Commonwealth of Australia v Oceantalk Australia Pty Ltd [1998] FCA 34 (2 February 1998)

FEDERAL COURT OF AUSTRALIA

COPYRIGHT - Crown copyright - construction of s 176 of the Copyright Act 1968 - what Commonwealth has to prove under that section - proof of originality of work - reference to the manner of making charts from pre-existing sources - whether previous charts are copied - particulars which should be supplied by the Commonwealth

PRACTICE AND PROCEDURE - particulars - whether issue genuinely in dispute - particulars of originality in case where artistic works were charts in the production of which previous charts were used

EVIDENCE - Admission - mixed fact and law - facts not really known by party making admission - effect of admission

Copyright Act 1968 , ss 32, 176, 177, 180

Eastern Express Pty Limited v General Newspapers Pty Limited (1992) 35 FCR 43 followed

Rhône-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 referred to

Comptroller of Customs v Western Lectric Co. Ltd. [1966] AC 367 followed

Elram International Actuators Ltd v Fluid Power Engineering Ltd [1984] FSR 151 followed

Universal Press Pty Ltd v Provest Ltd (1989) 87 ALR 497 distinguished

COMMONWEALTH OF AUSTRALIA v OCEANTALK AUSTRALIA PTY LTD (trading as Navionics Australia)

NG 625 of 1996

BURCHETT J

SYDNEY

2 FEBRUARY 1998

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 625 of 1996

BETWEEN:	COMMONWEALTH OF AUSTRALIA Applicant
AND:	OCEANTALK AUSTRALIA PTY LTD (trading as Navionics Australia) First Respondent NAVIONICS S.p.A Second Respondent
JUDGE:	BURCHETT J
DATE OF ORDER:	2 FEBRUARY 1998
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

The respondents bring in, on a date to be fixed, short minutes of orders appropriate to be made in the light of the reasons of the Court.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 625 of 1996

BETWEEN:	COMMONWEALTH OF AUSTRALIA Applicant
AND:	OCEANTALK AUSTRALIA PTY LTD (trading as Navionics Australia) First Respondent NAVIONICS S.p.A Second Respondent

JUDGE:	BURCHETT J
DATE:	2 FEBRUARY 1998
PLACE:	SYDNEY

REASONS FOR JUDGMENT

BURCHETT J

In this matter, the Commonwealth has sued the respondents, inter alia, for breach of copyright. The claim arises out of the production by the second respondent and sale by the first respondent of electronic charts, the production of which is alleged to have involved the copying of charts issued by the Australian Hydrographic Office. The respondents, whose statements of defence have put the Commonwealth's copyright in the relevant charts in issue, have moved on notice for particulars of the Commonwealth's allegation that it owns the copyright. The particulars sought, as specified in the notice of motion, are the following:

1. Particulars specifying each of the charts relied on.

2. In relation to the claim that copyright subsists in the said charts as original artistic works made by or under the direction or control of the Commonwealth, and in relation to each chart relied upon:

(a) When, or during which year, was the chart made?

(b) Who made the chart?

(c) Is the author of the chart alive or dead? If dead, when did the author die?

3. In relation to any author, is it alleged that the provisions of section 35(6) of the Copyright Act apply? If so, please give details of the relevant contract of service or apprenticeship.

4. Alternatively, is it alleged that any of the provisions in Part VII of the Copyright Act apply? If so, which?

5. If the answer to (4) above is yes, and if subsection 176(1) is alleged to apply, please specify the facts, matters and circumstances relied upon to allege that, apart from that section, copyright would not subsist in any of the artistic works relied upon.

6. If the Commonwealth is claiming that different authors created different parts of the same chart, please provide us with a chart highlighted in different colours, coded to the different authors of the different parts. Please also provide the particulars requested in (2) above, in relation to each such author.

The question whether particulars should be supplied was closely contested by the Commonwealth, and the issues raised were elaborately debated by counsel. The precise formulation contained in the notice of motion was not always adhered to in the argument, and in substance the issues became first whether any particulars of the Commonwealth's alleged ownership of copyright in the charts should be required, and secondly if such particulars should be required, how far the manner in which the charts came into existence should be particularised.

Logically, the first question is whether the Commonwealth should be required to furnish particulars. On this issue, the arguments centred upon whether the Commonwealth's copyright was genuinely in dispute. Counsel for the Commonwealth asserted that it was not, and after the conclusion of the hearing of the motion a further affidavit was filed, to which an affidavit in response was filed on behalf of the second respondent, designed to support the proposition that the Commonwealth's copyright in its charts had been expressly admitted. Further written submissions were filed on both sides to deal with the additional evidence. Counsel for the Commonwealth submitted that Dr Carnevali, the President of the Second Respondent, and a lawyer representing it (not the solicitor on the record in this proceeding, and not necessarily qualified in Australian law) had made statements "to the effect that the Commonwealth is the owner of the copyright in the Commonwealth's nautical charts and `has the associated exclusive rights'". Complaint had been made by them that assertions on behalf of the Commonwealth in press releases that the respondents had "refused to acknowledge the Commonwealth's ownership of copyright in the official charts" were false. The evidence the Commonwealth re-opened its case to tender consisted of a document, dated 5 May 1997, purporting to be a press release on behalf of the Second Respondent, which asserted that the Australian Hydrographic Office had made "grossly inaccurate statements" including a statement that "Navionics and Oceantalk refuse to acknowledge the Commonwealth's copyright". The document protested: "Navionics and Oceantalk have acknowledged in various written documents that the Commonwealth, through the AHO, is the holder of copyright. More recently Navionics has merely requested to be informed about any charts whose copyright may be expired." The document went on to make an argumentative reference to a statement in a letter emanating from the Commonwealth nearly a year earlier.

There are a number of difficulties about the Commonwealth's reliance on these statements. In the first place, the Commonwealth does not suggest any estoppel, nor has it moved to strike out the relevant paragraphs of the statements of defence, and its submissions clearly accept that it will not do so. None of the statements has been shown to have been made by anyone authorised to speak for the First Respondent. It must therefore be entitled to maintain its defence, and to seek appropriate particulars of the allegation which it disputes. As regards the evidence tendered upon the re-opening of the hearing, Dr Carnevali has sworn an affidavit, upon which he has not been cross-examined, stating that the purported press release was a draft sent by a secretary acting under a mistake to the Australian Hydrographic Office, not actually released to the press, and that the particular part of it relied upon by the Commonwealth was deleted after legal advice from the document finally issued. In his affidavit, he points out that English is not his native tongue, and he claims that the draft was intended by him to say that:

"[I]n principle, Navionics recognises that there can be copyright in nautical charts and that such copyright can be owned by government agencies such as the AHO. More particularly, I intended to convey that Navionics recognises that under the law of Australia the Crown can hold copyright in such works as nautical charts.

...I did not intend to convey in the draft media release that Navionics accepts that the Commonwealth of Australia (`the Commonwealth') owns copyright in all of its nautical charts. Navionics and I do not, and have not, ever conceded that copyright subsists in the nautical charts which are the subject of these proceedings or that the Commonwealth is the owner of any copyright which may subsist in the nautical charts which are the subject of these proceedings, or more particularly, own copyright in such a way that Navionics' use of data from the charts could infringe that copyright."

Although the submissions filed on behalf of the Commonwealth invite me to do so, I can see no reason why I should disbelieve Dr Carnevali. Indeed, the language of what I accept was a draft is quite inconsistent with the notion that the present ownership of copyright in the relevant charts is acknowledged, since it expressly refers to the possibility that "copyright may be expired". I accept, for the purposes of this interlocutory proceeding (the matter has of course not been explored fully, as it would be at a final hearing), the explanation proffered on behalf of the Second Respondent. It was, in substance, endeavouring to assert emphatically that it was not disregarding the rights of the Commonwealth; but that was not at all to say that it conceded the particular rights asserted against it in litigation which it was defending.

In any case, it cannot be said to be settled beyond argument that the Commonwealth is entitled to succeed on the issue of its ownership of the copyright in any particular chart on the basis of an admission such as is alleged to have been made. The question of ownership must be a mixed question of fact and law, and such an admission can hardly be conclusive. In Eastern Express Pty Limited v General Newspapers Pty Limited (1992) 35 FCR 43 at 68, Lockhart and Gummow JJ, in their joint judgment, referred to an admission of that kind, in respect of conduct alleged to have infringed s 52 of the Trade Practices Act 1974 , in dismissive terms; their Honours said that such an admission "cannot be relied upon to usurp the task of the court to judge the legal quality of that conduct", and they cited Rhône-Poulenc Agrochimie SA v UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 487-488, 504. Their Honours commented that it "is unsettled whether admissions may be made of matters of mixed law and fact". They went on (at 68-69) to say:

"But the reception into evidence of an alleged admission must be distinguished from the sufficiency of that evidence to establish or support an affirmative conclusion in favour of the party who tenders it and bears the relevant onus of proof. It does not follow that because the evidence of the various statements in question here was admissible this is enough to prove the issue of predatory purpose [the issue alleged to have been concluded by admission]. The probative force of the statements must be determined with regard to the circumstances in which they were made: see Lustre Hosiery Ltd v York [1935] HCA 71; (1935) 54 CLR 134 at 138-139, 143-144; Stone and Wells, Evidence, Its History and Policies (1991), pp 329-331."

Cf. the statement of Lord Hodson, speaking for the Privy Council, in Comptroller of Customs v Western Lectric Co. Ltd. [1966] AC 367 at 371:

"If a man admits something of which he knows nothing it is of no real evidential value."

Here, the facts from which a conclusion would have to be drawn are complex, and not known to the respondents. What the Commonwealth is really seeking to do is to stop the mouth of all dispute; for the object of particulars is to facilitate rational debate.

I am satisfied that the Commonwealth's ownership of the copyright in any relevant chart is genuinely in issue, and that no conclusive admission has been made on behalf of the Second Respondent on that issue. Certainly none has been suggested to have been made by the First Respondent. Accordingly, I turn to the remaining questions raised by the motion.

Of these, the first is the effect of the Commonwealth's reliance on s 176 of the Copyright Act 1968 . Section 176 is the first section in Part VII, which is concerned with the rights of the Crown. For the purposes of this case, it is convenient to set out ss 176, 177 and 180(2), so far as relevant, as follows:

" 176 (1) Where, apart from this section, copyright would not subsist in an original literary, dramatic, musical or artistic work made by, or under the direction or control of, the Commonwealth or a State, copyright subsists in the work by virtue of this subsection.

(2) The Commonwealth or a State is, subject to this Part and to Part X, the owner of the copyright in an original literary, dramatic, musical or artistic work made by, or under the direction or control of, the Commonwealth or the State, as the case may be.

177 Subject to this Part and to Part X, the Commonwealth or a State is the owner of the copyright in an original literary, dramatic, musical or artistic work first published in Australia if first published by, or under the direction or control of, the Commonwealth or the State, as the case may be.

...

180 (2) Subject to the next succeeding subsection [which refers to an engraving or photograph], copyright in an artistic work of which the Commonwealth or a State is the owner... continues to subsist until the expiration of 50 years after the expiration of the calendar year in which the work was made."

For the respondents, it was argued that the opening words of s 176(1), "[w]here, apart from this section, copyright would not subsist...", require the Commonwealth, if it is to rely on the section, to prove that copyright does not subsist in the relevant charts under the earlier provisions of the Act. I do not think that this is the correct construction of the section. It will be observed that subs (1) is concerned with the subsistence of copyright, and subs (2) is concerned with the ownership of copyright. By subs (2), the Commonwealth is the owner of the copyright in an original artistic work, such as the charts, where it is "made by, or under the direction or control of, the Commonwealth". But if subs (2) stood alone, a question might be raised whether there was a subsisting copyright to be owned by the Commonwealth, in any case where the author of the work was not a qualified person within the meaning of s 32. Accordingly, it was necessary to provide, as subs (1) does, that, where copyright would not otherwise subsist in such a work, it does subsist by virtue of the section. On the other hand, in the case of publication in Australia under the direction or control of the Commonwealth, there was no possibility that copyright would not subsist, since s 32(2)(c) contains no limitation in that case to a qualified person. Therefore s 177 contains no equivalent to s 176(1). The context provided by s 177 thus confirms the construction of s 176. If the Commonwealth proves that "an original... artistic work" was "made by, or under the direction or control of, the Commonwealth", it proves ownership of the copyright in that work, subject to the provisions to which s 176 is subject, which include s 180(2). The Commonwealth does not have to negative subsistence of copyright under s 32, or under the prerogative, in order to rely on s 176(2) because, if it proves the ingredients of that provision, it proves facts which must necessarily result in the subsistence of copyright.

This view of the section seems to me to be confirmed by the Report of The Copyright Law Review Committee, 1959 (the Spicer Report), par 402 of which refers to s 39 of the Copyright Act 1956 (UK), stating:

"Section 39 of the 1956 Act in effect provides that copyright in works... made by or under the direction of the Crown shall, subject to agreement to the contrary, subsist in the Crown. The Crown is entitled to copyright in those circumstances even though, apart from that section, copyright would not subsist in the work. The effect of this provision is that the Crown has copyright in works and articles made under its direction or control without regard to the nationality or residence of the `author' or the place of first publication. ..."

In par 403 the Committee added:

"We recommend the enactment of a provision similar to section 39 of the 1956 Act which should be applicable to the Crown in the right of the Commonwealth and the States."

As I understand the history of the matter, s 176 and s 177 respond to this recommendation.

It follows from the foregoing that some of the requests for particulars made by the respondents are misconceived. It is no part of the Commonwealth's case to show that copyright did not subsist in any of the charts by virtue of s 32 or by virtue of the prerogative (see s 8A). But, as I have indicated, the debate at the hearing of the motion was not confined to the precise formulation contained in the notice of motion. In substance, what the respondents were seeking was a clear statement identifying the particular charts copyright in which they were alleged to have infringed, and particulars of the facts, matters and circumstances alleged to show that the Commonwealth owned the copyright in those particular charts. For the Commonwealth, it was urged that these matters would sufficiently appear from its affidavits, when filed. However, I do think this case is of a complexity which makes it very desirable in the interests of justice that the respondents not be remitted to a search through probably voluminous affidavits to ascertain the case against them, but be supplied from the outset with a clear statement of just what it is. At present, the statement of claim does not even identify the fundamental documents in the case. Nor does it provide any particulars of the basis on which it is said that whatever charts are relied on are in fact original artistic works made by, or under the direction or control of, the Commonwealth, and when they were so made. Counsel for the Commonwealth, who gave me to understand its case on ownership of the copyright would be confined to s 176, emphasised the proposition:

"[A]ll we have to prove in order to make out the claim to the subsistence of copyright, is that the work was made by or under the direction or control of the Commonwealth."

But that is not correct. It is also necessary that the work be shown to be original. And of course the date of its making is vital too, since it determines whether the work is out of copyright. The evidence and the argument showed, clearly enough, that there is likely, at the hearing, to be a very real argument whether any particular chart is an original work, or was substantially copied from an earlier chart which may be out of copyright.

For the respondents, I was referred to Elram International Actuators Ltd v Fluid Power Engineering Ltd [1984] FSR 151, where Walton J considered a motion for particulars in relation to drawings of actuators, of which it was suggested that possibly "the draftsmen simply copied when they made the drawings which are now relied upon either earlier documents or existing actuators without any change of any description whatsoever." Walton J described the request for particulars as:

"Basically... a request to probe what in the context of this case the plaintiffs really do mean by `original' when they say `original artistic works.' Therefore it seems to me that, the answer not being sufficient, it does fall to the plaintiffs to say whether they are saying that these documents were born entirely out of the blue, which I do not imagine for one moment is the case, or, if not, what documents or actuators were referred to or otherwise used by the draftsmen when they came to draft these drawings. It may very well be that that is a difficult task. I do not pretend for one moment that it is an easy one. Moreover, it will be recalled that there is a part of the request for particulars which has not been answered, quite properly on the view the plaintiffs take, in any way so far identifying the part or parts of the drawing relied on which was not present in such antecedent drawings, documents, or actuators. That I think is something which could only be done usefully, although I do not intend to say that it must be done in this way, but realistically I would think that that was something which could only be done by taking each of the five drawings which are here relied upon and colouring some portion or portions thereof."

His Lordship required particulars to be given "of all facts and matters relied on to support the allegation of originality", identifying "with proper particularity all antecedent drawings, other documents and/or actuators which were referred to or otherwise used by the draftsmen of the drawings relied on making the drawings relied on", and identifying "the part or parts of the drawing relied on which were not present in such antecedent drawings, documents or actuators".

The Commonwealth sought to meet this case by referring to a decision of Hill J in Universal Press Pty Ltd v Provest Ltd (1989) 87 ALR 497, where his Honour refused to make a like order in respect of street directories which had obviously been derived, at least in part, from earlier directories. But in that case there was no suggestion that any work which could possibly have been the original work would have been out of copyright, or that the copyright would have been in some separate ownership. Also, the changes could readily be observed by the respondents for themselves upon a comparison of the different editions of the directory. With charts, this is not so simple a task, as the Commonwealth's own evidence made clear. And in the present case, it seems plain that the whole question of what constitutes copying, whether later charts were partly or substantially copied from earlier, and what original work is relied on, is likely to be fully debated at the hearing. I think a fair hearing demands that the respondents know now clearly what precise case they will then have to meet.

I accept, on the evidence, that the Commonwealth may not be able, either without great expense and delay or perhaps at all, to specify the particular person who made each alteration or addition to or subtraction from a pre-existing chart, in the making of the relevant charts. But it should be possible to identify the alterations, additions and subtractions themselves, and their sources, to indicate when the chart relied upon in relation to which they were effected was made, and what team or group of people worked upon it. The Commonwealth asserts that every alteration is a redoing of the whole chart, or at least of a whole section of it, but that is not something the respondents are bound to accept. It may be an important matter to decide at the hearing whether, after checking no doubt, a deal of copying of a pre-existing chart then occurred, or whether a new chart was prepared which happened in some measure to coincide with the old. If there is a large area of coincidence, of course, regard would have to be paid to evidence that chart making involves a significant subjective element, which might be thought to make large areas of coincidence unlikely in the absence of copying. These are matters which have to be confronted, and a refusal of particulars now would only defer them, and might lead to confusion upon their finally emerging at the hearing.

For these reasons, I propose to make orders that the Commonwealth identify with precision each chart copyright in which is alleged to have been infringed, the date when it is alleged to have been made, what precisely was done which is alleged to have constituted its making, and in broad terms by whom those things were done, identifying all source materials used, and if an earlier chart was used, identifying what alterations, additions or subtractions were made to or from it. The particulars must also specify by reason of what facts, matters and circumstances the Commonwealth alleges each chart on which it relies was (a) original, (b) made by it or under its direction or control, and whether copyright is claimed on any other basis, and if so what, than s 176. I should add that obviously these particulars, when given, may well raise further questions of a similar kind in relation to earlier charts, but that is a question I leave to the good sense of the parties and, if necessary, to another day.

I order that the respondents bring in, on a date to be fixed, short minutes of orders appropriate to be made in the light of the reasons of the Court. I would on that date propose, unless there is further argument, to order that the costs of the motion, so far as they relate to the matters dealt with in these reasons, be the respondents' costs in the cause.

I certify that this and the preceding nine (9) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Burchett

Associate:

Dated: 2 February 1998

Counsel for the Applicant:	D Yates with D Sibtain
Solicitor for the Applicant:	Australian Government Solicitor
Counsel for the Respondent:	A Bannon SC with R Cobden
Solicitor for the Respondent:	Gilbert & Tobin
Dates of Hearing:	20 March 1997, 23 May 1997; Written submissions: 9 & 25 July 1997
Date of Judgment:	2 February 1998