In our previous article, "
Optus Wins Most Recent Footy Wars", we looked at the
Federal Court's decision permitting Optus to offer its users
"near-live" broadcasts of sporting events, without having
to pay licence fees to the rights holders, under the
"time-shifting" exception under the Copyright
On 27 April 2012, the Full Federal Court of Australia overturned
this decision, finding that the time-shifting exception under the
Copyright Act did not extend to content providers such as
Here, we take a look at the key questions on appeal and
implications for content providers.
KEY ISSUES ON APPEAL
There were two primary issues on appeal:
When the copy was made of the AFL or NRL matches, who (for the
purposes of the Copyright Act) was the maker of the
recording? Was it Optus, the subscriber, or both jointly?
If in copying the matches Optus infringed the Copyright
Act, then was Optus able to claim the time-shifting defence
available under s 111?
Who made the copy of the matches?
Optus argued that it was not the maker of the copy because of
the nature of the technology. The service was similar to a
photocopier or VCR/DVR, which was automated and using programmes
which the subscriber identified to be copied and initiated the
The Court rejected this, saying it did not necessarily follow
that the subscriber alone made the copy by clicking a button that
initiated the copying and just because the service was automated,
did not protect Optus from infringing the Act. Rather, Optus was
the "main performer" of the act of copying".
The Court found that Optus was not merely making available its
TV Now Service to another who uses it to copy a broadcast. Rather,
Optus captured, copied, stored and made available for reward,
programmes for later viewing by another.
The Court went on to say that Optus' relationship with its
subscribers was not one of agency. And even if Optus was an agent,
it would still be making a copy in breach of the Copyright
Act and be jointly and severally liable with the subscriber
for making the copies.
It was arguable as to whether the subscribers were also liable
under the Act in this case and whether they may claim the defence
under s 111, however, as no subscriber was joined to the action,
this issue did not need to be decided.
Could Optus claim a defence under s 111?
Section 111 of the Copyright Act provides a defence to
copyright infringement where the copy is solely for private and
domestic use. The Full Federal Court ultimately found that there
was nothing in the language of s 111 to suggest that the provision
was intended to cover commercial copying on behalf of individuals,
notwithstanding suggestions of bringing the provision into line
with technology neutral rights.
Technological neutral legislation is a hot topic this month with
the release of the
Convergence Review Report and this case is no exception. Whilst
the Court noted that s 111 did not necessarily exclude later
technological developments in copying, it found that no principle
of technological neutrality could overcome what they saw was the
clear and limited legislative purpose of s 111 – that the
defence was relevant only to private and domestic use and not for
The market impact that the time shifting provisions had when
introduced into the Copyright Act was negligible at the
time given the then current practices of users copying a programme
for their own use. The same could not be said in this case and with
It will be interesting to see whether the legislature accepts
the Court's invitation to comment on or amend the provision in
light of this issue.
In the meantime, Optus has sought leave to appeal this decision
to the High Court and has suspended its TV Now Service.
The Full Federal Court recognised that its decision turned on
the particular facts and circumstances of this case, and the
particular technology of the Optus TV Now Service, and acknowledged
that different relationships and technologies may yield different
conclusions as to the "who makes the copy" issue that it
So the law cannot be considered as settled in this area. The
case does give some guidance to the industry on what is and is not
likely to be deemed to be copyright infringement in Australia, but
ultimately this will doubtless be something for the legislature to
consider going forward.