The NRL and AFL - representing the football clubs in the two largest football competitions - have granted Telstra the exclusive licences to communicate matches to the public via the internet and mobile devices. That licencing involves substantial revenue. Last year Optus began offering its 'TV Now' service, enabling users to record free-to-air television programs for replay on compatible devices: Apple devices, MS-based personal computers, Android devices and 3G devices. That service reflected the timeshifting for personal use provisions in the Copyright Act 1968 (Cth), under which domestic consumers are allowed to make a copy of free to air broadcasts for subsequent personal viewing (ie not on a commercial basis). The recorded content delivered by Optus under its service was held in the Optus cloud - its servers - rather than on the device used by Optus' customers. Optus's terms & conditions for consumers using TV Now specified that its customers would comply with s 111 of the Copyright Act, ie copying solely for private and domestic use.
Convergence remains a work in progress and as yet there is no full compatibility between devices such as a MS Windows personal computer and an iPhone. As a result TV Now involved multiple copies of the free to air broadcast, specific to the particular type of device, with the consumer receiving a streamed recording. In practice the Optus customer initiated 'recording' of the broadcast by through an electronic program guide. Optus then generated four unique recordings (one for each type of device) of the selected program for the personal use of the consumer. A subsequent request to access the content - ie to play the recording - resulted in Optus streaming the relevant copy to the corresponding device. Access varied: consumers with PCs, Android and 3G devices needed to wait until after the broadcast had concluded (eg the match had to finish before you could see any of the recording), whereas consumers with Apple devices could watch the action with only a short delay (within about two minutes of what was happening on the field). Consumers with any of the devices under the Optus service could view the recording within 30 days of the original broadcast.
The football leagues, claiming the service infringed their copyright in broadcasts, forecast an injunction against Optus. The telso responded with action in the Federal Court, claiming there had been unjustified threats of infringement under s 202 of the Copyright Act 1968 (Cth) regarding some live and recorded NRL and AFL matches of September and October 2011. Telstra, as exclusive licensee, was later added as a party.
Telstra and the two leagues as copyright holders alleged that Optus in making cinematograph films under s 10(1) of the Act infringed their interests in the free to air broadcasts and communicated the infringing recordings to users of its service for viewing on the consumer's devices. Optus unsurprisingly contended that it customers had made the films or copies, with those users not infringing because of the s 111 timeshifting exception (ie the provision for private and domestic recording).
Rares J of the Federal Court considered seven issues -
1. Who performed the acts involved in recording the NRL broadcasts, AFL broadcasts and AFL films ('the Copyright Works') for the operation of the TV Now service?The Court's conclusion was that service did not infringe copyright in the broadcasts of the AFL and NRL games in the particular ways alleged by the rightholders.
2. Does s 111 mean that the recording was not an infringement of copyright? If section 111(2) does not apply, is Optus liable for copyright infringement by way of authorisation?
3. When the recording was viewed, who did the acts of electronically transmitting the Copyright Works?
4. When recordings were streamed to a user, was this a communication 'to the public'?
5. Did Optus make the Copyright Works available online?
6. If the answer to 5 is 'yes', was this to the public?
7. Is the digital file comprising the NRL footage streamed to users an 'article' within the meaning of s 103 or an 'article or thing' within the meaning of s 111(3)(d) and, if so, was it distributed for the purpose of trade?
In relation to the question of who did the recording the finding was that the consumer made each recording of a broadcast by clicking on the device's 'record' button. Rares J indicated that the consumer was solely responsible for the creation of the recording: each TV Now user decided whether to make the recording and only that user had the means of being able to view them. If the user did not click 'record', no recording would be brought into existence for subsequent play. Rares J indicated that the service was substantially similar to use of a VCR, DVR or similar device to copy a free to air television broadcast. Optus provided all the significant technology for making, keeping and playing the recording but the consumer's agency was no different to that where an individual utilised technology at home to legitimately record a broadcast.
Rares J was satisfied that recording the broadcasts was not an infringement of copyright, given s 111(1) and (2) of the Act. The evidence suggested that individual TV Now users watching a broadcast or film of a football game or television program on their mobile device or PC would only be doing so for personal pleasure or interest. In particular the Court noted that the consumers agreed with the terms and conditions of the TV Now service limiting use to a non-infringing use that complied with s 111(1). Rares J indicated that watching a broadcast 'near live' (through an Apple device) was consistent with the definition of 'private and domestic use'. It will be interesting to see whether the free to air broadcasters respond by seeking a statutory fix.
In considering whether Optus communicated the recording when the TV Now user played it the Court held that the users were responsible for any such communication by seeking to play the programs they had earlier selected for recording. That responsibility reflected the shape of the TV Now service, with the consumer determining the content of any streaming to them of a recorded program. The situation of a TV Now user clicking 'play' was "quite unlike" that of someone browsing the net who was unaware/uncertain of what content may be delivered by clicking on a link. The TV Now user had previously determined that what would be recorded; by seeking to play the recording the consumer determined that their device would display the recording just as if they had inserted a video cassette or DVD into a VCR or DVD player and pressed 'play'.
Was the communication to the public? Rares J held that no communication 'to the public' occurred. The fact that the user may be with one or more other persons, such as family members or friends, when the communication is received will not, ordinarily, convert its private and domestic nature to being that of a communication 'to the public'. When the user made the recording and when that consumer made the communication of it, no infringement occurred. The digital file streamed to the TV Now user was not an infringing 'article' or 'article or thing'.
