Institutions providing photocopying or reproduction facilities must take reasonable steps to prevent copyright infringement, including posting adequate and relevant notices, or risk being held to have authorised any infringement that results from use of those facilities.
Later decisions that cite University of NSW v Moorhouse
Decisions cited by University of NSW v Moorhouse
UNIVERSITY OF NEW SOUTH WALES v. MOORHOUSE [1975] HCA 26; (1975) 133 CLR 1
Copyright - Declaration
High Court of Australia
McTiernan A.C.J.(1), Gibbs(2) and Jacobs(3) JJ.
CATCHWORDS
Copyright - Infringement - Literary work - Reproduction of substantial part of work in a material form - Reproduction infringing copyright - Authorization of reproduction - Coin operated photocopying machine in university library - Whether invitation to users of library to infringe copyright - Whether reproduction authorized by university - Copyright Act 1968 (Cth), ss. 31 (1) (a) (i), 36 (1), 40, 49.Declaration - Discretion of court - Declaration of right made in general terms on unproved facts - Need for real and not hypothetical question.
HEARING
Sydney, 1974, November 14, 15, 18; 1975, August 1. 1:8:1975DECISION
1975, August 1. GIBBS J. Mr. Frank Moorhouse (the first respondent) is the author of a
number of short stories which were originally published at
various times in
different magazines and are now published together in the form of a book,
under the title "The Americans, Baby".
There are twenty stories in the book,
and some of them are connected either in theme, or because the characters in
one reappear in
another. By a memorandum of agreement executed on 11th
November 1971 Mr. Moorhouse granted to the second respondent, which is a
publisher,
the right (exclusive in Australia) to print, publish and sell that
work on payment of royalties, together with certain additional
rights. The
present proceedings were commenced by the respondents in the Supreme Court of
New South Wales. The proceedings appear
to have been instigated, or at least
supported, by the Australian Copyright Council, which is naturally concerned
to protect the
copyright of its members from infringement. In the belief that
some of the copying of copyright material which is done within university
libraries, by the use of photocopying machines, amounts to an infringement of
the copyright, it was decided to commence a test case
against a university,
and for this purpose it was arranged that one Paul Brennan, a graduate of the
University of New South Wales,
should make an infringing copy of a literary
work by the use of a photocopying machine in the library of the University of
New South
Wales. Accordingly on 28th September 1973 Mr. Brennan attended at
the library of the University of New South Wales, obtained two
books from the
shelves, and made two photocopies of one chapter or story, of about ten pages,
from each of those books, one of which
was "The Americans, Baby". Mr. Brennan
was not called as a witness and it was not established exactly what part of
"The Americans,
Baby" was copied. The other work copied was a book called
"Happy Times" but no evidence was given that that work was subject to
copyright.
Mr. Moorhouse did not know beforehand that it was proposed to make
a copy of part of his book but was later informed what had been
done and
agreed to join in bringing the present proceedings against the present
appellant, the University of New South Wales ("the
University"). (at p8)
2. By the respondents' statement of claim (which was amended and re-amended)
it was alleged that the respondents are the owners
of the copyright in the
book, and in each of the stories that comprise the book. This allegation was
not admitted but it does not
seem to have been seriously disputed and the
learned trial judge accepted its correctness. No argument was advanced before
us as
to the true nature and effect of the memorandum of agreement executed on
11th November 1971, and in particular no attention was directed
to the
questions whether the memorandum operated as a partial assignment of the
copyright, whether if so the copying by Mr. Brennan
of part of the book was an
infringement only of the rights of the second respondent and not of those of
Mr. Moorhouse and whether
in these circumstances Mr. Moorhouse was entitled to
sue. It is therefore unnecessary to consider those matters, and it will be
convenient
hereafter to speak of the respondents' copyright without thereby
intending to express any opinion as to the respective rights of
the two
respondents. On this appeal the second respondent consented to any order that
the Court might make and withdrew from the
proceedings. (at p8)
3. The statement of claim went on to allege that the University has infringed
the respondents' copyright by reproducing or authorizing
the reproduction of
part of the book in a material form without the consent of the respondents.
The particulars of this allegation
set out that the University had established
in its library a number of photocopying machines operated by tokens or coins,
that it
exercised no supervision or control over what books were photocopied
or what photocopying of any particular book occurred in the
said library and
was indifferent whether persons making use of the facilities infringed the
respondents' copyright, and that it made
the library and the photocopying
facilities available to all students, staff and graduates of the University
and to any persons desirous
of using the same. However, the only infringement
of which particulars were given was that which was said to have occurred on
28th
September 1973 when Mr. Brennan made the photocopies of one of the
stories from the book. The statement of claim further alleged
that the
University intends to continue providing the said photocopying facilities and
to repeat such infringements of the respondents'
copyright. The respondents
claimed a declaration that the University had infringed their copyright.
Further, they claimed declarations
that by providing any coin-operated
photostating machine in its library for use by users of the library the
University authorizes
within s. 36 of the Copyright Act 1968 (Cth) ("the Act")
any infringement of the respondents' copyright which may occur as a result of
the use by such a user of the said
machine; these
declarations were sought
either absolutely, in the terms just stated, or unless certain conditions were
satisfied.
The respondents
also sought an injunction. (at p9)
4. The learned judge who tried the action found that Mr. Brennan had
committed a breach of copyright but that it had not been shown
that the breach
was authorized by the University. He did not find that any other infringement
of the respondents' copyright in "The
Americans, Baby" had occurred, and there
was not the slightest evidence upon which such a finding could have been made.
Nevertheless,
the learned trial judge held that the respondents were entitled
to relief and he granted them a declaration in the following terms:
"Between the date when the . . . book" 'The Americans, Baby'
by Frank Moorhouse "was entered in the" defendant's "library
and the hearing" of this summons the defendant "authorized
such breaches of copyright as . . . occurred by the photocopying
of the whole or part of the library copy of" the said book "by the
use of the photocopying machines where such photocopying was
not a fair dealing within the terms of s. 40 of the Copyright Act
1968 and where such breaches were in any way due to reliance
upon any library guides issued by the defendant in the years
1970, 1971, 1972 and 1973 or the notices appearing upon the
self-service photocopying machines in the" said "library or by
the lack of supervision of the use of such machines or any
combination thereof." (1974) 23 FLR 112, at p 128. (at p9)
5. The University brought the present appeal from this decision. The respondents did not file a notice of cross-appeal within the time allowed by the rules but in the course of argument before us sought leave to cross-appeal on the ground that the learned trial judge should have held that the breach found to have been committed by Mr. Brennan was authorized by the appellant and on the further ground that declarations should in any case have been made in a more general form. This leave was granted. (at p9)
6. The declaration of which the University now complains was in my opinion
wrongly made. The power which is now vested in the Supreme
Court of New South
Wales to make declaratory orders is a beneficial one. I have already remarked
upon the width of the discretion
possessed by a judge who is called upon to
exercise that power: Forster v. Jododex Australia Pty. Ltd. [1972] HCA 61; (1972) 127
CLR
421, at pp
435-438 . However the power, although wide, is not unlimited. In
Forster v. Jododex Australia Pty. Ltd.
(1972) 127
CLR, at p 437
, I expressed
the opinion that the Scottish rules summarized by Lord Dunedin Russian
Commercial and Industrial
Bank
v. British Bank
for Foreign Trade Ltd. (1921) 2
AC 438, at p 448 should in general be satisfied before the discretion is
exercised
in favour of making
a declaration. The first of those conditions is
that "the question must be a real and not a theoretical question".
As a
general rule,
the power to make a declaration will not be exercised when the
court is called upon to answer a question that
is purely hypothetical:
see In
re Barnato (decd.) ; Joel v. Sanges (1949) Ch 258, at p 270 . In accordance
with that principle, the
Court of Appeal in Odhams
Press Ltd. v. London and
Provincial Sporting News Agency (1929) Ltd. (1936) Ch 357 refused to make a
declaration
that the plaintiffs,
who were unable to prove any specific
infringement of copyright, were joint owners of the copyright in compilations
of starting prices
or betting odds made by their representatives. Lord Wright
M.R. said (1936) Ch, at pp 363-364 :
"As to any further compilations of the same character whichMany other examples may be found in the books of cases in which a declaration has been refused because it was claimed in relation to circumstances that had not occurred and might never happen. There is no doubt that a declaration may be an appropriate remedy in an action brought by an owner of copyright to assert his rights, but a declaration will as a general rule not be made for that purpose unless it is established either that an actual infringement has occurred or that the defendant intends to take action that will amount to an infringement. (at p10)
may come into existence, it would be most improper for this
Court to make any general declaration as to whether they would
or would not be the proper subjects of copyright. In order to
bring such an issue before the Court there must be specific
documents, the character of which can be established, so that the
Court can determine whether or not they are the subjects of
literary copyright, and appropriate evidence should be given to
show that there has been an infringement of that copyright."
8. The first question for decision on the cross-appeal is whether the
copyright of Mr. Moorhouse was infringed by the University
when Mr. Brennan
made the two copies of part of "The Americans, Baby" on 28th September 1973.
The combined effect of ss. 13(1), 14(1)(a),
31(1)(a)(i), 36(1) and 40 of the
Act, so far as they are material to the present case, may be summarized as
follows: the copyright
in a literary work is infringed by
a person who, not
being the owner of the copyright, and without the licence of the owner of the
copyright, reproduces or authorizes
the reproduction of the work, or of a
substantial part of the work, in a material form, unless
the reproduction is
"a fair dealing"
with the work "for the purpose of research or private study".
In the circumstances of the present
case it is impossible to hold that
the
University itself did the act of photocopying which was alleged to have
infringed the copyright.
Mr. Brennan was not the servant
or agent of the
University for the purpose of making the copies. Similarly it is impossible to
hold
that Mr. Brennan made the copies
on behalf of the librarian of the
University, and for that reason s. 49, which provides that copyright
is not
infringed by the making of a copy by or on behalf of a librarian under the
conditions stated
in that section, has no application
to the facts of the
present case. The University can only be liable if it authorized the doing
of
the act of photocopying by Mr.
Brennan and if that act amounted to an
infringement of copyright. In relation to the latter question
no serious issue
arises. The
evidence that one chapter or story of the book was copied was not
challenged and if the copyright was
in the book as a whole, rather
than in
each separate story, each of the stories would have constituted a substantial
part of the
book, since although they formed
part of what was called "a
discontinuous narrative" each was a complete short story in itself. The
copies
were not made in circumstances
that would give rise to the protection of s.
40; there was no evidence that Mr. Brennan made them for the purpose of
research or
private study but it appears to have been common
ground that they
were made simply to provide evidence in proceedings intended to
be commenced
against the University. It is accordingly
unnecessary to discuss the meaning
and scope of the expression "fair dealing"
in s. 40. The only question that
remains is whether the University authorized the act done by Mr. Brennan that
infringed the respondents'
copyright,
namely, the making of the photocopies.
(at p11)
9. It will be seen that the present appeal, although intended to be a test
case, is of limited significance. No doubt many librarians,
as well as
authors, would welcome a clear definition of the circumstances in which
literary copyright is infringed by the making
of photocopies in a library - a
definition capable of practical application in the daily activities of those
called upon to supervise
the work of libraries. Photocopying machines are now
extensively used in the libraries of universities and other educational
institutions.
The use of those machines may be regarded by some as a
convenient - indeed almost indispensable - facility for the use of students
and teachers, but by others as gravely damaging to the value of literary
copyright. The Act in its present form does not lay down
precise and detailed
rules for the guidance of librarians who use or provide photocopying machines,
or for the protection of authors
whose works are photocopied. The Act has no
provisions particularly directed to the situation where the library provides
the machines
and the user, and not the librarian,
makes the copies. The
principles laid down by the Act are broadly stated, by reference to such
abstract concepts as "fair dealing" (s.40) and "reasonable portion" (s. 49)
and it is left to the courts to apply those principles
after a detailed
consideration of all the circumstances of a particular case.
In the same way
the question whether one person authorizes
another to commit an infringement
depends upon all the facts of the case
so that a decision on a particular set
of circumstances
may be of no assistance in other cases. (at p12)
10. The word "authorize", in legislation of similar intendment to s. 36 of
the Act, has been held judicially to have its dictionary
meaning of "sanction,
approve, countenance": Falcon v. Famous Players Film Co. (1926)
2 KB 474, at p
491 ; Adelaide Corporation
v. Australasian Performing Right Association Ltd.
[1928] HCA 10; (1928) 40 CLR 481, at pp 489, 497 . It can also mean "permit",
and in Adelaide
Corporation v. Australasian Performing Right Association
Ltd. [1928] HCA 10; (1928) 40 CLR
481 "authorize" and "permit"
appear to have been treated
as synonymous. A
person cannot be said to authorize an infringement
of copyright unless he has
some power
to prevent it: Adelaide
Corporation v. Australasian Performing
Right Association Ltd. (1928)
40 CLR, at pp 497-498, 503 . Express
or formal
permission or
sanction, or active conduct indicating approval, is not
essential to
constitute an authorization; "Inactivity
or 'indifference,
exhibited
by acts of commission or omission, may reach a degree from which
an
authorization or permission may be
inferred'": Adelaide Corporation
v.
Australasian Performing Right Association Ltd. (1928) 40
CLR, at p 504 .
However, the word "authorize"
connotes a mental element
and it could not be
inferred that a person had, by mere inactivity,
authorized something to be
done if
he neither knew nor had reason
to suspect that the act might be done.
Knox C.J. and Isaacs J.
referred to this mental element in
their dissenting
judgments in Adelaide
Corporation v. Australasian Performing Right Association
Ltd. Knox C.J. (1928) 40 CLR, at
p 487 held that indifference or omission
is
"permission" where the party charged (amongst other
things) "knows or has
reason to anticipate
or suspect that the particular
act is to be or is likely
to be done". Isaacs J. apparently
considered that it is enough if the person
sought to be made liable "knows
or has reason to know or believe" that the
particular
act of infringement "will or may" be done (1928)
40 CLR, at pp
490-491 . This
latter statement may be too widely expressed: cf. Sweet
v.
Parsley [1969] UKHL 1; (1970) AC 132, at
p 165 . It seems to me to follow from these
statements of principle that a person who has under his control the
means by
which an
infringement of copyright may be committed
- such as a photocopying
machine - and who makes it available to other
persons, knowing,
or having
reason to suspect, that it is
likely to be used for the purpose of committing
an infringement, and omitting
to take reasonable
steps to limit its use to
legitimate
purposes, would authorize any infringement that resulted from its
use. Cases
such as Mellor
v. Australian Broadcasting Commission
(1940) AC 491
and Winstone v. Wurlitzer Automatic Phonograph Company of Australia
Pty. Ltd.
[1946] VicLawRp 53; (1946) VLR 338 are consistent with this
view. Although in some of the
authorities it is said that the person who authorizes an
infringement
must
have knowledge or reason
to suspect that the particular act of infringement is
likely to be done, it is clearly
sufficient if
there is knowledge or reason
to
suspect that any one of a number of particular acts is likely to be done, as
for example,
where the
proprietor of a shop installs
a gramophone and supplies
a number of records any one of which may be played on it: Winstone
v.
Wurlitzer
Automatic Phonograph Company
of Australia Pty. Ltd. [1946] VicLawRp 53; (1946) VLR 338 .
(at p13)
11. In the present case the University made available to a section of the
public the books in its library - at least those in the
open shelves - and
provided in the library the machines by which copies of those books could be
made. It seems to me that the University
must have known that it was likely
that a person entitled to use the library might make a copy of a substantial
part of any of those
books. It is true that the machines were not used
exclusively for the purpose of copying books; they were extensively used to
copy
lecture notes and other private documents. Moreover, not all of the books
which might be copied were subject to copyright. However,
in the nature of
things it was likely that some of the books which were subject to copyright
and which were in the open shelves might
be copied by use of the machines in a
manner that would constitute an infringement of copyright unless some means
were adopted to
prevent that from being done. It could not be assumed that
persons making copies of works in which copyright existed would do so
only in
circumstances which amounted to a fair dealing for the purpose of research or
private study, at least in the absence of any
effective measures to ensure
that any other copying of copyright works was forbidden. The University was
aware of the assertions
of the Australian Copyright Council that "unlawful and
undesirable practices are commonplace within the universities", and although
it may have regarded these claims as exaggerated, it had been given enough
information to raise the suspicion that some infringing
copies were likely to
be made. In fact the Vice-Chancellor of the University wrote on 17th July 1972
to the Australian Copyright
Council, in reply to a letter which claimed that
some of the copying done in university libraries amounted to a clear
infringement
of the copyright in the work which was reproduced, saying that
"there seems no reason to doubt that most photocopying in university
libraries
is within the spirit and meaning of the law"; the implication of course was
that some photocopying at least amounted to
an infringement. The learned trial
judge went so far as to find that much photocopying of copyright material
which was not a fair
dealing for the purpose of research or private study was
taking place in the library of the University, and that this, if not
positively
known by the University, was suspected. He said that he was
assisted to the finding that many infringements were taking place by
the fact
that the University had failed to attach to the machines notices in a form
prepared at the request of the Australian Vice-Chancellor's
Committee and sent
to the University in October 1969. The form set out an interpretation of fair
dealing that had been accepted by
the Australian Society of Authors and the
Australian Book Publishers Association. This form may or may not have afforded
useful practical
guidance, but it certainly did not state the law as it
stands. The failure of the University to use this form of notice was no
evidence
that infringements were taking place. I have considered carefully the
whole of the material, and have come to the conclusion that
this finding is
insupportable. However, as I have said, the University had reasonable grounds
to suspect that some infringements
would be made if adequate precautions were
not taken. The University had the power to control both the use of the books
and the use
of the machines. In the circumstances, if a person who was allowed
to use the library made a copy of a substantial part of a book
taken from the
open shelves of the library, and did so otherwise than by way of fair dealing
for the purpose of research or private
study, it can be inferred that the
University authorized him to do so, unless the University had taken reasonable
steps to prevent
an infringing copy of that kind from being made. (at p14)
12. The University adopted a number of measures with a view to preventing the
machines from being used to commit infringements.
Each year it issued library
guides and it was found by the learned trial judge that most, if not all,
students commencing at the
University would receive a library guide for the
year of commencement and a lesser number of students would receive library
guides
later in their courses. It thus appears that it was unlikely that all
users of the library would have received any particular current
library guide,
and still less likely that all would have carefully read it. I find it
unnecessary to consider the contents of the
library guides issued in the years
before 1973. The library guide for 1973 was published in a loose-leaf form and
contained a bookmark
on one side of which there appears, under the heading
"Copyright", the following notice:
"Reader (sic) have a responsibility to obey the law under theThe notice did not mention that copying for the purpose of research or private study was only permissible if it amounted to a fair dealing with the work, although to have said that and no more would not have proved enlightening to most users of the library. In fact a copy of the Act was available in the photocopying room but to provide a copy of a statute whose meaning would be obscure to the layman would not be an effective way of conveying to the users of the library advice as to how they should act to obey the law of copyright. There was, however, a notice on each machine. To place a clearly worded and accurate notice on each machine in a position where it could not be overlooked would be one measure which might be expected to have some value in informing users of the library of the limits which the University imposed on the permission which it gave them to use the machines. However, the notices in fact placed on the machines were ill adapted to that purpose. They merely set out the provisions of s. 49 of the Act. Those provisions, as I have said, apply only where a copy is made by or on behalf of a librarian: they have no application where a person using the library makes a copy for himself. The notices placed on the machines were irrelevant to the position of those persons to whose attention they were intended to be directed. A further step taken by the University was to appoint attendants whose duties included the supervision of the use of the machines. The University librarian was asked to tell the Court what instructions he had given to these attendants, and he replied that he had circulated the relevant provisions of the Act to all members of the staff. He continued: "I had asked those people to supervise the machines, to within their competence, in which it was with the Act, see that it was observed. In particular I asked them to watch out for people who were using the machine for an excessive time or who appeared to be copying old books." No attendant was called to give evidence as to the manner in which these duties were carried out. However, Miss Stockman, a student who had been at the University for about three years, gave evidence of her own experience in making photocopies; the only functions which she had ever observed performed by an attendant related to the maintenance of the machines. The learned trial judge found that the photocopying machines "were unsupervised in any practical and useful sense, with the knowledge of the University librarian". This finding seems to have been based in part on the fact that over a period of about four and a half years no supervisor had ever reported having observed any breach of copyright. The fact that no breaches were reported did not mean that the supervision was inadequate unless breaches had in fact been committed, and except in the case of Mr. Brennan this was not proved. However, on the evidence to which I have referred it is not possible to hold that the supervision was of an effective kind. (at p16)
Copyright Act 1968.
A copy of the Act is available in the Photocopying Room and
there is an extract of relevant sections on each machine.
Photocopying may be done for the purpose of research or for
private study and when a copy of the item to be copied has not
previously been supplied to the person making the photocopy."
13. There appeared on each machine, in addition to the notice already
mentioned, a further notice in the following terms:
"Use of Photocopying Machines
Occasionally users monopolise photocopying machines. OnceThe learned trial judge said that "the necessity for such a notice gives a clear indication that the University was fully aware that there were persons interested in copying large quantities of material". That statement is true but it does not follow that a person making ten copies is acting in breach of copyright. It is hardly necessary to say that a person who uses a machine to make ten copies does not necessarily make ten copies of the one publication; he may be making single copies of ten different publications. Further, it is s. 49, not s. 40, that expressly limits the number of copies that may be made if an infringement is to be avoided; more than one copy might be made without committing an infringement if, in all the circumstances, it was a fair dealing for the purpose of research or private study to make more than one copy. Nothing directly turns upon this aspect of the matter in the present case but I have thought it necessary to mention it because of the continuing confusion that appears to have existed between the provisions of s. 40 and those of s. 49. (at p17)
10 copies have been made the next person in the line should be
given access to the machine and the mass copier must join the
end of the queue."
14. The various measures adopted by the University, even when considered
cumulatively, do not appear to me to have amounted to reasonable
or effective
precautions against an infringement of copyright by the use of the
photocopying machines. The library guide might not
have come to the attention
of all persons using the machines and in any case the statement in it that an
extract of the relevant
sections was on each machine was erroneous. I am not
satisfied that the attendants effectively supervised the use of the machines,
at least for the purpose of preventing infringements of copyright. However,
the fatal weakness in the case for the University is
the fact that no adequate
notice was placed on the machines for the purpose of informing users that the
machines were not to be used
in a manner that would constitute an infringement
of copyright. It is unnecessary to consider what the position would have been
in
the present case if the notices on the machines had been sufficient. The
fact is that the notices actually placed on the machines,
which set out s. 49,
were completely ineffective for the purpose for which they were apparently
intended. (at p17)
15. For these reasons I hold that the University did not adopt measures
reasonably sufficient for the purpose of preventing infringements
taking
place. It follows that in these circumstances when Mr. Brennan used the means
provided by the University to make an infringing
copy he was authorized by the
University to do what he did. Of course, the University did not intend that
anyone should use its facilities
for the purpose of obtaining evidence against
it, but what Mr. Brennan did was nevertheless within the general authority
given to
all persons entitled to use the library. (at p17)
16. In these circumstances I hold that the University authorized the act of
Mr. Brennan in making the copies in question which,
as I have held, were
infringing copies. A declaration to that effect can be made but the wider
declarations which the respondents
sought cannot be granted. There was no
evidence that there was any likelihood that infringements of the respondents'
copyright might
take place at the University library in the future. Mr.
Moorhouse's book was not prescribed as a textbook or reference book although
in 1974 it did appear in a reading list issued to students in Political
Science I. There was no evidence that it was in great demand
at the library;
it appears to have been borrowed on only three occasions between the date of
its acquisition in August 1972 and the
date of the trial in April 1974. It is
not a book of a kind which students would be likely to find it necessary to
copy for the purpose
of study. In fact it appears rather unlikely that anyone
would use the photocopying machines in the library to make an infringing
copy
of the book. There is no ground for making a declaration on the assumption
that the respondents' copyright might be infringed
in the future. I have
already indicated that a declaration should not be made on the hypothesis that
infringements have occurred
in the past. In these circumstances, although I
would allow the cross-appeal, the respondents' success is so limited that it
should
not carry costs. (at p18)
17. I would allow both the appeal and the cross-appeal. (at p18)
JACOBS J. The first-named respondent is the author of a book entitled "The
Americans, Baby". The book consists of a number of stories
which had been
previously published separately and are now collected and published in the
volume so entitled. There can be no doubt
and there is no real dispute that he
is the owner of the copyright in the work, although this was not admitted in
the pleadings.
The second-named respondent had a licence to publish the book.
(at p18)
2. By the statement of claim as finally amended the respondents claimed that
the appellant had infringed the copyright of the first-named
respondent by
reproducing or authorizing the reproduction of part of this book in a material
form without consent. Particulars were
given of the manner in which it was
claimed that the appellant had infringed or authorized the infringement of the
copyright. (at
p18)
3. Hutley J.A. found that one Paul Brennan on 28th September 1973 twice
photocopied one story, ten pages in length, from "The Americans,
Baby". He
used a machine in the library building of the appellant in the grounds of the
University. The machine was one of a number
of coin or token operated machines
provided by the appellant in a room close to the library. There is no finding
that Brennan used
a copy of the book from the appellant's library for the
purpose of making these photocopies but it appears to have been assumed that
this was so. His Honour found that "In relation to the prevention of the use
of the (photocopying) machines for breach of copyright
there were supervisors
but no supervision . . . they were unsupervised in any practical and useful
sense, with the knowledge of the
University librarian". He also found that
library guides, particularly those issued by the appellant for the years 1970,
1971 and
1972, "were not calculated to draw attention of students to the fact
that the use of photocopying machines might involve them in
breaches of the
law of copyright", and that the 1973 guide might "under certain circumstances
lead a student to commit a breach of
copyright". It was also found that the
notices attached to the machines, to which reference was made in the various
library guides,
were inadequate and misleading. The notices set out s. 49 of
the Act but, as his Honour rightly observed, that section is not concerned
with the use of self-service coin operated copying machines. The
notices made
no mention of ss. 14(1)(a), 36 and 40, the sections
immediately relevant in
the circumstances. (at p18)
4. A number of declarations were sought as well as an injunction restraining
further breach. The first declaration sought was that
the appellant had
infringed the respondents' copyright. Then declarations were sought in a more
or less general form unrelated to
the particular infringement which was
alleged in relation to Brennan. (at p19)
5. Hutley J.A. did not make a declaration in any of the terms sought in the
statement of claim. A declaration specifically finding
an authorizing by the
appellant of a breach of copyright by Brennan in respect of the particular
incident alledged in the statement
of claim and proved was refused upon the
ground that "There is no proof that Mr. Brennan was induced to do what he did
by a study
of the library guides, the careful consideration of the notices
attached to the machines, or was influenced by the atmosphere of
disregard for
authors' rights which the University has encouraged". (at p19)
6. Although his Honour concluded that there was no proof that the appellant
had authorized Brennan's breach of copyright he appears
to have formed the
conclusion that there must have been some other breaches of copyright of the
first respondent's work because a
declaration was made in the following
terms:
"Between the date when the book 'The Americans, Baby'lack
by Frank Moorhouse was entered in the defendant's library
and the hearing of this summons the defendant authorised such
breaches of copyright as occurred by the photocopying of the
whole or part of the library copy of the said book by the use of
the photocopying machines where such photocopying was not a
fair dealing within the terms of s. 40 of the Copyright Act 1968
and where such breaches were in any way due to reliance upon
any library guides issued by the defendant in the years 1970,
1971, 1972 and 1973 or the notices appearing upon the
self-service photocopying machines in the said library or by the
of supervision of the use of such machines or any combinationThe declaration was made in these terms as a result of the view formed by Hutley J.A. of the effect of the language used in the library guides and of the notices appearing on the self-service photocopying machines and of the evidence of a lack of a supervision of the use of the machines calculated to prevent or minimize the chance of the machines being used in a way which involved a breach of copyright in material copied. (at p19)
thereof."
7. The appellant appeals upon a number of grounds. Among them are the
following:
"5. That there was no evidence that any breaches ofDuring the hearing of this appeal leave was given to the first-named respondent to lodge a cross appeal out of time. By the cross appeal that respondent seeks to have reversed the finding of Hutley J.A. that the breach of copyright committed by Brennan was not authorized by the appellant. He seeks a declaration that it was so authorized and also seeks declarations in general terms describing the conditions from which it may be concluded that the appellant infringes or authorizes the infringement of the first-named respondent's copyright. It is convenient first to deal with the cross appeal. (at p20)
copyright by photocopying the whole or part of the library copy of
'The Americans, Baby' occurred between the date when the said
book was entered in the library of the appellant and the hearing
of this suit.
6. That there was no evidence that any breaches of copyright
by photocopying the whole or part of the library copy of 'The
Americans, Baby' occurred between the date when the said
book was entered in the library of the appellant and the hearing
of this suit other than by one Paul Brennan on the 28th day of
September 1973 being a breach of copyright which the learned
Judge found was not authorised by the appellant.
7. That there was no evidence that any breach of copyright
in relation to the whole or any part of the book 'The Americans,
Baby' during the period aforesaid was authorised by the
appellant."
8. There can be no doubt that Brennan infringed the copyright in the story
photocopied by him from "The Americans, Baby". He copied
the whole story and
in the circumstances this was a substantial portion of the work and he did not
do this copying by way of a fair
dealing for purposes of research or private
study. The question is whether in the circumstances of the case the appellant
in supplying
the book from its library and in providing a machine at the
library which would enable copies to be made authorized the infringement.
The
answer depends upon the meaning of the word "authorize" in s. 36(1) of the
Copyright Act 1968 and on a conclusion of fact once
the meaning of the word is
ascertained. Section 36(1) provides:
"Subject to this Act, the copyright in a literary, dramatic,
musical or artistic work is infringed by a person who, not being
the owner of the copyright, and without the licence of the owner
of the copyright, does in Australia, or authorizes the doing in
Australia of, any act comprised in the copyright." (at p20)
9. It is established that the word is not limited to the authorizing of an
agent by a principal. Where there is such an authority
the act of the agent is
the act of the principal and thus the principal himself may be said to do the
act comprised in the copyright.
But authorization is wider than authority. It
has, in relation to a similar use in previous copyright legislation, been
given the
meaning, taken from the Oxford Dictionary, of "sanction, approve,
countenance". See Falcon v. Famous Players Film Co. (1926) 2 KB
474 which was
approved in Adelaide Corporation v. Australasian Performing Right Association
Ltd. [1928] HCA 10; (1928) 40 CLR 481
. I have no doubt
that the word is used in the same
sense in s. 36 (1). It is a wide meaning which in cases of permission or
invitation
is apt to apply
both where an express permission or invitation
is
extended to do the act comprised in the copyright and where such
a permission
or
invitation may be implied. Where a general permission
or invitation may be
implied it is clearly unnecessary that
the authorizing
party have knowledge
that a particular act comprised
in the copyright will be done. (at p21)
10. The acts and omissions of the alleged authorizing party must be looked at
in the circumstances in which the act comprised in
the copyright is done. The
circumstances will include the likelihood that such an act will be done. ". .
. (t)he Court may infer
an authorization or permission from acts which fall
short of being direct and positive; . . . indifference, exhibited by acts of
commission or omission, may reach a degree from which authorization or
permission may be inferred. It is a question of fact in each
case what is the
true inference to be drawn from the conduct of the person who is said to have
authorized . . . " (per Bankes L.J.
in Performing Right Society Ltd. v. Ciryl
Theatrical Syndicate Ltd. (1924) 1 KB 1, at p 9 ). (at p21)
11. The question then is whether in the circumstances of this case the
appellant authorized Brennan's doing of the act comprised
in the first
respondent's copyright. There was no express permission given to him but the
real question is whether there was in the
circumstances an invitation to be
implied that he, in common with other users of the library, might make such
use of the photocopying
facilities as he thought fit. The question may be
examined by assuming first a library open to all persons either freely or on
payment
of a fee. Assume that the owner places copying machines in the library
which can be operated on payment of a fee whereby a profit
accrues to the
owner of the library. Is this not an invitation to any user to make such use
of the machines as he sees fit and therefore
an invitation which extends to
the doing of acts comprised in the copyright of authors whose books are on the
library shelves? And
is not such an invitation an authorizing of acts done in
response to the invitation? I would certainly answer "Yes". The invitation
to
use is one the face of it an unlimited invitation. Authorization is given to
use the copying machine to copy library books. It
can hardly be said that the
authorization is limited to the copying only of those books or parts of books
which in the particular
circumstances may be copied without infringement of
copyright. In such a case knowledge of the prior doing of acts comprised in
the
copyright would not need to be proved nor would other positive or
particular acts of invitation or authorization need to be shown.
(at p21)
12. How then, in the case of the Brennan infringement, are the facts
relevantly different from those which I have taken in the example?
First, the
appellant's library was not a library open to all comers. It was a University
library. But there can be no assumption
that thereby its only use was for
purposes of research and private study. Surely, common knowledge of what a
University is and ought
to be enables one to conclude that members of the
University will read for their private recreation and edification as well as
for
the purposes of their research and private study. Let us hope so, anyway.
And if they do so, surely it is an open inference that
they will use their
University library and its facilities. I can see no relevant difference in
this respect from the case of a library
open to the public generally though
the quantity of research and private study may be greater in the case of a
University library
than in the case of a public library. (at p22)
13. Secondly, the fees payable for the use of the copying machines did not,
or were not intended to, bring a profit to the appellant.
But I do not think
that this difference is critical. A purpose of profit is unrelated to any
invitation implied from the presence
of the machines and the supply of books
and printed matter suitable for copying on the machines. Therefore I can see
no relevant
difference arising from the circumstances that this was a
University library and in my opinion the unqualified supply of the books
and
the machines amounted to an invitation to users of the library to make such
use of the machines by photocopying of the books
or substantial portions
thereof as they saw fit. (at p22)
14. In the circumstances it was of little importance whether or not the
University authorities knew in fact that users of the machines
were doing acts
comprised in the authors' copyrights. This knowledge or lack of it would not
change the terms of the invitation extended
by the supply of books and
machines. Knowledge could become important if the invitation were qualified in
such a way as to make it
clear that the invitation did not extend to the doing
of acts comprised in copyright and if nevertheless it were known that the
qualification
to the invitation was being ignored and yet the University
allowed that state of things to continue. Then it might be found as a
fact
that the University authorized the continued state of things, the continued
use of its machines to do acts comprised in authors'
copyrights, and thus to
infringe those copyrights. But in this case the University did not qualify its
invitation to users of the
library to use its machines. It posted notices
setting out s. 49 of the Copyright Act but this section related to copies made
by
or on behalf of the librarian, not to copies made by users on their own
behalf. It published
library guides of which those for the
years 1971, 1972
and 1973 warned students that they had a responsibility to obey the law under
the Copyright Act 1968 and stated
that a copy of the Act was available in the
photocopying room, but this could not be regarded as a limitation on the
invitation apparently
extended. The
guides also stated that there was an
extract from relevant sections on each machine but, as I have stated, this was
in fact not so.It
is clear to me that this failure was due to inadvertence and
confusion on the part of the University authorities
but on the facts
of the
present case it is an important factor. It might be said that the University
was entitled to assume that
users would obey
the law, including the law of
copyright, but such an assumption on its part would not qualify the invitation
which
it extended. (at
p23)
15. Brennan, then, was a user of the library on the occasion in question. He
apparently had sufficient right to be there to make
him at least a licensee of
the library's facilities. He was a graduate of the University and the library
was not exclusively an undergraduate
or student library. He went there and
used the library book or books and the library copying machine in terms of the
invitation apparently
extended to him. In my opinion the appropriate finding
in these circumstances is that the University authorized his acts. It was
not
necessary, as the learned trial judge thought, to find that he had studied the
library guides or the notices attached to the
machines or had been influenced
by a lack of any supervision intended to prevent or deter breaches of
copyright. I find no special
relevance, in respect of Brennan's breach and of
the question whether the appellant authorized it, in the contents of the
library
guides. The particular form of notice on the machines is a negative
factor in that it did not in any relevant way limit the invitation
which was
implicitly extended to make use of the machines for photocopying as the user
thought fit. The lack of supervision is also
a negative factor in that there
was no limit expressed by such a supervisor on the use of the machines to
which the invitation extended.
Brennan by his conduct accepted the invitation
which had no relevant qualification to use the book "The Americans, Baby" and
the
copying machine. The unqualified nature of the invitation sufficiently
caused him to do the acts which he did and which were comprised
in the
copyright of the respondent. It cannot be assumed that if the invitation had
been qualified he would have made an unauthorized
use of the machine. I am
therefore of the opinion that the cross appeal should be allowed and that a
declaration should be made that
the appellant authorized the doing by Brennan
of the act of reproducing the literary work "The Americans, Baby" in a
material form
and thereby infringed the respondents' copyright in the said
work. I do not think that any declaration in a more general form can
be made.
Proof of an authorizing of a breach of copyright in certain circumstances does
not entitle a plaintiff to a declaration
that in other circumstances an
authorizing of breach had occurred or would occur in the future. This case was
frequently described
by counsel for the first-named respondent as a test case
but it could only be so described in relation to the circumstances proved
in
evidence. If it was intended to be in some way a test case then it is
unfortunate that the occasion of testing was one where this
University had
inadvertently failed to qualify in any material way the invitation which it
extended to make use of the photocopying
machines to copy material in the
University library. (at p24)
16. I turn now to the appeal. I find the declaration made in the Supreme
Court of New South Wales insupportable. It was not founded
on particular
breaches of copyright proved to have occurred. It assumed for the purposes of
the declaration that acts in breach of
the respondents' copyright had occurred
(other than the infringement by Brennan to which the terms of the declaration
were inapplicable).
It was then declared that by certain acts and omissions
the appellant authorized such breaches of copyright as had occurred. But
once
the meaning of the word "authorized" in s. 36 of the Copyright Act is
ascertained the question whether by certain acts or omissions
a breach of
copyright is authorized is a question of fact to be
determined in all the
circumstances of the case. A declaration of
right based on facts found in the
particular case can certainly
be made but it is not permissible to make a
declaration of right
which amounts to a conclusion of fact from a hypothetical
or assumed
state of facts and thereby to enunciate or declare a rule of
apparently general application as thought it were a declaration of applicable
law. A declaration of right based on hypothetical or
assumed facts may be made
when the assumed facts can be certainly and exhaustively
stated and when the
conclusion flowing therefrom
is truly a conclusion of law but not when it is
itself a conclusion of fact. In
the declaration made in the present case the
Court
has attempted an apparently exhaustive enunciation of the factual
circumstances
from which an authorizing of breach of copyright
should be held
to have occurred but this is an attempt to generalize on a factual
situation
the circumstances of which have not been
proved. This cannot be done. I would
therefore allow the appeal with costs and
set aside the declaration. I would
allow the cross
appeal and make a declaration in the terms which I have stated
above. I would
make no order on the costs of the cross appeal as it
was only
lodged towards the conclusion of the hearing of the appeal. (at p24)
17. In view of the course which the matter has taken there should be no order
for costs in the proceedings in the Supreme Court.
(at p25)
ORDER
Appeal allowed with costs.Cross appeal allowed with no order for costs.
Judgment of the Supreme Court of New South Wales (Hutley J.A.) set aside, and in lieu thereof declare that the appellant authorized the doing on 28th September 1973 by Paul Brennan of the act of reproducing the literary work "The Americans, Baby" in a material form and thereby infringed the respondents' copyright in the said work.
No order as to the costs of the trial.