
it to access the TV Now 3G website, and click on the My Shows button. He or she will see
the Recorded tab. By clicking on that, a menu of all recorded programs (less than 30 days
old) appears. The user then selects the desired program and a screen appears with
information about it together with a Watch now on your Mobile button. If the user clicks
on that, a mobile video screen appears and he or she can watch, pause, advance, rewind or
delete the recording.
26 A similar process applies for Android devices and, with one important difference, for
Apple devices. Both of these types of device use a TV & Video App and operate in much the
same way as a 3G device. However, the Apple devices allow a user to view a recording of a
television program within about 2 minutes from the commencement of the free to airbroadcast of that program. That is, the Apple devices can be used to see a program such as
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an AFL or NRL game selected for recording on the TV Now service almost live. All of the
other devices can only access recordings of programs made by the TV Now service after the
whole program has finished being broadcast.
HOW OPTUS PROVIDES THE TV NOW SERVICE AT THE TECHNICAL LEVEL
27 Optus expert witness, Rodney McKemmish, gave a precise technical description of
Optus infrastructure system and its components in his detailed report. It is not necessary to
descend too far into that detail in order to describe the essential features of this infrastructure
that are relevant.
28 Australia uses a format known as DVB-T (digital video broadcasting - terrestrial) for
its digital free to air television broadcasts. These broadcasts are made using an audio visual
compression computer format known as MPEG-2 (motion picture experts group). This
format is used to send a stream of digitised data that reception equipment, such as television
sets or set top boxes, can convert or process into what the viewer sees as a television program
at, or nearly at, the same time as the data is received by the device. The data in a DVB-T
signal are split into several streams using a number of frequencies in a particular range for
that signal.
29 Optus has established TV antennae and three DVB-T receivers in each of the five
capital cities in which it offers the TV Now service. The antennae receive the total of 15
digital signals broadcast in the MPEG-2 format by each free to air channel in each city. The
antennae are connected by coaxial cable to the DVB-T receivers.
30 Each of the three DVB-T receivers is configured so that, between them, they will
receive signals from the 15 free to air channels in each city. The receivers then convert the
radio frequency DVB-T signal to a packet-based stream of data, also in MPEG-2 format, and
transmit that stream of data to the transcode servers. Each of those transcode servers has
significant RAM (random access memory) and hard drive memory capacity. Those servers
run a program known as transcoding. This digitally converts the MPEG-2 signal into four
specifications that are designed so that the program can be played back on the different types
of users devices that support the TV Now service. These data streams are called output
profiles. The transcoders convert the MPEG-2 signal into seven different data streams.One combined audio and video stream is for data in the QuickTime HTTP Live Streaming
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proprietary format used by Apple devices (QuickTime Streaming). The way in which
QuickTime Streaming operates could give rise to a discrete issue that may need to be decided
later. I will explain this at the end of these reasons (see: Conclusion at [114]-[115]). The
remaining six streams comprise three sets of an audio and a separate visual stream of data.
Each set is in particular formats suitable for playback on one of the other three types of
device capable of using the TV Now service.
31 Optus keeps a significant number of servers in its datacentre in Sydney. All the
output profiles from Melbourne, Brisbane, Adelaide and Perth are sent as streams of data to
the Sydney datacentre, as are the output profiles that are converted by the Sydney
transcoders. The datacentre has the following equipment:
two MACF servers that control the TV Now service;
routers that direct data from the network of computers in each of
Brisbane, Melbourne, Perth and Adelaide (each known as a local area network
(LAN)), to the LAN in Sydney, via avirtual private LAN;
recording controllers or servers;
a QuickTime Streaming server;
a flash streaming server;
a network attached storage (NAS) computer that is connected to and
manages a large number of hard drives. The recording controllers and
QuickTime Streaming server are connected and write data to the NAS;
an electronic program guide engine;
a user database.
HOW THE DATACENTRE CARRIES OUT A USERS INSTRUCTION TO RECORD
A PROGRAM
32 The MACF servers display the electronic program guide for the TV Now service
available in the five capital cities. When a user clicks on the record button for a program in
the guide, that instruction is sent to the MACF servers which, in turn, enter this data in the
user database. The MACF server enters or creates a schedule ID in respect of the program
selected and the users unique identifying number (user ID). Every time a user instructs the
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TV Now service to record a program the MACF server generates both a new schedule ID for
that users individual instruction and the user ID is entered against the schedule ID for each
request.
33 The recording controllers ask or poll the user database once a minute enquiring
whether any users have scheduled the recording of any programs due to be broadcast at the
time of polling. If a user has instructed that a recording be made, the MACF server informs
the recording controllers which then causes four recordings to be made on the NAS, one in
each of the four output profiles for the user who gave that instruction. The recording
controller notifies the MACF server, once a recording has begun, that the television program
in relation to each particular schedule ID is being recorded. Thus, the user database contains
the instructions of each user of the TV Now service to record a program for that user when it
is later broadcast.
34 The MACF server then allocates an individual recording ID to each such recording
and makes an entry in the user database linking the particular recording ID to the user ID
associated with the instruction to make that recording. Thus, the MACF server is able to
ascertain which particular recording was made for, and on the instruction of, which particular
user. The MACF server will display information to the user about the recordings made for
him or her or when the user next accesses the TV Now service. On the other hand, if no user
has instructed that a program be recorded, no recording occurs (other than for no more than
60 seconds before deletion in the case of the Apple QuickTime Streaming server. The
consequence of this exception is an issue that was separated from the issues that I am now
determining.).
HOW THE DATACENTRE RESPONDS TO A USERS PLAY INSTRUCTION
35 The following occurs when a user decides to play a program he or she caused the TV
Now service to record during the 30 day period before it is automatically deleted. The user
clicks the play button for the desired program displayed in a list of recorded programs on
the device he or she is using. This causes the MACF server to look up the recording ID
associated with that users ID in the user database. The equipment recognises the type of
device that the user is then operating. It then causes the relevant streaming server to send to
the device the compatible version of the output profile that is stored with the recording ID
associated with the relevant user ID. There are two types of streaming servers; flash
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streaming servers that work with PCs and Macs and RTSP/iPhone streaming servers that
work with iPhones and 3G mobile devices.
36 The flash streaming server instructs the storage server in the NAS to provide an IP
stream of the recording in the required one of the four output profiles. The recording
controller causes the NAS to transmit to the flash streaming server a stream of IP packets in
that output profile. The flash streaming server sends this streamed playback data via the
users internet connection to the IP address of the device the user is employing. The user sees
the recording as it is streamed into, and processed by, his or her device. No data is stored in
any permanent form in this process. The user then views, and controls his or her viewing of,
the streamed program on that device.
37 Similarly, if the RTSP/iPhone streaming servers receive such an instruction, the flash
streaming server responds by instructing the NAS to provide an IP stream of the recording in
the output profile format connected to the recording ID for that user that is best suited to the
users device making the play request. That streamed data is sent to the users devices IP
address via an internet connection without storing data in any permanent form. However, if
the appropriate output profile uses QuickTime Streaming, it is transmitted in 10 second
segments. The users device interprets the data sent in these streams and displays the
program on the device. The device does not store a copy of the program in a permanent
form. Rather, the program data is displayed by the device almost immediately it is received
as data and not retained by it.
38 If the user presses the rewind, pause or advance buttons, the device sends the
instruction back to the datacentre where it is processed and given effect by the streaming
server. The user can log into the TV Now service on any compatible device any time duringthe 30 days following the broadcast and continue, or repeat, viewing it on that or another such
device. The Optus equipment will use the same process with any necessary adaption to suit
whatever compatible device is employed by the user.
39 If the user is using a PC, 3G device or Android device to access the TV Now service a
recording will not appear there as available for viewing until the broadcast of the program has
been completed and the recording has finished. However, if the user employs an Apple iOS
device to access the TV Now service, the recording will appear as available for viewing
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approximately two minutes after the broadcast commenced. Thus, a user with an Apple iOS
device will be able to play the recording in near real time i.e. within about two minutes of
the scheduled start of the broadcast and watch the program continuously to its end.
Nonetheless, the recording controllers will have caused four different copies, one in each of
the four formats supported by the TV Now service, of the one program to be recorded for
each recording ID.
AGREED FACTS
40 The parties agreed on the following facts:
(1) Channel Seven and Channel Ten companies operating in Sydney,
Melbourne, Brisbane, Adelaide and Perth:
made cinematograph films and sound recordings of AFL
matches in Australia (AFL films), each of which was a cinematograph
film within the meaning of the Act; and
made television broadcasts of AFL matches on free to air
television using the AFL films (AFL broadcasts), each of which was
a television broadcast within the meaning of the Act.
(2) Copyright subsisted in each of the AFL broadcasts and AFL films.
(3) The AFL owned the copyright in each of the AFL broadcasts and AFL
films.
(4) Telstra was the exclusive licensee of the copyright in the AFL
broadcasts and AFL films in Australia for the internet and mobile telephony
and it exploited that copyright by providing access to AFL broadcasts and
AFL films to its subscribers of those services.
(5) Nine Network Australia Pty Ltd (Channel 9):
made cinematograph films and sound recordings of NRL
matches in Australia (NRL films), each of which was a cinematographfilm within the meaning of the Act; and
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made television broadcasts of NRL matches using NRL films
(NRL broadcasts), each of which was a television broadcast within
the meaning of the Act.
(6) Copyright subsisted in each of the NRL broadcasts and the NRL films.
(7) The NRL owned the copyright in the broadcasts, cinematograph films
and sound recordings of NRL matches made by Channel 9 (collectively NRL
footage).
(8) Telstra was the exclusive licensee of the copyright in the NRL footage
in Australia for the internet and mobile telephony and it exploited thatcopyright by providing access to the NRL footage to its subscribers of those
services.
41 The parties also agreed that particular TV Now users selected the following football
matches for recording by the TV Now service and that when each of these was recorded a
cinematograph film was made of it within the TV Now service infrastructure in the way
described above:
(a) on 23 September 2011 the Manly Sea Eagles v Brisbane Broncos
preliminary rugby league final was broadcast in Sydney at approximately
19:30 (the first NRL program);
(b) on 24 September 2011 the Melbourne Storm v New Zealand
Warriors preliminary rugby league final was broadcast in Sydney at
approximately 19:30 (the second NRL program);
(c) on 4 September 2011 the program Nines Sunday Football: Brisbane
Broncos v Manly Sea Eagles was broadcast in Sydney at approximately
15:30 (the third NRL program);
(d) on 23 September 2011 the Collingwood v Hawthorn AFL
premiership preliminary final was broadcast:
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(1) in the Melbourne television area at approximately 19:30 local time (the
first AFL program);
(2) in the Perth television area at approximately 18:30 local time (i.e.
about 1 hour later than the first AFL program) (the second AFL
program).
42 Various identified users watched the above five programs at times that were also
agreed facts. For example, the first NRL program was watched by user A twice, once on 23
September at about 22:30 and again the next day at about 13:20, while user B watched it on
numerous occasions between about 22:15 on 23 September to 18 October. However, it is not
apparent whether the users necessarily watched the whole program when they accessed it.
Thus, user B is recorded as having watched this program four times on 18 October at about
10:00, 15:39, 15:44 and 15:45. Obviously, user B could not have watched the whole, or even
very much, of the program on 18 October at the second and third of those times.
43 The first AFL program, broadcast on 23 September at 19:30, was watched on that
night by user I at about 19:49, user J at about 19:41, 20:06, 21:47 and 22:02 and user L at
about 19:31. Each of these three users must have had an Apple device because they were
able to watch the match as the broadcast was occurring. User J seems to have either paused
or stopped and re-started the program to have a break, perhaps to get a refreshment, or to
have had difficulty with the internet or mobile connection, at least in respect of his or her
second connection at about 20:06. User L appears to have been aware of the ability to use his
or her Apple device to obtain a near live streaming of the match. However, it is not clear
how long any of these persons watched. User L is recorded as having played the same film
14 more times, although a number of these had such short breaks between them that user Lmust either have paused or stopped and re-started the program or had difficulty maintaining
his or her internet or mobile connection.
44 In addition, two persons, users O and P, watched the second AFL program in Perth
respectively, two and four days after it went to air and in doing so must have viewed a
recording of the broadcast, i.e. a cinematograph film of it.
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THE ISSUES FOR PRESENT DETERMINATION
45 After they began on 26 August 2011, these proceedings developed as contemplated by
s 202 of the Act. Optus pleaded that the AFL and NRL had alleged that the TV Now service
infringed their copyright and had made unjustifiable threats, within the meaning of s 202, thatthey would seek to restrain Optus from continuing to provide the service. Telstra was joined
as a cross-claimant to enable it to assert its rights as an exclusive licensee of the AFL. The
parties sought only declaratory relief against each other in the present phase of the
proceedings that is concerned to determine a number of separate issues arising on the
amended cross claims and defences of the AFL, NRL and Telstra. The parties agreed that the
following issues required determination separately and before any others in their controversy:
1. Who did the acts involved in recording the NRL broadcasts, AFL broadcasts
and AFL films (Copyright Works or, for simplicity film) for the operation
of the TV Now service:
the user (Optus primary position);
Optus (the rightholders position and Optus' alternate position);
or
Optus and the user (the rightholders alternate position and
Optus' further alternate position)?
2. Does s 111 mean that the recording was not an infringement of copyright? If
s 111(2) does not apply, is Optus liable for copyright infringement by way of
authorisation?
3. When the recording was viewed, who did the acts of electronically
transmitting the Copyright Works:
the user (Optus primary position);
Optus (the rightholders position and Optus' alternate position);
or
Optus and the user (the rightholders alternate position and
Optus further alternate position)?
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4. When recordings were streamed to a user, was this a communication to the
public? Optus says it was not, and therefore was not an infringement of
copyright. The rightholders say it was, and therefore was an infringement.
5. Did Optus make the Copyright Works available online?
6. If the answer to 5 is yes, was this to the public?
7. Is the digital file comprising the NRL footage streamed to users an article
within the meaning of s 103 or an article or thing within the meaning of
s 111(3)(d) and, if so, was it distributed for the purpose of trade? (This issue
was pressed only by the NRL.)
46 Conceptually, the first six issues can be distilled as follows. The first substantively
concerns identifying who is the person who made the films stored in Optus NAS computer.
The second is whether or not s 111(2) excludes that person from liability for infringing the
rightholders copyright by making the films. The third, fourth, fifth and sixth issues concern
whether the user, or Optus, or both, made the transmission of a streamed film to the user and
whether, by that transmission, the film was a communication to the public or madeavailable online to the public under ss 86(c) or 87(c) within the defined meaning of
communicate as used in ss 10(1), 22(6) and (6A).
47 On 20 December 2011 I ordered, by consent, that the issues arising on the amended
cross claims and defences of AFL, NRL and Telstra be determined separately and before all
other issues, so as to give substantial certainty to all the parties as to the legally and
commercially crucial aspects of their controversy before the 2012 football season
commences. Each of the parties agreed, at my suggestion, that I should also grant any
unsuccessful party leave to appeal from any orders I make reflecting my decision.
48 I will discuss the issues for the sake of simplicity by focusing on the position of the
AFL. That is illustrative of the cases of each of the NFL and Telstra, since there is no
difference in substance between the positions of the AFL and NRL as owners of the
Copyright Works, or of Telstra as exclusive licensee. Also, for simplicity, I will treat the
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rights to make or broadcast or copy as incorporated in the equivalent rights in the Act in
respect of a (cinematograph) film.
Issue 1 : Who did the acts involved in recording the Copyright Works?
49 The AFL had the exclusive right to make a cinematograph film and sound recording
of the second AFL program (s 87(a) and (b)) and to make a copy of the film (s 86(a)). These
are rights, in substance, to reproduce a broadcast or film. The second AFL program was
broadcast in Perth an hour after the live game had commenced being broadcast in Melbourne.
Thus, the second AFL program exploited the AFLs right under s 87(a) and (b) to make a
film of the (live) television broadcast of the premiership preliminary final match that had
commenced earlier on 23 September 2011.
50 When Optus equipment recorded the broadcast of the first AFL program in the four
formats, it brought into existence four (identical) films of that broadcast. This recording was
within the AFLs exclusive right to make a film of a television broadcast under s 87(a) and
(b). And, when that equipment recorded the broadcast of the film that one of the Channel
Seven or Channel Ten companies had made of the second AFL program, Optus equipment
brought into existence four (identical) copies of the broadcast film. This recording was
within the AFLs exclusive right to make a copy of a film under s 86(a).
51 Optus contended that, in each case, the user, by pressing the record button or
instruction on the screen of his or her compatible device using the TV Now service, made
each film of the live broadcast of the game and the subsequent broadcast of the film of the
game within the meaning of s 111(1) and (2).
52 The rightholders argued that, for the purpose of s 111, Optus made any film when it
recorded a program in the four formats. They argued that this was because Optus owned and
operated the complex system that picked up the free to air broadcast in MPEG-2 form,
ultimately recorded it in the four formats and later was able to stream one of those recordings
to a user. The rightholders contended that TV Now was a recording service that Optus
provided to a user and the user took no part in the complex recording process. They
contended that the act of making a film could occur as an automated computer process that
involved no human intervention, citingRoadshow Films Pty Ltd v iiNet Ltd(2011) 194 FCR285 at 320-322 [151]-[158] per Emmett J and 363-364 [328]-[329] per Jagot J. The
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rightholders also asserted that the TV Now service was best characterised as one in which the
user asked Optus to copy a program on his or her behalf. They argued that s 111(1) required
that the person who made the film had to do so for the sole purpose of his or her own private
and domestic use by watching or listening to the material broadcast at a time more convenient
than the time of the broadcast.
Legislative history of s 111
53 The Copyright Amendment Act 2006(No 158 of 2006) repealed the former s 111 and
substituted the present section. In the initial second reading speech, for an earlier version of
what is now s 111, the Minister had said (Hansard: The Senate: 6 November 2006 at p 136):
First, the reforms recognise that common consumer practices of time-shiftingof broadcasts and format-shifting of some copyright material should be
permissible.
This bill will amend the Copyright Act to make it legal for people to tape TV or
radio programs in order to play them at a more convenient time.
It will be legal to reproduce material such as music, newspapers and books intodifferent formats for private usemeaning people can transfer music from CDs theyown onto their iPods and other music players. As a result of these changes, millionsof consumers will no longer be breaching the law when they record their favouriteTV program or copy CDs they own into a different format.
These reforms are innovative and technology is changing rapidly. (emphasisadded)
54 The Explanatory Memorandum for this draft of the Bill referred to the then lack of
provision to enable copying for private or personal use. It explained that this situation was
increasingly out of step with consumer attitudes and behaviour. It noted that copying for
personal use was particularly popular in two areas: time-shifting and format-shifting (where
an individual buys copyright material such as music, and then copies it to other devices that
he or she owns that are capable of replaying it, even if the devices use different formats). The
Explanatory Memorandum recognised that a range of new consumer devices was being
marketed to simplify and encourage the private copying of television broadcasts and
that such acts usually infringed copyright. It continued:
Many ordinary Australians do not believe that format-shifting music they havepurchased or time-shifting a broadcast for personal use should be legally wrongwith a risk of civil legal action, however unlikely. Failure to recognise such
common practices diminishes respect for copyright and undermines thecredibility of the Act.
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The failure to recognise the reality of private copying is also unsatisfactory for
industries investing in the delivery of digital devices and services . Eg, the supplyof personal recording devices by broadcasters of subscription television services is
proving to be important for the development of digital television. The availability ofpersonal recording devices is also likely to be important for digital radio. (emphasisadded)
55 The Explanatory Memorandum said that specific exceptions should be introduced into
the Act to permit both time-shifting and format-shifting to restore credibility to the Act. It
saw this step as giving certainty to copyright owners, users and industries that provide
products and services that assist consumers carry out these copying activities. It said that this
approach would facilitate the growth of digital television and radio services. The
Explanatory Memorandum also considered that the recognition of these present practiceswould be likely to have negligible market impact.
56 During the second reading debates, two important amendments were made that
affected the proposed cl 111(1) as first introduced in the Bill. First, the definition of private
and domestic use was added to s 10 in the Senate at the same time as what became s 111(3)
(e) and (f) and s 109A. Soon after, cl 111(1) was amended by deleting the words in
domestic premises and that had appeared immediately before solely for private and
domestic use. In moving these amendments in the Senate, the Minister said of the new
definition of private and domestic use (Hansard: The Senate: 30 November 2006 at
p 145):
The bill adds new copyright exceptions that permit the recording or copying ofcopyright material for private and domestic use in some circumstances. Thisamendment makes it clear that private and domestic use can occur outside a
persons home as well as inside. The amendment ensures that it is clear that, forexample, a person who under new section 109A copies music to an iPod can listen
to that music in a public place or on public transport. (emphasis added)
57 The Minister then explained in the Senate, repeating the words of the Further
Supplementary Explanatory Memorandum, why cl 111(1) had been reworded saying (ibid):
This relates to time shifting. ... This amendment substitutes a new section 111(1),which removes the requirement that a recording of a broadcast under section111 must be made in domestic premises. This amendment provides greater
flexibility in the conditions that apply to time-shift recording. The development
of digital technologies is likely to result in increasing use of personal consumer
devices and other means which enable individuals to record television and radiobroadcasts on or off domestic premises. The revised wording of section 111 bythis amendment enables an individual to record broadcasts as well as view and listen
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to the recording outside their homes as well as inside for private and domestic use.(emphasis added)
Issue 1 : Consideration
58 A person needs to employ technical equipment to make a film of a broadcast.
Section 111(1) does not require the person who makes the film to have any particular
relationship, such as ownership, to the equipment by which it is made. The Parliament must
have contemplated that a variety of techniques and technical equipment could be used by a
person to make a film of a broadcast. Since the 1980s households have had an evolving array
of recording equipment capable of making a film, or in popular parlance copying, what is
broadcast on television. Since the House of Lords decided CBS Songs Ltd v Amstrad
Consumer Electronics Plc [1988] AC 1013, copyright legislation has had to balance the
legitimate interests of the makers of original works and of ordinary citizens who use
technological advances to copy those works for their own use in their private or domestic
lives. In that case their Lordships refused to prohibit sales of blank tapes, recorders or similar
electronic equipment that were capable of making copies of anothers copyright work merely
because people might use these in their own homes to make copies of such work, rather than
work not protected by copyright. Mere sale of articles that have lawful uses does not
constitute authorisation of infringement of copyright, even if the manufacturer or vendor
knows that there is a likelihood that the articles will be used for an infringing purpose, such
as home recording, so long as the manufacturer or vendor has no control over the purchasers
use of the article: Australian Tape Manufacturers Association Ltd v Commonwealth (1993)
176 CLR 480 at 498 per Mason CJ, Brennan, Deane and Gaudron JJ.
59 As Gleeson CJ, Gummow, Hayne and Heydon JJ acknowledged in Stevens v
Kabushiki Kaisha Sony Computer Entertainment(2005) 224 CLR 193 at 213 [54], because of
the complex nature of the intangible form of property that it creates, copyright legislation in
Australia and elsewhere gives rise to difficult questions of construction. The task of
construction requires the Court to discern where the Parliament drew an enforceable line
between the exclusive rights to exploit the proprietary interest it created and conferred on the
owner of copyright in a work and the ability of others to use and copy that work. Amstrad
[1988] AC 1013 recognised the somewhat symbiotic love-hate relationship between the
entertainment industry, the electronics and communications industries and the consuming
public. The entertainment industry, of which the AFL and NRL are part, wants to exploit and
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maintain its exclusive rights over its output. The electronics and communications industries
want to sell their products and services to enable the public to see and hear and, of course,
copy what the entertainment industry is exploiting. The public want to utilise the latest that
technology has to offer to see and hear the entertainment as often as they desire, using
whatever medium is most convenient.
60 The daily life of persons in Australia and many other countries has transformed over
the last 20 years with advances in technology. Indeed, the subject matter of these
proceedings would have been unimaginable two decades ago. Now, a person using a mobile
phone, that can sit in the palm of his or her hand, can watch a recorded, or even near live,
football game or other entertainment program that had been, or is being, broadcast on free to
air television. The technology used by the TV Now service does not allow a user to
download or copy any recorded, or near live, program onto his or her compatible device. The
technology does allow a copy to be created, at the instance of the devices owner or user, and
stored by Optus infrastructure.
61 A person who makes a recording of a broadcast for his or her personal and domestic
use, solely for the purpose of viewing or listening to it at a more convenient time, is described
as having time-shifted the broadcast: cf: Laddie, Prescott & Vitoria, The Modern Law of
Copyright and Designs (Vol 1, 4th ed, LexisNexis, 2011) at p 913 [21.107].
62 Who makes the copy for the purposes of the Copyright Actin a situation like that
provided by the TV Now service? In some ways, this question resembles the old conundrum
of which came first: the chicken or the egg? Different courts confronted by a similar
dilemma to that presented here have approached it by recognising that identification of a
policy choice may be a key to construing whether an infringement of copyright has occurred:cp, on the one hand,Network Ten Pty Ltd v TCN Channel Nine Pty Ltd(2004) 218 CLR 273
at 287 [29] per McHugh A-CJ, Gummow and Hayne JJ; Cartoon Network LP, LLLP v CSC
Holdings Inc 536 F 3d 121 at 138 (2008: CA 2), Record TV Pte Ltd v MediaCorp TV
Singapore Pte Ltd [2011] 1 SLR 830 at 859-860 [69] per VK Rajah JA with, on the other
hand, the view of the district judges in Twentieth Century Fox Film Corporation v
Cablevision Systems Corporation 478 F Supp 2d 607 (2007 SD NY) at 617-620 (who was
reversed by the Second Circuit Court of Appeals in Cartoon Network 536 F 3d 121), and
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Arista Records LLC v Myxer Inc (C.D. Ca unreported 1 April 2011; 2011 US Dist LEXIS
109668) at p 19.
63 I am of opinion that the user of the TV Now service makes each of the films in the
four formats when he or she clicks on the record button on the TV Now electronic program
guide. This is because the user is solely responsible for the creation of those films. He or she
decides whether or not to make the films and only he or she has the means of being able to
view them. If the user does not click record, no films will be brought into existence that he
or she can play back later. The service that TV Now offers the user is substantively no
different from a VCR or DVR. Of course, TV Now may offer the user a greater range of
playback environments than the means provided by a VCR or DVR, although this can depend
on the technologies available to the user.
64 The ordinary and natural meaning of makes and making in the sense in which
those words are used in s 111(1) and (2) is to create by initiating a process utilising
technology or equipment that records the broadcast. No doubt a director could be said to
make a film as his or her creation of an original work in the sense of make, as that word
is used in s 22(4). But, s 111 is dealing with an individual creating a film, being a copy of a
broadcast by using some available technology or equipment to reproduce someone elses
original work. The complexity of making a recording or film of a broadcast requires the
person referred to in s 111(1) to use a means external to himself or herself to do so. The
concept of making a film or recording employed by s 111(1) and (2) is concerned with the
creation by one person of a copy of a second persons original work so that, as a result, a film
or recording is brought, somehow, into existence by the first persons action. The concept is
not concerned about the technological or other means by which that result is created. It is
unlikely that the Parliament intended to confine, in a presumptive way, the technology orother means available to be used by a person who wished to make a film solely for private or
domestic use and subject to the other conditions in s 111.
65 The legislative materials do not support the rightholders argument that, in effect, the
user could only utilise technology or equipment with which he or she had some greater
connection than the record button on the TV Now electronic program guide. The
Parliament intended that an individual should be able to time-shift by making a copy of a
broadcast that he or she could watch or listen to at a more convenient time. The TV Now
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service provides the user with a means for him or her to make a film of a broadcast. As the
Minister said in moving the amendment of s 111, it was intended to provide greater flexibility
in the conditions that apply to time-shifting, allowing recording of films by individuals inside
or outside their homes. VK Rajah JA, giving the judgment of the Singapore Court of Appeal
in Record TV [2011] 1 SLR at 841 [21], described the differences between traditional
VCRs and DVRs, on the one hand, and technology similar to that in Optus infrastructure for
the TV Now service on the other, as follows:
The fundamental objective of time-shifting is to allow a show to be recorded on astorage medium so that it may be viewed or listened to at the consumersconvenience after it is broadcast. This is a perfectly legitimate activity so long as itdoes not constitute copying copyright-protected material or communicating suchmaterial to the public contrary to copyright laws.
66 Here, the only person who could cause the Optus datacentre to bring into existence or
create the films in the four formats was the user who clicked the instruction record on his
or her compatible device. I agree with the reasoning of the Second Circuit Court of Appeals
in Cartoon Network536 F 3d at 131 that there is no real or sufficient distinction between the
characterisation of a user of a service, like TV Now, to record a film of a broadcast and a
person who uses a VCR (or DVR) to do so, as the person who makes the copy of the work
alleged to be an infringement of anothers copyright. The Court of Appeals did not considerthat a service provider should be made liable for directly infringing a rightholders copyright
simply by offering a service that makes copies automatically upon a users command.
67 Moreover, because of the way the TV Now service is designed, a film cannot be made
unless a user clicks the record button. In University of New South Wales v Moorhouse
(1975) 133 CLR 1 the High Court held that a student had infringed the copyright of an author
by photocopying part of his book on a photocopier provided by the University in its library.
However, the Court also held that the University was secondarily liable for authorising the
infringement. That was because it had power to control the copying activity on its machines
but failed to take steps to prevent infringement, while providing potential infringers with
copyright material and the use of its machines by which infringing copies could be made:
Australian Tape Manufacturers 176 CLR at 498 per Mason CJ, Brennan, Deane and
Gaudron JJ; Moorhouse 133 CLR at 17 per Gibbs J, 22-23 per Jacobs J with whom
McTiernan ACJ agreed. Critically, for present purposes, Gibbs J said that it was impossible
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use of the words maker and making elsewhere in the Act is different, namely, the latter
use is the technical means of identifying the subsistence and ownership of copyright. Rather,
in s 111(1) and (2), those words are used in the more colloquial sense, indeed in their natural
and ordinary meaning, in order to identify who is to have the benefit, not of copyright in the
film or copy, but of the exemption from liability for infringing anothers copyright: see
Australian Securities and Investments Commission v DB Management Pty Ltd (2000) 199
CLR 321 at 338 [34]-[35] per Gleeson CJ, Gaudron, Gummow, Hayne and Callinan JJ.
71 For these reasons, I am of opinion that the user alone did the acts involved in
recording the copyright works. It follows that Optus did not do any of those acts.
Issue 2 : Was recording the films an infringement of copyright?
72 Optus informed users in two separate places in the subscription process for the TV
Now service that it was a breach of copyright to make a copy of a broadcast other than to
record it for the users private and domestic use. In the second of those places, within the
terms and conditions, Optus added that the copy also had to be recorded for use by watching
the material broadcast at a more convenient time. I have emphasised these two warnings in
[15] and [16] above. Also in the terms and conditions:
Optus promised the user that he or she could access the recordings on
the users compatible Optus mobile or PC; and
the user promised that the TV Now service was for his or her
individual and personal use and that he or she, in effect, would not breach
any of the conditions in s 111(3).
73 The rightholders submitted that Optus had failed to prove that any of the films were
made solely for private and domestic use by watching or listening to the material broadcast
at a time more convenient than when the broadcast is made within the meaning of s 111(1).
They contended that there was no evidence of any users purpose, let alone his or her having
the sole purpose required by s 111(1) . The rightholders said that the making of four films in
each compatible format negated the sole permissible purpose in s 111(1) because it had not
been proved, and in any event was unlikely, that each user had all four kinds of compatible
device. They contended that there was no need for more films to be made than the onenecessary for the user to satisfy a desire to time-shift the broadcast for the convenience of his
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or her viewing. They argued that this gave the user significant freedom of choice as to the
format for viewing. In addition, they argued that s 111(1) used the indefinite article a in
the expression makes a cinematograph film or sound recording to denote that only one film
or recording was authorised by the statute. Next, the rightholders argued that the evidence
showed that users L and J had the first AFL program streamed to them within only about 1.5
and 11 minutes of the commencement time of the broadcast and that this did not amount to
time-shifting of the broadcast. And, they argued that the use by small to medium businesses
was outside the scope of the purpose in s 111(1) because such a business could not have a
private or domestic use for such films.
Issue 2 : Consideration
74 The purpose of the exception in s 111(1) and (2) was to accommodate, to some
degree, the law to the realities of modern life. Copying for private and domestic use is so
much a commonplace that it is not difficult to infer that a user who made a film, by clicking
record, was doing so for such a use. Indeed, the rightholders did not suggest how anyone,
for example, watching a broadcast or film of a football game or television program, on his or
her mobile device or PC would be doing so for some reason other than personal pleasure or
interest. Similarly, even though small to medium business subscribers could sign on for the
TV Now service, as a matter of practicality, the persons who could obtain access would be
employees of, or individuals concerned in, those businesses. After all, a corporation, being
an abstract creation of the law, cannot look at a film; only individuals are capable of that or
of operating a mobile device or PC for that purpose So, whoever signed up for the TV Now
service must have been an individual. That persons use, not the corporations or businesss,
is what is relevant for the purposes of s 111(1). Of course, if the person used the film for a
business, non-personal or non-domestic purpose such as those proscribed in s 111(3), then
s 111(1) and (2) would not apply to that use.
75 Here, the users agreed with the terms and conditions of the TV Now service that
limited their use of it to a non-infringing use that complied with the purposes in s 111(1).
Those terms and conditions expressly stipulated that the service was for the users individual
and personal use and noted that the user would infringe copyright by making a copy of a
broadcast other than to record it for his or her private and domestic use by watching it at a
more convenient time. And, the only use that Optus authorised a user to make of the film
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was to play it at a time of his or her choosing within 30 days of the broadcast on mobile
devices or PCs which are, of their nature, private. Optus also required a user to provide his or
her own home address as a condition of signing onto the TV Now service. And, the user can
only watch one recording from the TV Now service at a time.
76 The infringements complained of are that films of broadcasts of football matches were
made in breach of the rightholders copyright. Each film of each broadcast remained in
existence for only 30 days from the time of the original broadcast. There is no evidence that
on the occasions in the agreed facts, any user had a purpose other than that of wanting to
watch that game for his or her own private and domestic use and pleasure. Indeed, some of
them replayed or revisited the recording on a number of a occasions. I infer that their
purpose in playing (as well as in recording) the copyright works was for their own private and
domestic use. That inference is conformable with the terms and conditions on which Optus
provided the users with the TV Now service, and with which they agreed. Such an inference
is also a recognition of the ordinary experience of life, that was assumed by the Parliament in
ensuring that time-shifting of the kind provided for in s 111(1) and (2) would not be an
infringement of copyright.
77 There is no evidence or other reason to suggest that individuals, such as the users of
the TV Now service, were not making films solely for their own private and domestic use and
had departed from their agreement only to use the TV Now service in that way. In these
circumstances, a court should be slow to infer that those individuals have infringed the Act or
copyright by making films having regard to s 111 and in circumstances such as those of the
TV Now service. The value of the exception created by the Parliament, that is designed to
give greater flexibility to individuals so as to take advantage of technological advances,
would be seriously eroded if a service provider, who has structured a service as carefully asTV Now, had to lead evidence about each users individual purpose on each occasion of use:
cfRecord TV[2011] 1 SLR at 851 [46] ff.
78 However, the circumstances of the two users L and J and the facility offered by the
TV Now service of being able to view broadcasts near live on Apple devices, require
further consideration. As the rightholders submitted, there is a tension between near live
viewing and a purpose of watching the material broadcast at a time more convenient than
the time when the broadcast is made (s 111(1)).
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Issues 3 and 5 : Does Optus communicate the film when the user plays it?
86 The rights comprised in the copyright of both a film and a television broadcast include
the exclusive right to communicate it to the public (ss 10(1), 22(6) and (6A), 87(c), 101).
Thus, the rightholders argued, when a user clicked the play button, Optus communicatedthe film to the public by making it available online or transmitting it electronically in the
format compatible with the users device. The rightholders argument raises agreed issues 3
and 5 and requires analysis of how the definition of communicate in s 10(1) applies to the
transmission of the film to the user who has sought to view it. This is because s 22(6), as
clarified by s 22(6A), is a deeming provision about who makes a communication other than a
broadcast.
Issues 3 and 5 : Consideration
87 Here, the films of the broadcasts in the four formats are stored in the NAS computer
in Optus datacentre and streamed to the users compatible device when he or she presses the
play button to view it. Under s 22(6), the person responsible for determining the content of
a communication is deemed to be its maker for the purposes of the Act. However, s 22(6A)
was introduced by the 2006 amending Act to address the incongruity that a person browsing
the internet could click on a link and bring up a web page without realising what it contained.Thus, s 22(6A) provides that a person is not responsible for determining the content of a
communication under s 22(6) merely because he or she takes one or more steps for the
purpose of either gaining access to what someone else has made available online in the
communication in question or receiving the electronic transmission consisting of that
communication. Thus, s 22(6A) addresses both limbs of the definition of communicate.
88 In iiNet194 FCR 285 the Full Court considered the question of who was the maker of
automated communications between many computers using a sophisticated file sharing
system (BitTorrent). That system was designed to diffuse into small packets a file, being
generally a movie or sound track (which I will refer to as a movie), that had been
downloaded onto many computers and then to send packets from those computers to a
different computer using the BitTorrent software. Thus, the computer of a person who
wished to download a copy of the movie caused it to send a request to a swarm of other
computers that both used the software and had the movie to share. The computers in the
swarm responded by sending many copies of the movie in small packets that were collected
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by the requesting computer and assembled into the complete movie. The Full Court held that
a communication within the meaning of s 22(6) could be made by one computer to another
without direct human intervention if one computer made a work available online: iiNet194
FCR at 320-322 [151]-[158] per Emmett J, 363-364 [327]-[330] per Jagot J, 435 [661]-[662]
per Nicholas J. Their Honours also held that a person could make something available online
by leaving a computer switched on that was preconfigured to respond automatically to
requests from other computers to transmit the work or, relevantly, movie. Each time the
computer responded, a new communication occurred.
89 Here, in one sense, Optus communicates the program recorded by the user because its
infrastructure has been configured to respond to a play instruction from the user by making
the recording available online or indeed electronically transmitting it to the user. But, in
another sense, the user has made the program available online by instructing Optus to record
it and to transmit it electronically to the user for each individual play request made by the
user in the 30 days following the broadcast. Similarly, a person who records a television
program by using a piece of equipment, makes the recording available for replaying and uses
the play button on the equipment to transmit it to the television screen at that persons
option.
90 I am of opinion that the user was responsible for any communication within the
meaning of s 22(6) made to his or her device by seeking to play the program that he or she
had earlier selected for recording. Having regard to what s 22(6) and (6A) provide, the TV
Now service operates to make the user the person responsible for determining the content of
any communication to him or her of a recorded program when the user makes a play
request. The content of the communication referred to in s 22(6) must have been the program
that the user sought to have played. That content was recorded at the users instruction. Forthe purposes of s 22(6), the content was indistinct from the four formats in which films of the
one broadcast or film were made. Each format was a vehicle to deliver the content to the user
on a particular compatible device. The user must click play if any communication, by way
of an electronic transmission, of the film to him or her is to occur.
91 The situation of a user of the TV Now service clicking play is quite unlike that of a
person browsing the internet who is unaware or uncertain of what content may be delivered
by clicking on a link. The user of the TV Now service had previously determined that the
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content of what he or she caused to be recorded would be the program or show he or she
selected. By seeking to play it, the user determined that his or her device would display the
recording just as if he or she had inserted a video cassette or DVD into a VCR or DVD player
and pressed play.
92 Of course, more than one person can be responsible for determining the content of a
particular communication as Jagot J noted in iiNet194 FCR at 366-367 [337]-[339]. There
may well be situations where it is difficult to ascertain who is responsible for determining the
content of a link that a user clicks on a web page. If a person chooses to buy a product or
service that is downloaded to his or her computer by clicking on a link, it may be that both
the vendor and purchaser are responsible for the content. The artificial construct created by
s 22(6) is necessary for the purposes of the Act. It must operate as a technology neutral
mechanism so as to attribute responsibility to at least one person for the purposes of
ascertaining who, if anyone, may be liable for infringing copyright in situations. But it has to
accommodate itself to realities and s 22(6A) provides a mechanism for evaluating the degree
to which an attribution of responsibility should be made. A person who selects a television
channel to watch a movie, perhaps with family or friends, on a television set, has taken a step,
or more, to receive the electronic transmission of the communication consisting of that
movie. However, the deliberate exclusion of broadcasts from the deeming in s 22(6) means
that the person is not deemed by s 22(6) to have been responsible for determining the content
of that communication so as to have infringed the copyright in the film by communicating the
film to the public under s 86(c).
93 Because s 22(6) uses the expression the person responsible, there will be situations
in which an evaluation must be made of the particular roles played by each party to the
communication. Every communication, by its very nature, involves more than one partyalthough it is not necessary that each is present at the same place or a human being. But,
what is involved is the imparting of some message by one side in the discourse to another.
94 Here, by clicking the play button on his or her compatible device, the user
communicated the film to his or her device by determining that the film would be made
available online or electronically transmitted to that device. Importantly, s 22(6) and (6A)
recognise that the artificial construct they create will have some difficulty in working
perfectly harmoniously with the definition of communicate. But clearly enough, s 22(6A)
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is directed to a situation where a person sitting at a computer and browsing the internet can
make available online or electronically transmit, within the meaning of the definition of
communicate, particular content that he or she wishes to receive when he or she clicks on a
link.
95 It may appear odd that Optus, which has stored the films in its NAS computer, does
not communicate (make available online or electronically transmit) the film in the
compatible format, but that is because it did nothing to determine the content of that
communication. The user initially chose to record the program so that later he or she could
choose to play the film so recorded using the TV Now service. Optus service enables the
user to make those choices and to give effect to them. But in doing so, Optus does not
determine what the user decided to record when he or she later decides to play it on the
compatible device he or she is then using to watch the film. Hence, the user, not Optus, is the
person responsible for determining the content of the communication within the meaning of
s 22(6) when he or she plays a film recorded for him or her on the TV Now service. Thus,
the user did the act of electronically transmitting the film within the meaning of ss 86(c) and
87(c).
96 The Singapore Court of Appeal arrived at a similar conclusion in Record TV[2011] 1
SLR at 846 [36], but because their Honours construed somewhat differently worded
provisions, their reasoning on this issue is not of assistance.
Issues 4 and 6 : Was the communication to the public?
97 The rightholders argued that any communication was to the public within the
meaning of ss 86(c) and 87(c). If the maker of the communication was the user, as I have
found, he or she necessarily made it to himself or herself. However, that is not determinative
of whether the user so communicated the work to the public if a communication of a film
was made by its either being made available online or electronically transmitted. The
question arises as to whether either mode of communication, for the purposes of the TV Now
service, was to the public.
98 The rightholders argued that users of the TV Now service were part of the
rightholders public ie. the persons who would otherwise have watched the relevantbroadcast and that they:
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received the films in a commercial setting as part of a subscription to
an Optus internet or mobile telephony service; and
had chosen, as members of the public, to avail themselves of that
service.
99 The rightholders argument relied on the reasoning in Telstra Corporation Ltd v
Australasian Performing Right Association Ltd(1997) 191 CLR 140 esp at 157 per Dawson
and Gaudron JJ and 195-203 per Kirby J and the decision of Floyd J inITV Broadcasting Ltd
v TV Catchup Ltd (No 2) [2011] FSR 40.
100 Optus argued that the films were made for private purposes by the user and only
communicated to the user as maker of the film. It contended that the recording was not part
of a transaction with economic value and its communication was private. Optus submitted
that the film of what had been broadcast and recorded on its equipment was not
communicated to the public within the meaning of ss 86(c) or 87(c) because the user was the
only person who could get access to the content when he or she communicated it to his or her
compatible device by clicking the play button.
Issues 4 and 6 : Consideration
101 In Telstra 191 CLR 140, Dawson and Gaudron JJ at 153-157 and Kirby J at 197-200,
considered, relevantly, whether Telstra broadcast copyright musical works to mobile
telephone users when they were placed on hold. Toohey J at 158 and McHugh at 174 agreed
with Dawson and Gaudron JJ on this issue. Their Honours discussed the development of the
con