So at the end of my last post I suggested that, if the Government introduced new free use provisions, based on the UK legislative model, to deal with the decision of the High Court in CAL v NSW, then there may be some constitutional problems in doing so. I mentioned two provisions - section 51(xviii), the constitutional copyright power; and section 51(xxxi), the power with respect to acquisition of property on just terms.

Any arguments with respect to section 51(xviii) can arguably be easily dealt with. What's interesting about this power is that, for a long time, it was believed that the Parliament could actually do very little with respect to copyrights because of the narrow interpretation given in the decision of Attorney-General (NSW) ex rel Tooth & Co Ltd v Brewery Employees' Union of NSW [1908] HCA 94; (1908) 6 CLR 469. In that case it was found that the union label trade mark wasn't valid because such marks were not around in 1900, when the Constitution was framed. On that basis, for about eighty-five years it was believed that section 51(xviii) gave the Parliament very narrow power with respect to making IP laws. However, the 1994 decision Nintendo Co Ltd v Centronics Systems Pty Ltd [1994] HCA 27; (1994) 181 CLR 134 and then the subsequent 2000 decision Grain Pool of Western Australia v Commonwealth [2000] HCA 14; 202 CLR 479 - revealed that the HCA believed that section 51(xviii) was quite a wide power, leading to broader concerns that there might not actually be any limits on section 51(xviii).

As such, given this broad interpretation, it would be unlikely that such free use exceptions would fall foul of section 51(xviii), unless some sort of constitutional argument could be raised that the term "copyrights" as it appears in the Constitution requires that remuneration be given to the copyright owner. That, however, would probably cause all types of chaos, and is therefore unlikely. It would be interesting to run though...however, in light of the CAL v NSW decision, I am in no hurry to get another copyright case before the HCA.

It is the second provision, however, that may cause constitutional difficulties for these types of exception. Section 51(xxxi) has occasionally popped up in IP decisions over the last fifteen years (see Australian Tape Manufacturers Association Ltd v Commonwealth [1993] HCA 10; (1993) 176 CLR 480 and Stevens v Kabushiki Kaisha Sony Computer Entertainment [2005] HCA 58; (2005) 221 ALR 448). This constitutional section was actually mentioned at several points in the joint judgment of CAL v NSW:

At [57]: In any event, with an echo of s 51(xxxi) of the Constitution, the Spicer Committee made its recommendation for government use of copyright material in the following terms:[51]
"The Solicitor-General of the Commonwealth has expressed the view that the
Commonwealth and the States should be empowered to use copyright material for
any purposes of the Crown, subject to the payment of just terms to be fixed, in
the absence of agreement, by the Court. A majority of us agree with that view.
The occasions on which the Crown may need to use copyright material are varied
and many. Most of us think that it is not possible to list those matters which
might be said to be more vital to the public interest than others. At the same
time, the rights of the author should be protected by provisions for the payment
of just compensation to be fixed in the last resort by the Court." (emphasis
added).

And then again at paras [68] - [69]:
The purpose of the scheme is to enable governments to use material subject to copyright "for the services of the Crown" without infringement. Certain exclusive rights of the owner of "copyright material" are qualified by Parliament in order to achieve that purpose. It is the statutory qualification of exclusive rights which gives rise to a statutory quid pro quo, namely a statutory right in the copyright owner (here a surveyor) to seek "terms" upon which the State (excepted from infringement by the legislature) may do any act within the copyright (s 183(5)) and to receive equitable remuneration for any "government copies" (s 183A). With reference to the use by the Spicer Committee of the constitutional expression "just terms", it may be added that CAL conducted its case in this Court on the footing that the statutory scheme afforded "just terms" to copyright owners.

Given that CAL proceeded on the basis that the Crown use of copyright statutory licence scheme was "just terms" under section 51(xxxi), then it is arguable that removing this financial aspect may put such a provision in breach of section 51(xxxi). This may particularly be the case if the government continued to charge for the use of the survey plans. Certainly, as the law currently stands, it is available to the Government to use the fair dealing and other exceptions provided in the 1968 Act (in fact, as noted in the CAL v NSW joint judgment, if these provisions apply, then the statutory licence scheme doesn't - see paragraph [11].) However, would the inclusion of provisions that give the government a free pass to use copyright-protected works created by others, for fulfilment of their statutory obligations and what reasonably flows from those obligations, be valid under section 51(xxxi)?

In conclusion, although I have dedicated a whole chapter in my doctoral thesis to determining the boundaries of the copyright power of the Constitution and the concurrent effect on the Australian public domain, I will admit that future intellectual property cases are less likely to be concerned with section 51(18) and more to do with section 51(31). And, to end on a lighter note, that makes The Castle required viewing for anyone involved in intellectual property!

Labels: cases, catherine, copyright, Crown copyright, High Court of Australia, licensing

(permalink) posted by Catherine Bond @ Thursday, August 07, 2008