#7329 - Authorisation Of Infringement Indirect Infringement ‘Paracopyright’ - Intellectual Property 1 (Copyright)

University of New South Wales v Moorhouse (1975) 133 CLR 1

Gibbs CJ summarized some key principles in the law of authorization:

• ‘authorize’ has in similar judicial contexts been held to have its dictionary meaning of ‘sanction, approve, countenance’. It can also mean, and has been treated as synonymous with, ‘permit’.

• A person cannot be said to authorize an infringement of copyright unless he has some power to prevent it (AC v APRA)

  • Express or formal permission or sanction, or active conduct indicating approval isn't essential to constitute authorisation

  • Inactivity or indifference through acts of (/c)omission may reach a degree from which an authorization may be inferred (AC v APRA)

  • But the word authorize connotes a mental element and it can’t 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

    • Indifference or omission is permission where the party charged, inter alia, ‘knows or has reason to anticipate or suspect that the particular act of infringement ‘will or may be done (Knox CJ, dissent, AC v APRA) but this may be too widely expressed

Gibbs CJ expressed a refine version of the principle:

• “It seems to me…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”

  • The person needn’t have knowledge or reason to suspect that a particular act of infringement is likely to be done – it is sufficient if there is knowledge or reason to suspect that any one of a number of particular acts is likely to be done

Australasian Performing Right Association Ltd v Metro on George Pty Ltd [2004] FCA 1123

Facts: Metro on George (MOG) held regular live performances of music. APRA granted license wrt the whole of its repertoire on a ‘blanket’ basis and had a licenses also for different circumstances. MOG had a venue license for a number of years but in 2002 elected not to renew it and instead rely on contractual clauses shifting the responsibility for copyright licensing to the venue hirer.

Bennett J summarized the position of the respondent:

• Metro doesn’t arrange/provide performances but just hires it out to TPs to promote/arrange their own live artists or dance parties. If the theatre isn't hired out it doesn’t open for business

• Metro doesn’t exercise any judgment in who it hires out its venue to and has no control over the performances

• Metro doesn’t authorize/permit the performance of any copyright material at MOG

Approval, sanctioning or countenancing

The Metro Contract states that they don’t authorize/permit any particular performance, containing copyright material or otherwise, and that the hirer warrants they will ensure all performances comply with the Act. They argued that this brought them within s 36(1A)(c) being reasonable steps to prevent/avoid the doing of the act, being the act comprised in the copyright.

• The inclusion of the warranty was a reasonable step to take, which if implemented by the hirer would have prevented an unlicensed performance

  • BUT s 36(1A)(c) doesn’t address steps to prevent/avoid infringement generally – it addresses steps to prevent or avoid the doing of the act itself, that is, the act comprised in the copyright in a work.

  • Metro didn’t take steps to avoid the performance

• Also, The inclusion of the warranty in the contract wasn’t, in most cases, implemented and didn’t result in the hirer obtaining an APRA license.

  • APRA informed Metro that unlicensed performances took place and there was no evidence that they took any action.

    • They didn’t inquire whether licenses were obtained or ensure that they had. They took the view that they didn’t have to do anything further

    • The warrant amounted to more than a warning since it notified the hirers of their obligations but it was insufficient to exonerate them

Her honour rejected a submission that knowledge/suspicion of particular acts of infringement were required as being contrary to Moorhouse. After being sent a letter by APRA, in this case, they would have at least had a reason to suspect that works in APRA’s repertoire would be performed, even if there was no knowledge of a particular work.

It was also submitted that it would be an extension of principle to find them liable in the absence of identifying particular acts for which they were liable for.

• But in Jain it was held that a studied/deliberate course of action ignoring APRA’s rights and allowing a situation to develop/continue in which the alleged infringer must have known it was likely that APRA’s music would be played without any license, where it was within power to control what was occurring, was enough to amount to authorization of infringement

• Here Metro didn’t establish it wasn’t aware or had no RG for suspecting that performances would be an infringement of copyright – letters from APRA’s solicitors made clear that APRA’s contention was that unlicensed performances were taking place at MOG and that they constituted infringement of copyright

  • At least from this time Metro was on notice that, despite the clause in the contract, hirers weren’t taking APRA licenses and the clause was being ignored

  • And prior to this letter Metro was either aware of, or was indifferent to, the occurrence of unlicensed performances at MOG

    • The failure to make inquiries of the hirer in the face of APRA’s assertions can be described as a wilful disregard of whether the performance of works which it knew or ought reasonable to have known would include works within APRA’s copyright were performed with APRA’s authorisation or not”

    • And “a deliberate choice not to inquire in such circumstances, may enable a further finding, since it may suggest a mind in which real suspicion resided” and a failure to put such a question operates to that persons peril (Golden Editions v Polygram)