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EDWARD BAILLIEU AND PETER POGGIOLI for and on behalf of the Liberal Party of Australia (Victorian Division) v. AUSTRALIAN ELECTORAL COMMISSION AND COMMONWEALTH OF AUSTRALIA No. VG 970 of 1995 FED No. 8/96 Elections - Copyright - Estoppel
COURT
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA
DISTRICT REGISTRY
GENERAL DIVISION
SUNDBERG J
HRNG
MELBOURNE, 8-9 January 1996
#DATE 22:1:1996
#ADD 3:5:1996
Counsel for the Applicants and
Cross Respondent: A C Chernov QC and D J Williams
Solicitors for the Applicants and
Cross Respondent: Deacons Graham and James
Counsel for the Respondents and
Cross Applicant: S Crennan QC and C Golvan
Solicitor for the Respondents and
Cross Applicant: Australian Government Solicitor
ORDER
The Court declares that the Respondents are and each of them is estopped
from asserting that the Applicants have infringed the copyright subsisting in
the second Respondent in the form of application for a postal vote approved by
the First Respondent pursuant to s.184 of the Commonwealth Electoral Act 1918
by publication in the Commonwealth of Australia Gazette No. GN 23 dated 14
June 1995 and in the brochure entitled "Postal Vote Application" being exhibit
"DRM2" to the affidavit of David Roy Muffet sworn 21 December 1995.
The Court orders that:
1. The Cross-Application be dismissed.
2. The Respondents pay the Applicants' costs of the proceeding.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal
Court Rules.
JUDGE1
The proceedings
SUNDBERG J On 21 December 1995 the Commonwealth of Australia filed an
Application seeking a declaration that Dr. Poggioli, the State Director of the
Liberal Party of Australia (Victorian Division), had infringed its copyright
in a form known as "Application For a Postal Vote", and injunctions
restraining him for reproducing the form or a substantial part thereof without
the Commonwealth's permission and from reproducing the form with any
amendment.
2. On the same day Dr. Poggioli and Mr. Edward Baillieu on behalf of the
Victorian Division of the Party filed an Application to which the Commonwealth
and the Australian Electoral Commission ("the Commission") were respondents,
seeking a declaration that copyright does not exist in the Commonwealth or the
Commission in respect of "the form of application for a postal vote approved
by the Commission pursuant to sections 184(1) and 4(1) of the Commonwealth
Electoral Act 1918 (Cth) published in the Commonwealth of Australia Gazette
No. GN23 dated 14 June 1995" or in "the brochure entitled 'Postal Vote
Application'" published by the Commission in June 1995. Alternatively they
seek a declaration that they have not infringed any copyright that might exist
in the form or the brochure. In the further alternative they seek a
declaration that the Commonwealth and the Commission are estopped from
asserting any infringement.
3. On 22 December 1995 Ryan J ordered that the two proceedings be
consolidated and the Commonwealth's proceeding be treated as a
cross-application in the other proceeding.
Postal voting
4. Part XV of the Commonwealth Electoral Act ("the Act") - "Postal Voting" -
consists of ss.182 to 200. Section 183 provides that an elector may apply for
a postal vote on any of the grounds set out in Schedule 2. The grounds
include absence from the elector's State of residence, illness and
imprisonment. Section 184(1) requires an application to be in writing in the
approved form, to contain a declaration that the applicant is an elector
entitled to apply for a postal vote, and to be signed by the applicant in the
presence of an authorised witness. An "approved" form is one approved by the
Commission by notice published in the Gazette: s.4(1). An "authorised
witness" is an elector whose name appears on an Electoral Roll: s.193(1). An
application is to be made to a Divisional Returning Officer: s.184(2). It
must reach the officer to whom it is directed by 6 p.m. on the day before
polling day: sub-s.(5).
5. Section 187 deals with the duties of a witness to an application. A
person must not witness the signature of an applicant unless the person is
satisfied of the identity of the applicant, has seen the elector sign the
application, and either knows the statements in the application are true or is
satisfied they are true: sub-s.(1).
6. A Divisional Returning Officer who receives an application that is
properly signed and witnessed must post to the applicant a postal ballot paper
and a postal vote certificate printed on an envelope addressed to the
Divisional Returning Officer for the applicant's Division: s.188.
7. Section 197 requires a person to whom an elector entrusts an application
or an envelope apparently containing a postal ballot paper for posting or
delivery to an officer to post or deliver it as soon as practicable.
The approved form
8. By notice published in the Gazette of 14 June 1995 the Commission approved
a form headed "Application for a Postal Vote". Immediately beneath the
heading are the words "Important - applicant and witness should read the
information adjacent". There is in fact no adjacent information. The body of
the form is in three segments. The first makes provision for information the
elector is required to provide (name, enrolment address, phone number and
signature), and contains a declaration that the elector is entitled to apply
for a postal vote. The second segment is to be completed by the witness
(signature, name and address). The third is for official use, and provides
for the insertion of information identifying the Division issuing the ballot
paper, the certificate number, the date of issue, the elector's Division and
the date the certificate was received in the Division for which the vote was
claimed. At the foot of the form appear the words "Copyright Commonwealth of
Australia 1995". The 1995 form superseded an earlier form approved in 1989
which differed from the 1995 form in that the elector's segment was arranged
in a different fashion, and it did not contain provision for insertion of a
postal address where that address differed from the enrolment address. I will
call the form gazetted in 1995 "the gazetted form" and that gazetted in 1989
"the 1989 gazetted form".
The Commission's brochures
9. In 1989 the Commission prepared a brochure called "Application for a
Postal Vote" for the use of electors who were qualified to vote by post. It
consists of a single sheet of paper. On the right hand side of what I will
call the front of the sheet appear the words "Application for a Postal Vote"
in large capital letters. Beneath them is a representation of a letter box
and a letter addressed to the Commission. The reverse side is divided into
three parts. The right hand part is a reproduction of the 1989 gazetted form.
There is an instruction that this is to be completed and detached. The other
two parts contain the adjacent information to which the form refers. This
consists of "Information for an Applicant", which, amongst other things,
paraphrases s.183 and Schedule 2 (qualifications for an application) and parts
of s.184, and "Information for a Witness", which, amongst other things,
paraphrases ss.193 and 187. Much of the information under these headings is
presented in point form, with each point preceded by a heavy black dot. The
document has been processed so it can easily be folded twice, with the result
that the words "Application for a Postal Vote" and the graphic are the first
things a reader sees, and the brochure unfolds so as to disclose the form and
the adjacent information. I will call the 1989 brochure "the Commissions 1989
brochure".
10. The Commission produced a replacement brochure in 1995. The structure is
the same as that of the 1989 brochure, though the graphic on the front is more
complex and eye-catching. The form on the reverse side is the gazetted form.
The information for applicant and witness is the same as in the earlier
brochure. I will call the 1995 brochure "the Commission's brochure".
1993 election
11. For some years the Liberal Party has prepared its own brochures
containing an application form and adjacent information for the guidance of
electors and witnesses. It has made them available to electors who are
invited to complete and sign the forms and return them to the Party for
transmission to the Commission. The brochure used in the 1993 general
election consists of a single sheet which folds up in the same fashion as the
Commission's brochure. The front of the page is in three segments. The left
hand segment contains the words in large capital letters "Your vote is
important in the electorate of ...". Underneath that are representations of
four electors gathered around a post box, each elector holding an envelope
which is about to be inserted in the box. The electors are all smiling and
apparently excited at the prospect of posting their letters. Obviously none
of them is in prison, they do not look ill, and so they must be holidaying out
of their electorates and unable for that reason to vote in the customary
manner. The post box is also excited at the prospect of receiving the
letters, because it is smiling, its eyes are twinkling, its eyebrows arched,
and it is swaying on its pedestal. When turned sidewards the middle segment
is in the form of the front part of an envelope addressed to the Liberal Party
of Australia. In the area where one would normally affix a stamp appear the
words "No postage stamp required if posted in Australia". The right hand
segment contains the words in large capitals "Will you need to vote by post in
the coming federal election?", a larger version of the smiling post box, and
the Liberal Party logo. The graphics are in the Liberal Party's blue and
white colours.
12. The middle segment on the reverse side is an application form which is
substantially the same as the 1989 gazetted form. The right hand segment is
another application form. Except in two respects, the forms are the same.
The first difference is that the one in the middle segment has "(1st Person)"
beside "Application for a Postal Vote" whereas that in the right hand segment
has "(2nd Person)". The second difference is that the form in the middle
segment has instructions to "moisten and seal" and "complete and detach", the
intention being that the applicant should tear off these segments, lick the
left hand one, fold it, and thus produce an envelope addressed to the Liberal
Party.
13. The remaining segment contains the adjacent information. It is in three
parts. The first, headed "Postal Voting - What to do", tells the reader to
fill in the form and return it no later than one week prior to election day.
If only one postal vote is required, only one application form is to be
completed. If two are required, each person is to fill in a form. The second
part is "Information for an Applicant", and reproduces the paraphrase of
Schedule 2 of the Act contained in the Commission's 1989 brochure. The third
part is "Information for a Witness", and reproduces the paraphrase of ss.182
and 193 contained in the Commission's 1989 brochure. I will call this
brochure "the Party's 1993 brochure".
14. It appears that in November 1992 the New South Wales Division of the
Party asked the Commission for its view on the Party's 1993 brochure. The
Commission saw "no problem with the form and content of the postal vote
application you propose". In February 1993 the Secretary of the
Richmond/Clarence Greens wrote to the Commission expressing concern about the
Party's 1993 brochure. The Commission replied to the Secretary on 22 February
1993 advising that its long-standing view was that substantial compliance with
the official form was acceptable. It went on to say that when the Commission
first became aware that the Liberal Party was intending to publish a version
of the "official postal vote application form", it sought legal advice. The
advice was that so long as the verbiage of the Liberal Party "form" was
substantially the same as that of the 1989 gazetted form, it would be a valid
postal vote application form for the purposes of s.184 of the Act. The writer
then said that the information printed on the Commission's "postal vote
application form" was not "approved" by the Commission and did not "require
substantial compliance as for the form itself". The Party's 1993 brochure was
distributed during the 1993 election campaign, and many thousands of
applications made on the form contained in the brochures were processed by the
Commission without complaint to the Party.
Submission to Joint Standing Committee
15. In August 1994 the Commission made a submission to the Joint Standing
Committee on Electoral Matters on the conduct of the 1993 election. In the
section dealing with postal vote applications reference was made to the major
political parties' use of brochures containing application forms. The
Commission recommended that the Act be amended to prevent the general
reproduction and distribution of application forms. As a fall back position
it recommended that it be made clear by amendment that forms must be returned
to Divisional Returning Officers and not to party campaign offices or
candidates. The Committee reported in November 1994 and made two
recommendations that are of present relevance. The first was that the Act be
amended to prohibit a postal vote application form, or a reproduction thereof,
being incorporated with material issued by any body other than the Commission.
The second was the Act be amended so that an application form and associated
material sent to electors should nominate only the appropriate office of the
Commission as the return address for the application form. The Government
supported other recommendations made by the Committee, but deferred these two
recommendations for further consideration.
Kooyong by-election
16. In the November 1994 Kooyong by-election the Party used basically the
same brochure as that used in 1993, and applications made on the form
contained in it were processed by the Commission without complaint to the
Party.
Proposed variations to Liberal Party form
17. Shortly after the Kooyong by-election the Party contemplated making
changes to the form in its 1993 brochure by adding a space containing the
salutations "Mr", "Mrs", "Ms" and "Miss", and putting a dotted cutting line on
the outside of the brochure. On 1 December 1994 Dr. Poggioli wrote to Dr.
Muffet, Australian Electoral Officer for
Victoria
, seeking "approval" of these
changes. Dr. Muffet referred the letter to Central Office in Canberra. By
letter of 16 February 1995 Dr. Bell, Deputy Electoral Commissioner, "denied"
permission to make the amendments. The letter began by referring to Dr.
Poggioli's letter requesting approval of the changes. The writer referred to
the recommendations of the Committee which had apparently already been drawn
to the Party's attention. He then advised that the Commission would not be
approving political parties' versions of the postal vote application form for
the next election. The letter concluded as follows:
... the Commonwealth of Australia claims copyright over the postal
vote application form under the Copyright Act 1968. In the light
of this, and in accordance with the recommendation made by the
JSC, permission will only be granted to reproduce the form if it
is identical to the approved form and is not attached to any other
material.
18. Permission to reproduce the postal vote application form with amendments
proposed by you is therefore denied.
19. In view of this response the Party did not proceed with the proposed
alterations.
3 May meeting
20. On 3 May 1995 Dr. Poggioli and his Deputy, Mr. Conheady, met Dr. Muffet
and a member of his staff, Mr. Glanville, to discuss matters that might arise
during the next federal election, which at that time the Party thought might
be announced in July. Dr. Poggioli gave evidence that postal vote
applications were discussed, that Dr. Muffet referred to the Joint Committee's
recommendations, and said it was possible the Act would be amended to prohibit
the practice of political parties distributing application forms. According
to Dr. Poggioli, Dr. Muffet said that in the absence of any such amendment,
were the Party to issue brochures in the same form as those used in the 1993
election and the Kooyong by-election, his office would again accept and
process applications lodged on the forms contained in the brochures. Dr.
Muffet suggested that the brochures be printed on mat and not glossy paper to
overcome minor processing difficulties. Dr. Poggioli agreed.
21. Dr. Muffet thought it was Mr. Glanville who had referred to the Joint
Committee's recommendation, and did not recall having said that his office
would again accept and process applications lodged on forms contained in the
brochures. He did not otherwise quarrel with Dr. Poggioli's account of the
discussion. Mr. Conheady also thought it was Mr. Glanville who had referred
to the Joint Committee's recommendation, but otherwise supported Dr.
Poggioli's account. Mr. Glanville recalled saying that the Act was likely to
be amended to proscribe the use of forms other than the Commission's. He also
recalled Dr. Muffet saying he did not like the type of paper used by the
Liberal Party as it caused processing problems. He did not mention the part
of the discussion that Dr. Muffet could not recall, but by implication he
could not recall it either.
22. Dr. Poggioli was cross-examined, but was not challenged about what
transpired at the 3 May meeting. Indeed the cross-examination assumed that
Dr. Muffet had said what Dr. Poggioli attributed to him. In these
circumstances I have no hesitation in accepting Dr. Poggioli's account of this
part of the conversation. Dr. Muffet accepts that he asked for the paper used
in the brochure to be changed, and that Dr. Poggioli agreed to make the
change, and that lends force to Dr. Poggioli's recollection of the
conversation. The paper type was to be changed because the old paper was
difficult for the Commission to process. Why discuss the change of paper to
facilitate easier processing if there had been no discussion about future
processing?
23. In June 1995 Dr. Poggioli, anticipating that the election would be held
in August, had 900,000 brochures printed. He said he did this in reliance on
past practice and on what Dr. Muffet had said on 3 May. The brochures were in
the same form as those used in the 1993 election and the Kooyong by-election.
I will call the brochure printed in June "the Party's 1995 brochure".
June conversation
24. Dr. Poggioli gave evidence that later in June, shortly after the
brochures were printed, he had a telephone conversation with Dr. Muffet in
which he told Dr. Muffet that new brochures had been printed in the same form
as those used previously. He claimed that Dr. Muffet reminded him of the
possibility of a change in the Act following the Joint Committee's
recommendations. Dr. Muffet did not recall this conversation. He said his
first knowledge of the printing of the brochures was when Dr. Poggioli told
him of this on 6 November 1995. Dr. Poggioli was cross-examined about the June
telephone call. He conceded he had not made a contemporaneous note of the
conversation, but was unshaken in his recollection that he told Dr. Muffet
about the printing of the brochures in June and again in November. I accept
his evidence on this point.
25. Dr. Poggioli said that following that conversation he was left in no
doubt that in the absence of legislative change the Commission would process
applications lodged on forms contained in the Party's 1995 brochure in the
same manner as it had in the past. October and November events
26. On 13 October Dr. Muffet wrote to Dr. Poggioli asking what he was doing
in relation to postal vote applications for the forthcoming elections. They
met on 24 October and amongst other things discussed ways in which
applications for postal votes made late in the campaign could be processed
more quickly. Dr. Poggioli suggested they exchange letters regarding the
understanding reached at their 3 May meeting concerning the Commission's
acceptance of the Party's 1995 brochure. Dr. Muffet agreed. Straight after
the meeting Dr. Poggioli wrote to Dr. Muffet. The letter asserted that one of
the Party's 1995 brochures was enclosed. It went on to say that the brochure
was exactly the same as that used in 1993 with the exception of the paper
stock which had been changed from glossy to mat paper at Dr. Muffet's
suggestion. Voters were invited to return the form to the Liberal Party
whence it would be immediately forwarded to the Commission by 4.00 p.m. each
day. The writer asked for Dr. Muffet's confirmation that those arrangements
were acceptable to him. The brochure was not in fact enclosed with the
letter. It was delivered later, and Dr. Muffet did not read the letter until
he received the brochure some days later.
27. On Sunday 5 November Dr. Poggioli telephoned Dr. Muffet at his home
asking for the confirmation sought in his 24 October letter. According to Dr.
Poggioli, Dr. Muffet said he could expect to get a confirmatory letter within
the next day or two. According to Dr. Muffet, what he said was that he would
call Dr. Poggioli back the next day. Dr. Poggioli's account of the
conversation is supported by a file note made immediately after the
conversation, and I accept his account. Dr. Muffet telephoned Dr. Poggioli on
6 November. He said approval would be needed from Central Office to
distribute the "amended" forms, and he would contact that office to obtain
further directions. Aided by a file note he made at the time, Dr. Poggioli
gave a more extensive account of this conversation. According to him, Dr.
Muffet said he had received correspondence from Central office regarding
postal voting applications which he was required to copy to political parties
in
Victoria
. Dr. Muffet agreed that the "application forms" the Party had
used in the 1993 election and Kooyong by-election were identical to the
Commission's approved forms. Dr. Poggioli said that as the Party had printed
900,000 brochures which were the same as those used in the earlier elections,
the only question was whether the forms contained in them would be accepted
and processed by the Commission. Dr. Muffet said he had no problem with the
Party's application forms, but would seek urgent advice from Canberra
regarding acceptance of the forms. I accept Dr. Poggioli's account of the
conversation, supported as it is by his contemporaneous note.
28. On 9 November Dr. Muffet wrote to Dr. Poggioli saying he had asked
Central Office urgently to consider the acceptability of the Party's postal
vote application. He enclosed a copy of a letter and attachments sent by
Central Office to the Party's Directorate in Canberra. The letter is not
identified by a date, and the 9 November letter was in evidence without the
attachments.
Exchanges between head offices
29. While Dr. Poggioli and Dr. Muffet were dealing with each other in
Melbourne, their respective head offices in Canberra were also corresponding.
On 4 October 1995 Mr. Robb, Federal Director of the Party, wrote to the
Commission seeking confirmation that the postal voting application form
accompanying the letter would be accepted by the Commission. The letter and
enclosure were not in evidence. Mr. Dacey, Assistant Commissioner Development
and Research, replied on 13 October, advising that the Commonwealth claimed
copyright in the "postal vote application form", and that permission to
reproduce it would only be granted if the reproduction was identical to the
"approved form (including the copyright notice)" and was not attached to any
other material. He said that "attached to any other material" meant that the
form could not be printed with or on the back of any other material. The form
could be enclosed in the same envelope as other material, provided it was not
attached to that material.
30. On 6 November Mr. Dacey again wrote to Mr. Robb. The letter enclosed a
copy of the Joint Committee's recommendations on postal voting and a copy of
the Government's response deferring consideration of the recommendations. The
letter more or less repeated the contents of Mr. Dacey's 13 October letter.
There was some elaboration of what "attached to" meant. It meant "printed as
part of campaign or any other material, including on the reverse of such
material". It also meant "stapled, pinned, attached by perforation or in any
other way". The 6 November letter is probably the one referred to in Dr.
Muffet's letter of 9 November.
The letter of demand
31. On 6 December the Party received a letter from the Commission's solicitor
claiming that the Party's 1995 brochures were in breach of copyright and
demanding delivery up of all copies. The Party denied any breach and did not
comply with the demand, and the parties issued their respective proceedings.
The Commonwealth's copyright
32. The Liberal Party did not dispute that the Commonwealth was the owner of
copyright in the gazetted form and the Commission's brochure. For the purpose
of determining whether it showed the requisite degree of originality in its
compilation for the purposes of s.32 of the Copyright Act, the brochure must
be considered as a whole. It is not permissible to dissect it into its
component parts and determine whether a particular part would be protected if
it stood by itself. See Kalamazoo (Aust.) Pty. Ltd. v. Compact Business
Systems Pty. Ltd. (1985) 5 IPR 213.
33. The Party contended that its 1995 brochure did not infringe the
Commonwealth's copyright in the gazetted form or the Commission's brochure.
As to the gazetted form, the Party had a statutory licence, derived from the
Act, to reproduce it. As to the parts of the Commission's brochure it had
reproduced (i.e. sections of the information for electors and witnesses),
there was no breach of copyright because those parts lacked the necessary
degree of originality.
Statutory Licence
34. It was contended for the Party that Part XV of the Act, especially s.184,
by necessary implication permitted reproduction of the gazetted form so long
as it was to be used solely for the statutory purpose for which it had been
created, namely to apply for a postal vote. It was said that an elector would
not by copying the form for use in making an application commit a breach of
the Commonwealth's copyright. Nor would a relative of a sick elector be in
breach by copying the form for use by the elector. It was also said that
there would be nothing to prevent a person making copies of the form for the
use of those who lived in the same street and who qualified to apply. On the
assumption that the Act by implication permitted this copying, it was said
that what the Liberal Party had done was no different. It produced copies of
the forms for the sole purpose of prospective voters applying for a postal
vote. That was why the form had been invented.
35. The existence of s.182A of the Copyright Act, considered under the next
heading, might bear on whether s.184 itself grants a licence to make a copy of
the gazetted form. But assuming in favour of the Party that in the examples
given the elector, the relative and the neighbour would not infringe
copyright, it does not follow that the implied licence extends to what the
Party has done. Any implied licence would not extend beyond the copying of
the gazetted form itself. At the conclusion of the copying process the
elector, relative or neighbour has a document that is either a photocopy or a
manuscript copy of the original. But at the end of the Party's printing of
the 1995 brochure, one has something quite different. I do not in this
connexion attach importance to the minor differences between the gazetted form
and the forms contained in the Party's 1995 brochure. The important difference
lies in the fact that on the back of one of the forms is the front part of an
envelope addressed to the Liberal Party. On the back of the other are the
smiling electors and post box. The back of the gazetted form would of course
be blank.
36. One may well be able to attribute to the legislature an intention that an
elector or someone acting on behalf of an elector is to be free to copy the
gazetted form. But it would not be reasonable to attribute to it an intention
that a political party should be at liberty to add to the form the information
that is on the back of one of the Party's forms, namely the front part of an
envelope designed to ensure that the postal vote is returned not to the
Commission but to the Party. Sub-sections (2) and (3) of s.184 support this
view. Section 197 does not assist the Party. That section contemplates that
an elector may entrust the application to someone for transmission to the
Commission. But it does not bear on whether s.184 carries with it the
implication that a political party, a candidate, a trade union or any other
organisation is to be at liberty to add to the approved form material designed
to ensure that it is returned not to the Commission but to the party,
candidate, union or other organization, or indeed any other material.
<
Section 182A
37. The Party also relied on s.182A of the Copyright Act as support for the
view that its reproduction of the gazetted form involved no breach of
copyright. Sub-section (1) provides:
The copyright, including any prerogative right or privilege of the
Crown in the nature of copyright, in a prescribed work is not
infringed by the making, by reprographic reproduction, of one copy
of the whole or of a part of that work by or on behalf of a person
and for a particular purpose.
38. A "reprographic reproduction" of a work is the making of a "facsimile
copy" of the work: s.10(3)(g). An instrument made under an Act is a
"prescribed work": sub-s.(3)(a). So the gazetted form is a prescribed work.
It was said that the Party makes only one copy of the form on behalf of "a
person", namely a prospective voter, and that the copy is made "for a
particular purpose", namely for use by that person to apply for a postal vote.
Even if the section contemplates the making of multiple copies of documents
each intended for the use of an identified person, I do not think it applies
to multiple copying on behalf of persons the identity of whom is not known to
the copier at the time of copying. I would be surprised if, at the time it
printed 900,000 copies of its 1995 brochure, the Party was aware of the
identity of each person who might in the future receive a copy. But I need
not decide the point, because the Party's 1995 brochure is not a reprographic
reproduction of the gazetted form. The word "facsimile" is not defined in the
Act, but according to the Macquarie Dictionary it is an exact copy of
something. Given that the section is concerned with statutes, regulations,
rules and judgments in relation to the reproduction of which precision is of
the essence, it is not surprising that the freedom to reproduce prescribed
works is restricted to the making of an exact copy. Neither of the forms in
the Party's 1995 brochure is an exact copy of the gazetted form. The gazetted
form is printed in black and white. The Party's is in blue, black and white.
The typeface differs between the documents. One of the Party's forms has
"(1st Person)" and the other "(2nd Person)" added after "Application for a
Postal Vote". The Party's form has provision for the date rendered as " /
/19 ". The gazetted form omits the "19 ". The Party's form does not
contain the copyright notice that is at the foot of the gazetted form. There
are other differences on the face of the documents. Furthermore, the gazetted
form has nothing on its reverse side, whereas one of the Party's forms has the
Liberal Party address on the back, and the other has the smiling voters and
post box. What s.182A contemplates is that as a result of the reprographic
reproduction the copier will have an exact replica of the original and no
more. Accordingly, the section does not apply to the application forms
contained in the Party's 1995 brochure.
Information pages - originality
39. The information in the Commission's brochure is more extensive than that
in the Party's 1995 brochure. In addition to the information I have already
described, under the heading "Information for an Applicant", the Commission's
brochure contains information about the mailing of application forms, making
application in person, overseas applications, obtaining further information,
and public inspection of applications after polling. The Party's 1995
brochure does not contain any of this information. Otherwise the material
under this heading is essentially the same in the two brochures. Under the
heading "Information for a Witness", the Commission's brochure also contains
information about overseas applications. This is not included in the Party's
brochure because it is not intended for use out of Australia. Otherwise the
material under this heading is the same in the two brochures.
40. The Party's contention that publication of the information parts of the
Commission's brochure reproduced in its 1995 brochure does not involve a
breach of copyright was developed as follows. The Commonwealth's copyright in
the brochure gives it the exclusive right to reproduce it: s.31(1)(a)(i).
That copyright is infringed by a person who does an act comprised in the
copyright: s.36(1). By s.14(1)(a) a reference to the doing of an act in
relation to a work includes the doing of that act in relation to a
"substantial part" of the work, and a reference to a reproduction of a work
includes a reference to a reproduction of a "substantial part" of the work.
The words "substantial part" refer to the quality of what is taken rather than
the quantity. It was said that the originality or otherwise of the part of
the work reproduced was relevant to the determination of the quality of what
had been copied. If the part taken represents the application of a high
degree of skill and labour on the part of the author, it may be regarded as
substantial although slight in quantitative terms. But if it involves little
originality, it may not be regarded as substantial even though quantitatively
it may form quite a large part of the work. It was then submitted that the
information parts of the Commission's brochure that had been reproduced by the
Party were not original with the result that they were not a substantial part
of the Commission's brochure.
41. In Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. (1964) 1 WLR
273, at pp 276-277 Lord Reid said:
... the question whether he has copied a substantial part depends
much more on the quality than on the quantity of what he has
taken. One test may be whether the part which he has taken is
novel or striking, or is merely a commonplace arrangement of
ordinary words or well-known data. So it may sometimes be a
convenient short cut to ask whether the part taken could by itself
be the subject of copyright. But, in my view, that is only a
short cut, and the more correct approach is first to determine
whether the plaintiffs' work as a whole is "original" and
protected by copyright, and then to inquire whether the part taken
by the defendant is substantial.
42. At p.293 Lord Pearce said:
Whether a part is substantial must be decided by its quality
rather than its quantity. The reproduction of a part which by
itself has no originality will not normally be a substantial part
of the copyright and therefore will not be protected. For that
which would not attract copyright except by reason of its
collocation will, when robbed of that collocation, not be a
substantial part of the copyright and therefore the courts will
not hold its reproduction to be an infringement. It is this, I
think, which is meant by one or two judicial observations that
"there is no copyright" in some unoriginal part of a whole that is
copyright.
43. Warwick Film Productions Ltd. v. Eisinger (1969) 1 Ch 508 is an
interesting illustration. The plaintiffs claimed copyright in a book called
"Oscar Wilde: Three Times Tried" which contained an account of the Wilde's
trials, much of which was taken directly from transcripts of shorthand notes
of the proceedings and newspaper reports. The defendants made or exhibited a
film entitled "Oscar Wilde" which reproduced from the book parts of the
speeches of counsel, the words of the judge and the questions put to Wilde and
his answers. Applying Lord Pearce's observation in Ladbroke set out above,
Plowman J held that while the plaintiffs had copyright in the book, the film
did not reproduce a substantial part of it. Although considerable use had
been made of material in the book, this had no originality and attracted
copyright only by collocation with edited passages, and when robbed of that
collocation could not constitute a substantial part of the book. Accordingly
what the defendants had done did not involve an infringement of copyright.
44. It was contended by the Liberal Party that the relevant parts of the
Commission's brochure do no more than paraphrase Schedule 2 and ss.193(1) and
187 of the Act. A comparison was made between each part of the Act and each
part of the relevant information. So far as concerns the information for
applicants, this showed that apart from rendering "throughout the hours of
polling on polling day" as "between 8 am and 6 pm on polling day" (derived
from s.222(b)), all the draftsman had done was to replace "the elector" by
"you", and render the effect of each ground mentioned in Schedule 2 in a
somewhat abbreviated way.
45. As Thomas J pointed out in the Kalamazoo Case, there are conflicting
judicial statements as to the degree of originality required by s.32. Is it
sufficient that the author employs "more than negligible" skill and labour in
the selection of words or other content (e.g. Ladbroke, at p.287)? Or must
the author display a "substantial" degree of skill (Ladbroke, at p.289)? In
Victoria Park Racing
and Recreation Grounds Co. Ltd. v. Taylor (1937) 58 CLR
479, at p 511 Dixon J said:
... some original result must be produced. This does not mean
that new or inventive ideas must be contributed. The work need
show no literary or other skill or judgment. But it must
originate with the author and be more than a copy of other
material.
46. Professor Ricketson expresses the view that where the work is a
compilation or is of a purely factual or informational nature, a simple,
unordered presentation will not be protected unless some greater coherence or
order has been imposed upon it by the author: The Law of Intellectual
Property, par.5.18. In the Kalamazoo Case Thomas J said:
If ... I looked piecemeal at various parts of the documents, it
would be possible to say that such parts were either
reproductions, paraphrases or minor variations of documents
already in general use. ... whilst, I refuse to find that the
authors showed great skill, I do find that their preparations
required a degree of concentration, care, analysis, comparison,
and a certain facility in using and adapting the altered forms to
a composite "one-write" system.
47. In the present case the relevant information is more than a mere copy of
the statutory provisions. It assembles in one convenient place the general
effect of provisions which are in different parts of the Act - s.183, Sch.2
and s.220(b). It renders Schedule 2 in simpler and shorter language. To use
the current jargon, the draftsman employs more "user friendly" language than
that contained in the Schedule. The reader is assisted to digest the grounds
and test them against his own circumstances by the heavy black dots placed
beside each ground. In Professor Ricketson's language, the author has not
simply copied or paraphrased the statutory material, but has imposed some
greater coherence or order upon it. Rendering the effect of the relevant
provisions in one place, in composite form, and with the black dots, bestows
both coherence and order on the statutory material.
48. To use Thomas J's language in Kalamazoo, the draftsman has neither merely
reproduced nor merely paraphrased the statutory provisions. Some degree of
concentration, care, analysis and comparison went into the task. The author
had to locate the relevant provisions and mould them into a readily digestible
form. Care had to be taken to see that in rendering the grounds in simpler
and shorter language, the meaning of the Schedule was not altered.
49. To the same end the author had to compare his language with that of the
Schedule. A degree of analysis, though not much, was involved in the exercise
- an understanding of the statutory provisions, and a rendering of them in a
shorter form without altering their meaning.
50. The information for a witness is closer to the line, but in my view just
struggles over it. The author's task was simpler here. Nevertheless, it was
necessary to locate the relevant provisions (ss.193(1) and 187) and render
their effect without distorting their meaning. The black dots are again
employed to facilitate an understanding of the witnesses' obligations.
51. All in all, I think the relevant information parts of the Commission's
brochure originated with its author and were more than a copy of the statutory
provisions. Accordingly they had sufficient originality to be protected by
copyright. But this does not dispose of the issue because, as Lord Reid said
in Ladbroke, while it may sometimes be a convenient short cut to ask whether
the part taken could itself be the subject of copyright, the more correct
approach is first to determine whether the Commission's brochure as a whole is
original, and then to inquire whether the part taken is substantial. It is
conceded by the Party that the brochure as a whole is original. On the view I
have taken, neither s.184 of the Act nor s.182A of the Copyright Act entitled
the Party to reproduce the gazetted form. Accordingly, in determining whether
what was taken from the Commission's brochure was substantial in the relevant
sense, the Party not only reproduced parts of the information material (which
I have held were original), but the application form itself. That was
certainly original. In my view what was taken by the Party was a substantial
part of the Commission's brochure.
Estoppel
52. The Party says that the Commonwealth is estopped from asserting that the
Party's 1995 brochure infringes its copyright. In The Commonwealth v.
Verwayen (1990) 170 CLR 394, at p 413 Mason CJ said:
... there is but one doctrine of estoppel, which provides that a
court of common law or equity may do what is required, but no
more, to prevent a person who has relied upon an assumption as to
a present, past or future state of affairs (including a legal
state of affairs), which assumption the party estopped has induced
him to hold, from suffering detriment in reliance upon the
assumption as a result of the denial of its correctness.
53. At pp.444-445 Deane J said:
2. The central principle of the doctrine (of estoppel by conduct)
is that the law will not permit an unconscionable - or, more
accurately, unconscientious - departure by one party from the
subject matter of an assumption which has been adopted by the
other party as the basis of some relationship, course of conduct,
act or omission which would operate to that other party's
detriment if the assumption be not adhered to for the purposes of
the litigation.
...
4. The question whether such a departure would be unconscionable
relates to the conduct of the allegedly estopped party in all the
circumstances. That party must have played such a part in the
adoption of, or persistence in, the assumption that he would be
guilty of unjust and oppressive conduct if he were now to depart
from it.
54. His Honour went on to say that whether departure from an assumption a
person has been induced to adopt will be unconscionable will depend on,
amongst other things, the reasonableness of the conduct of the other party in
acting upon the assumption and the nature and extent of the detriment he will
sustain if departure from the assumed state of affairs is permitted. His
Honour said that in cases where the assumption has been induced by express or
implied representations, a critical consideration will commonly be that the
representor knew or intended or clearly ought to have known that the other
party would be induced by his conduct to adopt, and act on the basis of, the
assumption.
55. Dr. Muffett is and was at all relevant times the Australian Electoral
Officer for
Victoria
. He was, he said, the person with whom people would
confer if they wanted to know what the attitude of the Commission was in
Victoria
, though sometimes they might confer with his staff rather than with
him. He was "the top man". On 3 May he and Dr. Poggioli discussed postal
vote applications. While warning Dr. Poggioli that there might be a change in
the law, Dr. Muffet said that in the absence of such a change his office would
accept and process applications lodged on the forms contained in Party
brochures similar to those used in the 1993 election and the Kooyong
by-election. Dr. Muffett suggested the brochures be printed on mat paper to
overcome processing difficulties encountered by his office with the glossy
paper used in the past. In reliance on what Dr. Muffet had said, Dr. Poggioli
arranged to have 900,000 brochures printed on mat paper. Shortly after the
printing, Dr. Poggioli told Dr. Muffet the brochures had been printed in the
same form as previously, though on mat paper, and Dr. Muffet again warned him
that there might be a change in the law. Dr. Poggioli's belief that in the
absence of legislative change the Commission would process application forms
contained in the brochures as it had in the past, was an assumption as to the
future which he was induced to hold by what Dr. Muffet had said. Dr. Poggioli
relied on the assumption by having 900,000 brochures printed. It was clearly
reasonable for Dr. Poggioli to have acted upon the assumption in that way.
Dr. Muffet either knew or clearly ought to have known that Dr. Poggioli would
act on the assumption that, absent a change in the law, the Commission would
process application forms contained in the old brochures, by having brochures
printed in the same form as in the past except for the style of paper.
56. The Party would suffer detriment if the Commission or the Commonwealth
were permitted to deny the correctness of the assumption. The detriment is
not just the effort and money that would be wasted if the Party were not
permitted to use the brochures. As I have said, the proceedings commenced on
21 December, and they were heard as quickly as the parties' and the Court's
circumstances would allow. Despite the intervention of the Christmas period,
a bare two weeks elapsed between the institution of the proceedings and the
hearing. That expedited hearing was sought and granted because of a
perception by the parties that a federal election could be announced at any
time. The Party's planning for that election, in so far as it relates to
postal votes, would be thrown into disorder if it suddenly had to cause new
forms to be printed.
57. The only hesitation I have had on this aspect of the case arises from Dr.
Bell's letter of 16 February. But I do not consider it prevents an estoppel
arising. It is an ambiguous and confusing letter. Its opening and closing
paragraphs would reasonably lead a reader to believe that the effect of the
letter was to deny the permission the Party had sought to make the two
amendments to the gazetted form. The bottom line was the statement -
"Permission to reproduce the postal vote application form with amendments
proposed by you is therefore denied". That was certainly how Dr. Poggioli
read the letter, as appeared in the course of his cross examination. Further,
the letter was evidently about the application form and not about the Party's
brochure. See the reference in the fifth paragraph to "approval" of the form
under s.184 of the Act. In addition, Dr. Muffet's 3 May assurance (qualified
by the warning about the possibility that the Act might be amended) was more
recent than Dr. Bell's letter, and was unambiguous.
58. A meticulous examination of Dr. Bell's confused and confusing letter
might perhaps show that he was doing more than simply refusing the permission
Dr. Poggioli had sought. Be that as it may, a representation must be clear in
order to found an estoppel: Legione v. Hateley (1983) 152 CLR 406, at pp
435-436. Dr. Muffet's assurance was clear. It cannot be robbed of its
clarity by an earlier ambiguous utterance which Dr. Poggioli quite reasonably
did not understand to be inconsistent with it.
59. Subject to the question whether the fact that it is the Commonwealth that
is sought to be estopped alters the legal position, I would hold that the
Commission and the Commonwealth are estopped from claiming that the printing
of the Party's 1995 brochure is an infringement of copyright.
Is the Commonwealth estopped?
60. While counsel for the Commonwealth did not concede that the elements of
an estoppel were made out, the only argument deployed against an estoppel was
that the Commonwealth could not be estopped in a case such as the present. In
their written outline, the matter was put in absolute terms: estoppels are not
binding on the Crown: Attorney-General (N.S.W.) v. Butterworth and Co.
(Australia) Ltd. (1938) 38 SR (NSW) 195, at p 224. This contention was
quickly abandoned in the course of argument. Instead, reliance was placed on
the proposition that where there is no question of illegality or ultra vires,
estoppel may be raised in respect of the exercise of a statutory discretion
only at the operational level as opposed to the planning or policy level. See
Minister for Immigration v. Kurtovic (1990) 92 ALR 93, at pp 115-117, per
Gummow J.
61. It was said that the present case fell within the policy limb of the
proposition. The Commission had initially permitted the Party to reproduce
the gazetted form and part of its brochure, but after the 1993 election had
changed its policy. That was why it sought to have the Act amended. When it
was unable to achieve its end by a change in the law, it decided to have its
way by resorting to copyright.
62. I do not consider the case is to be resolved by resort to this
distinction between policy and operational matters. No statutory discretion
is involved here. This is not an administrative law case. As the owner of
copyright in the gazetted form and the Commission's brochure, the Commonwealth
asserts its rights in the same way as any other copyright owner.
Judiciary Act, s.64
63. Whether the Commonwealth can be estopped in the present case depends, in
my view, on s.64 of the Judiciary Act 1903: in a suit to which the
Commonwealth is a party, the rights of the parties are to be "as nearly as
possible" the same as in a suit between subject and subject. Since Maguire v.
Simpson (1977) 139 CLR 362 it has been established that in every suit to which
the Commonwealth is a party s.64 requires the rights of the parties to be
ascertained, as nearly as possible by the same rules of law, substantive and
procedural, statutory and otherwise, as would apply if the Commonwealth were a
subject instead of being the Crown. The Commonwealth acquires no special
privilege except where it is not possible to give it the same rights and
subject it to the same liabilities as an ordinary subject. See The
Commonwealth v. Evans Deakin Industries Ltd. (1986) 161 CLR.254, at pp
264-265.
64. In Asiatic Steam Navigation Co. Ltd. v. The Commonwealth (1956) 96 CLR
397, at p 427 Kitto J rendered the expression "as nearly as possible" as "as
completely as possible", and went on to say that s.64 in effect requires the
court "to put out of account any special position of the Crown, and so far as
possible to decide all questions of right in the same way as they would have
been decided if the Commonwealth ... had been a subject": p.428. In Evans
Deakin, at pp.264-265, Gibbs CJ, Mason, Wilson, Deane and Dawson JJ agreed
that "as completely as possible" was the natural meaning of "as nearly as
possible", and after quoting the passage I have just set out, said it was
"unnecessary to consider whether in some cases at least it would be right to
consider the special position of the Crown", as the Commonwealth in that case
"was not performing a function peculiar to government". In Deputy
Commissioner of Taxation v. Moorebank Pty. Ltd. (1988) 165 CLR 55, at p 68,
the Court said it was not necessary to consider whether, and if so to what
extent, s.64 would be ineffective to apply the provisions of State laws in
circumstances where their application would interfere with the discharge of
"an essentially governmental function such as the collection of taxes". See
also Maguire v. Simpson, at pp 393-395. In the present case the Commonwealth
did not contend that s.64 should not apply because of any "function peculiar
to government" qualification. In those circumstances I need not decide
whether there is such a qualification, and if there is, whether the present
case falls within it. Cf. Verwayen's Case, at p.486. Accordingly I hold the
Commonwealth estopped from enforcing its copyright. The Cross-Application for
declarations and injunctions is dismissed.