Connect TV Pty Ltd v All Rounder Investments Pty Ltd (No 5) [2016] FCA 338

The first applicant (Connect TV) claimed to hold exclusive licences to broadcast certain Russian language programmes in Australia, sourced from the Russian Federation and relayed via satellite transmission. Three of the other five applicants were the companies who produced the programmes (Russian broadcasters) in question and from whom Connect TV claimed to enjoy an exclusive licence. Of note, the Copyright (International Protection) Regulations 1969 (Cth) (CIPR) affords to television broadcasts made by a relevant broadcaster from a place in a Rome Convention country the same protection as is enjoyed by domestic television broadcasts under the Copyright Act 1968 (Cth). The Russian Federation is a Rome Convention country.

The first respondent (All Rounder) offered access to those same programmes to Australian viewers over the internet by providing set-top boxes and access codes that allowed All Rounder’s customers to access video streams from another service provider, Kartina TV (who, it seems, intercepted the original transmissions and converted them into digital content). The remaining respondents were individuals associated with All Rounder.

The applicants brought proceedings against the respondents in question for infringement (direct and/or by authorisation) of the copyright subsisting in the broadcasts of the relevant programmes. The relevant act was alleged to be the communication to the public of those programmes (via Kartina’s online facilities).

A threshold question was whether the broadcast of the content on the relevant channels amounted to “television broadcasts” within the meaning of the Copyright Act 1968. The respondents generated static by arguing, in effect, that the continuous broadcast of the sound and visual content of a television channel (or in other words, the continuous streaming of a channel) was not a “television broadcast” in the requisite sense. Justice Tracey did not consider that the relevant authorities went so far as to stand for the proposition that copyright will not subsist in the aggregation of programs (including advertising) on a particular channel as a “broadcast”, but neither did those cases sit comfortably with Connect TV’s proposition that the broadcast over a 24 hour period of individual programmes could be characterised as a single broadcast. In the end it did not matter, because the applicants sought copyright protection over every individual programme or segment thereof, and each programme was a “television broadcast” the copyright in which was owned by the Russian broadcasters.

It was at this stage that Connect TV experienced interference with its prospects for success, because it failed to prove that it was the exclusive licensee of the television broadcasts in question. Under the CIPR, a “relevant broadcaster” is a person who is entitled, under the law of the country from which the television broadcast originated, to make that broadcast and is, when the broadcast is made, a person resident in, or a body corporate that has its headquarters in, that country. Connect TV’s licensing arrangements were not with the relevant broadcasters (in effect, the principal copyright holders, being the Russian broadcasters) but with intermediate entities, and it was unable to produce the licences (if any) in place between the relevant broadcasters and their immediate licensees. Letters procured from the principal copyright holders were inadmissible hearsay, and in any event did not bridge the gap in the evidence. Connect TV’s relationship with the rights holders proved too remote.

When the focus was switched to the Russian broadcasters, however, the applicants’ claims succeeded. The evidence made good the proposition that the Russian broadcasters were the “relevant broadcasters” for the purposes of the CIPR. There also was no evidence led by the respondents to suggest that Kartina enjoyed a licence from those broadcasters.

Finally, the respondents argued that the infringing communication to the public was not made by the respondents, but by Kartina. Section 22(6) of the Act deems a communication to have been made by the “person responsible for determining the content of the communication”. That submission fell on deaf ears; although Kartina might well determine what content was available, it was All Rounder (through its set-top boxes and access codes) that facilitated the access to that content by Australian viewers. Accordingly, his Honour held that the Russian broadcasters’ claims of copyright infringement were made out.

And in other news…

  • Redbubble, the operator of a website that allows member artists to upload images and consumers to order various products bearing that image, had some success in seeking security for costs against the applicant, the Hells Angel Motorcycle Club of Australia (HAMC). Although Greenwood J accepted that the bona fides and merits of HAMC’s copyright and trade mark infringement claims (products featuring the “Fuki Death Head” and other memorable Hells Angels images could be bought from the Redbubble site) made the strength of those claims a “matter well beyond mere neutrality”, HAMC was effectively a “special purpose vehicle” (no pun intended) such that some security was appropriate. Instead of the $270,000 sought by Redbubble, however, his Honour ordered that security of $50,000 be put up: Hells Angels Motorcycle Corporation (Australia) Pty Ltd v Redbubble Ltd [2016] FCA 530 (16 May 2016)
  • The tables turned on the owner of an innovation patent for a system of handling shipping containers (similar to the claw in a claw machine game, only much bigger) when it unsuccessfully sued a competing supplier of container handling equipment for patent infringement. Not only did the respondent’s “RAM Revolver” not include a “movable component” in the sense required by claim 1 of the patent, the applicant’s letters before action were held by Jessup J to amount to unjustified threats of infringement proceedings and, to the extent that similar letters were sent to some of the respondent’s customers, contravened the Australian Consumer Law by misrepresenting that the recipient was infringing the applicant’s patent rights: NSL Engineering Pte Ltd v Australian Mobile Mining Equipment Systems and Accessories Pty Ltd [2016] FCA 614 (1 June 2016)
  • A supplier of ATMs pursuing breach of confidence and inducement of breach of contract proceedings against former employees and agents working for a rival company was put on the defensive when it used – when drafting its amended statement of claim – certain confidential information of the first defendant (a customer list, marked confidential) that inadvertently had been sent to one of the plaintiff’s subsidiaries. As Vickery J noted, that “conduct has spawned an arguable case where the ancient phrase ‘the pot calling the kettle black’ has a tale to tell”. Despite the fact that the original recipient had been advised to “do nothing with the document, tell no one about it and delete it”, the plaintiff’s in-house counsel kept a copy within its legal department, and evidently provided the list to whoever drafted the plaintiff’s amended statement of claim. The plaintiff did not offer any explanation as to how it otherwise obtained the information used in its pleading, if not by misusing the first defendant’s confidential information. In the circumstances, the appropriate relief was to strike out the relevant parts of the statement of claim, order delivery up and/or destruction of the confidential information and require the plaintiff’s lawyers (a large firm) to replace any solicitors or counsel who had seen or made use of the confidential information: DC Payments Pty Ltd v Next Payments Pty Ltd [2016] VSC 315 (7 June 2016)