Optus loses “TV Now” copyright appeal down under

Earlier today, the Full Court of Australia released its decision in the National Rugby League Investments Pty Limited v Singtel Optus Pty Ltd [2012] FCAFC 59 (27 April 2012) case. In a note made available along with the reasons of the court for reversing the decision of the primary judge, the court summarized its decision as follows:

The Optus group of companies is a leading provider of communications services throughout Australia. Two of its members, Singtel Optus Pty Ltd and Optus Mobile Pty Ltd (which we refer to collectively as “Optus”), devised a new subscription service – “TV Now” – which it offered, in the mainland State capitals, to private and to the employees (subject to conditions) of small to medium business customers from mid-2011. That service enabled a subscriber to have free to air television programmes recorded as and when broadcast and then played back at the time (or times) of the subscriber’s choosing on the subscriber’s compatible Optus mobile device or personal computer. The system which permits such “time-shifting” of programme viewing requires the copying and storing of each television broadcast recorded for a subscriber, hence the allegations of copyright infringement in this matter. The decision to be made is with respect to this subscription service. The Australian Football League conducts a national Australian Rules competition. The National Rugby League partnership conducts a national Rugby League competition. Those entities have granted to Telstra an exclusive licence to communicate to the public, by means of the internet and mobile telephony enabled devices, free to air television broadcasts of football matches conducted by them.

It has been agreed for the purposes of these proceedings that the Australian Football League, the National Rugby League partnership (which consists of the first and second appellants in one of the two appeals) and Telstra have copyright interests in the free-to-air broadcasts of live and filmed AFL and NRL football games played on four specified days in September 2011 which were recorded for Optus subscribers using the TV Now system.

The two primary issues raised in the appeals can be stated shortly. The first is: When a cinematograph film (or copy) and a sound recording (or copy) were made when a television broadcast of one of the AFL or NRL matches was recorded for a subscriber, who, for the purposes of the Copyright Act 1968 (Cth) was the maker of that film, sound recording or copy? Was it Optus or the subscriber (or both of them jointly)? The primary judge’s answer to this was that the maker was the subscriber.

Ours is a different conclusion. The maker was Optus or, in the alternative, it was Optus and the subscriber. It is unnecessary for present purposes to express a definitive view as between the two. Optus could be said to be the maker in that the service it offered to, and did, supply a subscriber was to make and to make available to that person a recording of the football match he or she selected. Alternatively Optus and the subscriber could be said to be the maker for Copyright Act purposes as they acted in concert for the purpose of making a recording of the particular broadcast which the subscriber required to be made and of which he or she initiated the automated process by which copies were produced. In other words, they were jointly and severally responsible for the act of copying. That is our preferred view.

The second question is: If Optus’ act in making such a film would otherwise constitute an infringement of the copyright of AFL, NRL or Telstra, can Optus invoke what we would inaccurately, but conveniently, call the “private and domestic use” defence of s 111 of the Act? The primary judge did not have to consider this, given his answer to the first question.

Our answer is that Optus cannot either as maker alone or as a maker with a subscriber bring itself within the scope of the s 111 exception on its proper construction.

Our conclusions on these two matters are sufficient to resolve these appeals. They must be allowed.

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