Griffiths v United States of America & Anor [2005] HCATrans 666 (2 September 2005)

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 Griffiths  v United States of America & Anor [2005] HCATrans 666 (2 September 2005)

Last Updated: 15 September 2005

[2005] HCATrans 666

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S113 of 2005

B e t w e e n -

HEW RAYMOND  GRIFFITHS 

Applicant

and

UNITED STATES OF AMERICA

First Respondent

MAGISTRATE DANIEL REISS

Second Respondent

Application for special leave to appeal

GUMMOW J
HAYNE J
CALLINAN J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 2 SEPTEMBER 2005, AT 9.35 AM

Copyright in the High Court of Australia

MR N.C. HUTLEY, SC: If the Court pleases, I appear with my learned friend, MR C.A. MOORE, for the applicant. (instructed by Legal Aid Commission of New South Wales)

MR P. ROBERTS, SC: If the Court pleases, I appear with MS P. McDONALD for the first respondent and I imagine there is a submitting appearance for the second respondent. (Commonwealth Director of Public Prosecutions)

GUMMOW J: Yes. That is the magistrate.

MR ROBERTS: Yes. I thank your Honours for - - -

GUMMOW J: Yes. Yes, Mr Hutley.

MR HUTLEY: If your Honours please. This application is concerned with section 19 of the Extradition Act. I will take your Honours shortly to it.

GUMMOW J: It is a couple of pages long.

MR HUTLEY: Yes, it is shortly, your Honour. As your Honours appreciate, the eligibility for extradition depends upon the establishment of a number of matters, firstly, the presence of supporting documents – that is subsection (2)(a). Those supporting documents are defined in subsection (3). Any appeal will be concerned with subsection (3)(c) and particularly (ii), namely:

a duly authenticated statement in writing setting out the conduct constituting the offence.

The offence having been identified pursuant to (c)(i) in the supporting documents. The second element for eligibility of relevance to any appeal would be subsection (2)(c) dealing with what is colloquially called the double criminality test, namely that:

if the conduct of the person constituting the offence in relation to the extradition country, or equivalent conduct, had taken place in the part of Australia where the proceedings are being conducted and at the time at which the extradition request in relation to the person was received, that conduct or that equivalent conduct would have constituted an extradition offence –

Content is given to the phrase “conduct constituting an offence” by section 10(2) of the Act, which provides that:

A reference in this Act to conduct constituting an offence is a reference to the acts or omissions, or both, by virtue of which the offence has, or is alleged to have, been committed.

The applicant was indicted in the United States in respect of two offences: conspiracy and criminal infringement of copyright. The elements of those offences in the United States your Honours will find at application book 34, line 30 and application book 40, line 30. Relevantly, in respect of the conspiracy count, your Honours – I am sorry, at 34, line 30 your Honours will see:

First, That two or more persons, in some way or manner, came to a mutual understanding to try and accomplish a common and unlawful plan, as charged in the indictment;

Second, That  Griffiths , knowing the unlawful purpose of the plan, wilfully joined in it;

Third, That one of the conspirators . . . knowingly committed at least one of the overt acts –

and the fourth element. Criminal infringement, your Honours, at 40 provides:

First, That a copyright existed for the work,

Second, That the defendant infringed the copyright . . . 

Third, That the defendant, in fringing the copyright, acted wilfully –

et cetera. Their Honours in the Full Court dealt with the conspiracy charge from application book 197 to 199. In our respectful submission, the point of error and point of importance is that their Honours considered that issues relating to the normal proof of conspiracy charge, namely the inferring of the conspiracy from the overt acts, was a relevant consideration in determining whether the requirements of the Act as to the content of the supporting documents, namely, identifying the relevant acts or omissions.

In our respectful submission, that was an error of the questions of evidence and that how one proves a conspiracy charge is irrelevant to a determination of whether one has or has not satisfied the requirement of the Act because section 19(3)(c)(ii) provides that there just must be a:

statement in writing setting out the conduct constituting the offence.

The offence, as the elements identified, is the offence of agreement and what has to be alleged has to be the agreement, not acts from which the agreement might be inferred, because whilst in a conspiracy trial one might prove the agreement by proving the acts and seeking an inference to be drawn as to the existence of the agreement, the requirement here is not that some process of inference be undertaken by the magistrate, is that the magistrate have before him or her - - -

CALLINAN J: You say that inferences are just not available?

MR HUTLEY: Exactly, your Honour.

CALLINAN J: That is going a long way, is it not, in respect of an offence which is almost always ultimately inferential?

MR HUTLEY: Your Honour, at a trial – and this is where, in our respectful submission, the error exists – my client, under this Act, cannot lead any evidence contrary to the allegations in (3)(c)(ii). Section 19(5) provides that. What it is entitled to is an assertion of the elements of the offence, not an assertion of acts from which one might infer an offence because it is to those assertions of fact that the double criminality test is applied. The double criminality, section 19(2) says, are the acts or events constituting the offence – not from which the offence can be inferred but constituting the offence – ones which, if they occurred in Australia, would constitute an extradition offence.

GUMMOW J: What provision is that, again?

MR HUTLEY: Section 19(2)(c), your Honour.

GUMMOW J: There is nothing in the extradition arrangements with the United States that qualify?

MR HUTLEY: Nothing qualifies this requirement, your Honour.

HAYNE J: So, relevantly, what should have been stated that was not?

MR HUTLEY: Relevantly, what should have been stated is Mr  Griffiths  entered into an agreement or arrangement, the terms of which were the following – to undertake the following activities which are the following criminal offences.

HAYNE J: For the conspiracy?

MR HUTLEY: I am sorry, to do the following criminal acts. Entered into the following agreement, as a part of which the object was to undertake the following criminal acts, yes, which would be criminal acts.

CALLINAN J: Would you just say that again, I am sorry?

MR HUTLEY: Perhaps it is best explained this way. If your Honour goes to page 34, there is the elements of the offence:

That two or more persons, in some way or manner, came to a mutual understanding to try and accomplish a common and unlawful plan –

What we are entitled to is an allegation, for that is all it appears in this, a statement, of what the two or more persons were, who they were and what was their mutual understanding such as to fall within the first requirement.

GUMMOW J: What does the document specify, the document that was provided?

MR HUTLEY: Well, your Honour, the document that was provided consisted of an indictment, which is at page 77 of the application book, and that goes for some nine paragraphs and, as the Full Court observed of this document – and this is in paragraph 62 at page 198:

While it is the case that the indictment could have been cast in terms having greater clarity, it is not so disorganised or opaque (when considered together with the other supporting documents) as to preclude reasonable identification of these elements or ingredients of the conspiracy offence. There is some justice in the appellant’s contention that paragraphs 2 to 9 of the indictment are concerned more with states of affairs and events than with agreements about those matters. Nonetheless, given that conspiracies are commonly proved by acts and events constituting the substantive offence, there is no misdescription of the matters in the above paragraphs as being ‘part of the conspiracy’.

So, in other words, their Honours are saying - - -

CALLINAN J: But there is an allegation that there was an agreement in paragraph 1 at page 77.

MR HUTLEY: Yes, your Honour, but then if one goes on - - -

HAYNE J: It is an agreement “to reproduce and distribute at least ten infringing copies of one or more copyrighted works”.

MR HUTLEY: That is really a repetition of the offence.

HAYNE J: Yes, I understand that.

MR HUTLEY: There is then a recitation of a series of matters which are said to be “part of the conspiracy”.

HAYNE J: Yes.

MR HUTLEY: It is not said to be part of the agreement. As their Honours observed, it is almost impossible when one reads this indictment to determine whether what is being alleged here is an overt act pursuant to the conspiracy.

CALLINAN J: Why is not paragraph 1 an allegation of at least a mutual understanding to accomplish an unlawful plan?

MR HUTLEY: But, your Honour, that does not say what we agreed to do. It merely, in essence, just repeats the criminal statute that underlies this provision, underlies the allegation.

CALLINAN J: Making an agreement is conduct, is it not?

MR HUTLEY: I accept that, your Honour, but what we are not told is what are the terms of the agreement we have made. It is made good, your Honour, in essence, by – if your Honour says that that is sufficient, then what the Full Court has come to a conclusion about is that they in paragraph 61 of their judgment at 198 have come to a conclusion that the agreement is vastly different to what is in paragraph 1. The court did not say that the agreement - - -

HAYNE J: I just do not follow what you have just last said, I am sorry. Go back and - - -

MR HUTLEY: I do apologise, your Honour.

GUMMOW J: Are you talking about paragraphs 2 to 9?

MR HUTLEY: Paragraphs 2 to 9, yes.

HAYNE J: Yes.

MR HUTLEY: Paragraphs 2 to 9 do not speak in terms of what the agreement between the parties were. Paragraph 1, as his Honour Justice Callinan observed, does speak in terms of agreement.

HAYNE J: Yes, and you have this expression “further part of the conspiracy” to which you have - - -

MR HUTLEY: Yes.

GUMMOW J: And each one is epexegetical of 1. Paragraphs 2 to 9 is each epexegetical of 1.

MR HUTLEY: Your Honour, the difficulty, in our respectful submission, with that is is that if one goes to some of them - - -

GUMMOW J: That is the way they tend to do these things in the United States.

CALLINAN J: They do them this way in conspiracy charges in Australia often. The overt acts are quite different from the elements of the offence.

MR HUTLEY: Quite, and, your Honour, the difficulty is that it is impossible to determine here is what is an overt act and what is the element of the offence. What we are entitled to under the Act is a statement of what agreement we entered into to do what illegal acts.

GUMMOW J: You keep saying what you are entitled to.

MR HUTLEY: I am sorry.

GUMMOW J: This is an Act that regulates conduct between nations.

MR HUTLEY: I take your Honour’s point, but what is required to be before the magistrate is a statement of the conduct said to constitute the offence because it is only to that conduct that the magistrate can apply the double criminality test. That is the first point. The second point, your Honours, we rely on is that there was a second substantive charge, namely a charge of criminal infringement of copyright. What was alleged, in essence, was that the applicant had being knowingly involved in an infringement of copyright in the United States.

GUMMOW J: Well, in an infringement of the United States copyright.

MR HUTLEY: The point we advanced is that that is an insufficient statement of fact or not really a statement of fact at all of conduct because copyright, and for that matter infringement of copyright, are merely legal tags describing or summarising conduct in relation to particular articles of intellectual property which have particular characteristics such as that a conclusion of law is reached that in the United States they have copyright.

One cannot call that as such, as it were, legal conclusions a statement of conduct sufficient for the purposes of the Act because to apply the double criminality test one has to be able to determine if the self-same conduct occurring in Australia at the relevant time would itself be an extradition offence. The relevant extradition offence here is section 132(2) of the Copyright Act, which provides that:

A person shall not, at a time when copyright subsists in a work, distribute:

(a) for the purpose of trade; or

(b) for any other purpose . . . 

an article that the person knows, or ought reasonably to know, to be an infringing copy of the work.

Now, in our respectful submission, the Full Court erred in failing to conclude that absent facts being alleged which enabled the magistrate to conclude that had my client done what it was alleged he did do in Australia in respect of particular articles of constituting works that would have constituted a breach of section 132(2).

GUMMOW J: So this is a complaint about section 19(2)(c), is it not?

MR HUTLEY: Yes, together with 19(2)(c)(ii) because there has been inadequate statement of the conduct. What has been alleged is a really legal conclusion - - -

GUMMOW J: This concept of equivalent conduct, is that spelt out anywhere?

MR HUTLEY: No, your Honour. Your Honour has discussed it in a number of judgments when your Honour was on the Federal Court and it is a concept, the metes and bounds of which I think your Honour has observed in one of the judgments we have referred to, has yet to be fully worked out.

GUMMOW J: But it has to have some elasticity because of differential nature in legal systems.

MR HUTLEY: Quite, your Honour. But the difficulty – take the example here – is for all one knows the precise acts done by my client, assuming they were correct, if done in Australia, would not have constituted an offence, because unless you know something about the works and who owns them and what the copyright is, or what the infringement was, as my junior observes, you simply cannot tell whether my client would have committed an offence or not. It is purely a matter of speculation.

GUMMOW J: What would one have to have to comply?

MR HUTLEY: One would have to have statement of facts, namely - - -

GUMMOW J: Facts?

MR HUTLEY: Yes, statement – not evidence, just the facts of, “This is the work; this is who created it; this is when it was created and whether they were a citizen of the United States”, et cetera.

GUMMOW J: Would you have to have material indicating that this work is also protected under the Australian Act?

MR HUTLEY: Your Honour, that in itself is a difficult question. It all depends upon the equivalent conduct point which your Honour has referred to.

GUMMOW J: That is right.

MR HUTLEY: Whether you can transpose, as it were, the circumstances of a creation to Australia or whether you have to, in effect, take the circumstances of creations that took place and then work out whether the Australian Act would apply to that work, these are all difficult questions which merit special leave in relation to this case.

CALLINAN J: Mr Hutley, can you tell me exactly what “cracked software” means?

MR HUTLEY: “Cracked software” was not, I think, particularly explained, but effectively it means undoing certain protective mechanisms which prevent someone copying it. It has nothing to do with actual copyright protection; it has just got, in effect, devices which subsist in programs.

CALLINAN J: What do you say about paragraph 9 on page 82? In view of what you have told me about cracking the software, why would that not be an allegation of unlawful conduct in Australia?

MR HUTLEY: But, your Honour, if there was no copyright in relation to the particular program in Australia, there is nothing wrong with, in effect, doing that by way of - - -

HAYNE J: So does the point come down to how much transposition is to occur? In particular, do you need to find protection under the Australian law?

MR HUTLEY: Exactly. You have to find events which would constitute an offence in Australia. To give an example, your Honour, let it be assumed that copyright in the United States or some other country is 80 years of duration, 50 years here. If they can allege purely you have infringed the copyright and the facts are that the act in Australia in respect of the very same work would be perfectly legal, it is somewhat strange that one could be extradited because of, in effect, what amounts to allegations at a level of generality that one cannot, because of the process prohibiting contest, investigate the true facts.

GUMMOW J: Do not worry about the red light for the moment. What is the outcome of some of the authorities on this question of the equivalent conduct in a specific context?

MR HUTLEY: Your Honour, the cases generally have dealt with equivalent facts in this regard. For example, one of the leading cases, which your Honour gave a judgment in, is a person was charged in Germany with, in effect, fraudulently making statements in relation to the state of accounts of a company. There was no equivalent conduct under our Corporations Law but, your Honour, the Court held that there were cognate sorts of acts in producing accounts under our Corporations Law and, in effect, that form of transposition took place to be able to assess whether the conduct was criminal or not. No one has said that one, in effect, transposes legal characterisations of events such as “There is copyright” across from one country to the next.

GUMMOW J: Yes, thank you, Mr Hutley. Yes, Mr Roberts, we would like to hear you on the second point, the one we have just been discussing with Mr Hutley.

MR ROBERTS: Your Honour, it is indeed an interesting point that in the context of this case one that we submit does not particularly arise. If your Honours would look at page 201 of the application book, your Honours will see what the Full Court said in relation to the matter of copyright and the type of infringement which was alleged to be the subject matter of the conspiracy. Manufacturers of new software, video games in which they had - - -

GUMMOW J: Well, I think Mr Hutley challenges line 35 on page 201:

For the purposes of ascertaining dual criminality under the Act it is irrelevant whether copyright in the works would notionally have existed in Australia.

MR ROBERTS: Yes, I understand that, your Honours, but even if it were correct that one needed to see whether similar – if that did not exist in the circumstances of new software that is being produced, in effect, stolen and then unencrypted for the purposes of getting on the market before the manufacturer, one would have thought that it would not be a terribly difficult question if one were to look at that in the Australian context. The facts of this case are such, we submit, that an exploration of the interesting question of dual criminality really does not arise, your Honours.

GUMMOW J: Do you rely on the first paragraph on page 202, “the documents provide . . . As in Australia”?

MR ROBERTS: Yes, application book 39 and 41 is where that material comes from, if your Honours please.

GUMMOW J:

Nonetheless, what is clear from the supporting documents is that there is a common field of discourse concerning copyright between the two countries.

Then there is a reference to the convention to which we are both parties.

MR ROBERTS: Yes. At page 39, about line 25, this is where that comes from and then on page 41 at line 30, again. We submit that factually the question that my learned friend seeks to pose really does not arise.

GUMMOW J: Where does the Full Court reach its conclusion on this issue?

MR ROBERTS: At 204, paragraphs 85 through to 87, as well as paragraph 84 of their judgment.

GUMMOW J: At paragraph 86 on page 204:

The double criminality requirement of s 19(2)(c), likewise does not require evidence of the fact that copyright in those works would notionally have been available in Australia . . . would it be an offence notionally in Australia to breach copyright substantively in the way that has been alleged in the supporting documents. This would have required that the magistrate be satisfied that the type of work pirated, ie software –

et cetera. That is what you rely on, is it?

MR ROBERTS: Yes, your Honour. Thank you.

GUMMOW J: Yes, Mr Hutley.

MR HUTLEY: Your Honour, it is exactly the concept of the type of work which creates the problem. That seems to be a gloss on the Act which, in our respectful submission, simply has no textual support. It would appear that, to take my 80 year example, the type of work which might be protected is a literary work and, if that is the case, one would, on this principle, be able to be extradited even though the act would be perfectly legal in Australia. What is the level of generality which one engages in the abstraction term? What type of work? Is it a modern computer program or just a literary work?

GUMMOW J: But does that mean that in these cases of forms of property which are territorial in their creation and operation one can never get extradition for invasion under the criminal law of those property rights unless there is a duplication of that very same property right by international arrangement in Australia?

MR HUTLEY: Your Honour, it does not have to be put at such extreme - - -

GUMMOW J: What is the drawing of the boundary line?

MR HUTLEY: That is, in our respectful submission, the difficult question - - -

GUMMOW J: I know that. If we grant special leave, then you have to suggest to us what we should be saying.

MR HUTLEY: What we say is this. Copyright being a creature of statute and to satisfy the double criminality one must be able to point to facts which would confer copyright should they be transposed in Australia. It may be that there are - - -

GUMMOW J: I think the answer to my question is yes, is it not?

MR HUTLEY: No, your Honour, because, for example, certain other – it all depends on the offence you seek to identify for the purposes of the double criminality test. It is not as if, for example, they allege that we have engaged in some form of theft of property under some other criminal statute where all that may be - - -

GUMMOW J: No. What I was putting to you is there is only property. It only exists because of some specific statutory regime. It is not a piece of cheese or a chair.

MR HUTLEY: In those circumstances we would say you have to identify facts which, if they existed in Australia, would lead to an infringement of Australian law.

HAYNE J: Is that not what the Full Court has sought to do by saying recent work, software, those two steps alone produce the result?

MR HUTLEY: But there is no – for example, who is the owner in respect of which there is - - -

GUMMOW J: Why does that matter?

MR HUTLEY: Your Honour, for infringement it must be without the consent of the owner. Ownership in the United States can be based upon completely different principles to ownership in Australia. Now, unless one is in a position to assert that there have been facts which would constitute an offence in Australia, in our respectful submission, one simply does not establish that there would have been a breach of section 132(2) at the relevant time.

CALLINAN J: At page 78, lines 33 to 36:

DOD members known as “suppliers” would upload new software to the group’s drop site sometimes days or weeks before the manufacturer’s public release date.

MR HUTLEY: Yes.

HAYNE J: Crack it and make it available.

MR HUTLEY: Yes.

CALLINAN J: .....protected anything produced, that would be protected in Australia, would it not?

MR HUTLEY: Your Honour, in the absence of some allegations, some statements of facts about the software, who made it, et cetera, one simply cannot tell. If one speculates - - -

CALLINAN J: We know it is new.

MR HUTLEY: The mere fact that it is new, your Honour, does not guarantee it a protection. In fact, great difficulties can be run into, and they are run into every day, establishing that copyright produced in foreign parts is protected in Australia. That is an everyday occurrence, as I understand it, in intellectual property because of those very problems.

GUMMOW J: It is a defence used by pirates and it usually melts away when - - -

MR HUTLEY: But, your Honour, we are being extradited, or sought to being extradited.

GUMMOW J: I understand that.

MR HUTLEY: Anyway, your Honour, I cannot take it - - -

GUMMOW J: Very well. We will take a short adjournment.

AT 10.07 AM SHORT ADJOURNMENT

UPON RESUMING AT 10.08 AM:

GUMMOW J: There are insufficient prospects of success on an appeal in this matter to warrant a grant of special leave. Accordingly special leave is refused with costs.

AT 10.08 AM THE MATTER WAS CONCLUDED