Footy Wars Con­tin­ue: Optus’ win reversed by Full Fed­er­al Court

Footy Wars Con­tin­ue: Optus’ win reversed by Full Fed­er­al Court

In our pre­vi­ous arti­cle, Optus Wins Most Recent Footy Wars”, we looked at the Fed­er­al Court’s deci­sion per­mit­ting Optus to offer its users near-live” broad­casts of sport­ing events, with­out hav­ing to pay licence fees to the rights hold­ers, under the time-shift­ing” excep­tion under the Copy­right Act.

On 27 April 2012, the Full Fed­er­al Court of Aus­tralia over­turned this deci­sion, find­ing that the time-shift­ing excep­tion under the Copy­right Act did not extend to con­tent providers such as Optus.

Here, we take a look at the key ques­tions on appeal and impli­ca­tions for con­tent providers.

Key issues on appeal

There were two pri­ma­ry issues on appeal:

  1. When the copy was made of the AFL or NRL match­es, who (for the pur­pos­es of the Copy­right Act) was the mak­er of the record­ing? Was it Optus, the sub­scriber, or both jointly?
  2. If in copy­ing the match­es Optus infringed the Copy­right Act, then was Optus able to claim the time-shift­ing defence avail­able under s 111?

Who made the copy of the matches?

Optus argued that it was not the mak­er of the copy because of the nature of the tech­nol­o­gy. The ser­vice was sim­i­lar to a pho­to­copi­er or VCR/DVR, which was auto­mat­ed and using pro­grammes which the sub­scriber iden­ti­fied to be copied and ini­ti­at­ed the copying.

The Court reject­ed this, say­ing it did not nec­es­sar­i­ly fol­low that the sub­scriber alone made the copy by click­ing a but­ton that ini­ti­at­ed the copy­ing and just because the ser­vice was auto­mat­ed, did not pro­tect Optus from infring­ing the Act. Rather, Optus was the main per­former” of the act of copying”.

The Court found that Optus was not mere­ly mak­ing avail­able its TV Now Ser­vice to anoth­er who uses it to copy a broad­cast. Rather, Optus cap­tured, copied, stored and made avail­able for reward, pro­grammes for lat­er view­ing by another.

The Court went on to say that Optus’ rela­tion­ship with its sub­scribers was not one of agency. And even if Optus was an agent, it would still be mak­ing a copy in breach of the Copy­right Act and be joint­ly and sev­er­al­ly liable with the sub­scriber for mak­ing the copies.

It was arguable as to whether the sub­scribers were also liable under the Act in this case and whether they may claim the defence under s 111, how­ev­er, as no sub­scriber was joined to the action, this issue did not need to be decided.

Could Optus claim a defence under s 111?

Sec­tion 111 of the Copy­right Act pro­vides a defence to copy­right infringe­ment where the copy is sole­ly for pri­vate and domes­tic use. The Full Fed­er­al Court ulti­mate­ly found that there was noth­ing in the lan­guage of s 111 to sug­gest that the pro­vi­sion was intend­ed to cov­er com­mer­cial copy­ing on behalf of indi­vid­u­als, notwith­stand­ing sug­ges­tions of bring­ing the pro­vi­sion into line with tech­nol­o­gy neu­tral rights.

Tech­no­log­i­cal neu­tral leg­is­la­tion is a hot top­ic this month with the release of the Con­ver­gence Review Report and this case is no excep­tion. Whilst the Court not­ed that s 111 did not nec­es­sar­i­ly exclude lat­er tech­no­log­i­cal devel­op­ments in copy­ing, it found that no prin­ci­ple of tech­no­log­i­cal neu­tral­i­ty could over­come what they saw was the clear and lim­it­ed leg­isla­tive pur­pose of s 111 – that the defence was rel­e­vant only to pri­vate and domes­tic use and not for com­mer­cial purposes.

The mar­ket impact that the time shift­ing pro­vi­sions had when intro­duced into the Copy­right Act was neg­li­gi­ble at the time giv­en the then cur­rent prac­tices of users copy­ing a pro­gramme for their own use. The same could not be said in this case and with cur­rent tech­nolo­gies.

Going for­ward

It will be inter­est­ing to see whether the leg­is­la­ture accepts the Court’s invi­ta­tion to com­ment on or amend the pro­vi­sion in light of this issue.

In the mean­time, Optus has sought leave to appeal this deci­sion to the High Court and has sus­pend­ed its TV Now Service.

The Full Fed­er­al Court recog­nised that its deci­sion turned on the par­tic­u­lar facts and cir­cum­stances of this case, and the par­tic­u­lar tech­nol­o­gy of the Optus TV Now Ser­vice, and acknowl­edged that dif­fer­ent rela­tion­ships and tech­nolo­gies may yield dif­fer­ent con­clu­sions as to the who makes the copy” issue that it addressed.

So the law can­not be con­sid­ered as set­tled in this area. The case does give some guid­ance to the indus­try on what is and is not like­ly to be deemed to be copy­right infringe­ment in Aus­tralia, but ulti­mate­ly this will doubt­less be some­thing for the leg­is­la­ture to con­sid­er going forward.

For fur­ther infor­ma­tion, please con­tact us.