The Panel case (back in the Full Federal Court after its little sojourn higher up) is down

The Full Federal Court has handed down their decision in The Panel case, as Rothnie has noted. And indeed, as Rothnie also notes, the case is important because there are relatively few cases in Anglo-Australian law which have considered what constitutes a 'substantial part' of a Part IV subject matter.

Rothnie explains a little background to the Panel case. It's all about the Channel 10 show, with a bunch of people sitting around a table laughing over the weekly news and, sometimes, showing little excerpts from other people's programs shown during the week. It's comedy, it's light commentary on the week's news, broadcasting, and events. It's been up hill and down dale: we had 2 trial judge decisions, a full federal court decision, it then went up to the High Court, and once they re-defined the meaning of broadcast, it came back down to the Full Federal Court to determine whether Channel 10 had taken a 'substantial part' of the Nine broadcasts.

Unfortunately, one of the results of the way the case has gone is that the Full Federal Court determined the fair dealing defences before they determined what a substantial part was. That's unfortunate, because normally, you would expect the 'substantiality of the part taken' to feed into the fair dealing analysis. It hasn't. And I think the coherence of the whole analysis does suffer a little as a result.

Substantial part in relation to part IV subject matters

Anyway, now we have another judgment (and there aren't many in the common law world) on what constitutes a substantial part of a Part IV subject matter - and that matter a broadcast.

Under copyright law, you don't infringe unless you take a 'substantial part'. The Trial Judge had decided that the few seconds taken in each case couldn't, on any view, count as a 'substantial part' of the Channel 9 programs. The Full Court has overturned that finding, and some of the results - 6 of the takings were of a substantial part. The other five were not.

In essence, it looks like the FFC have moved towards the tests usually used in Part III subject matters - that is, they look at both quality and quantity, and the important issue is whether the part taken is 'the heart' or 'central' to the broadcast:

'It is now clear that the starting point for any enquiry into substantiality is not, as the judge would have it, "primarily quantitative". Nor is the principal enquiry whether harm has been caused to the plaintiff’s commercial interests. The first thing that must be done is to look at the part taken, compare it with the copyright work and ask whether it is possible to conclude from that comparison whether that part is a "substantial part" of the plaintiff’s programme. The question will often boil down to one of the following (dependent on the type of programme): Does what has been taken amount to "essentially the heart" of the copyrighted work?...Is what has been taken "the essential part of the copyright work?" ... Is what has been taken "at least an important ingredient" of the copyright work? ... Have the best scenes been taken from the programme? ...Are the excerpts "highlights" from the programme? ...Are the excerpts central to the programme in which it appeared? :...Does the portion used "constitute the ‘heart’ – the most valuable and pertinent portion – of the copyright material?" ... [a whole bunch of cases were cited here - interesting, all American. I've left the full citations out]

Hely took a similar view, talking about the 'potency of particular images, or sounds, or both', which:

'invites an assessment of the relative significance in terms of story, impact and theme conveyed by the taken sounds and images relative to the source broadcast as a whole. Whether the part taken represents one of the highlights of the source broadcast has a bearing on that assessment as does whether the Panel Segments were ‘distinctive of’ or were ‘recognisable’ as having come from Nine’s broadcast. '

So it's all about significance of the excerpt to the overall program. That kind of makes sense. Although, we are not talking about "significance" here in terms of "well, if it's the final try of the grand final, or the goal of the soccer game, or if it is the images of the plane going into the Twin Towers, then it's the 'heart' or 'core'. On Finkelstein's approach (which prevails here), programs quite apparently have 'many hearts' or 'many cores' or 'many essences' - if the excerpt can be called even a "little highlight", that's enough to make it a substantial part.


The relevance of purpose

Notably, Hely also specifically rejected the argument that the 'purpose' of the taking is relevant to whether a substantial part has been taken at all. This is interesting because this same question came up in the High Court hearing in the Stevens v Sony case - whether the purpose of taking (a cinematograph film in that case - another Pt IV type of work) was relevant to the assessment of a 'substantial part'. Sony in the case argued that purpose of taking was irrelevant. Hely seems to agree. This is quite different from the view presented in the Ricketson & Creswell looseleaf on copyright.

My colleague David Brennan will be pleased though. Because one thing the Full Federal Court have done is that they have moved away from the suggestion, found in Conti J's judgment at first instance, that whether a substantial part is taken is to be judged by reference to whether the 'takee' (copyright owner) has suffered economic harm as a result of the taking. Economic harm may be helpful in judging whether a taking is fair, but it doesn't make much sense as a yardstick of whether the taking was of a substantial part.


Differing results...

Interestingly, of course, this focus of the Full Federal Court on whether the 'heart' or a 'highlight' has been taken means that reasonable minds may differ on the result:

• one excerpt fromthe 'Inaugurual Allan Border Medal Dinner', showed McGrath not noticing the efforts of the PM to congratulate him as he went to receive the award. Finkelstein (Sundberg agreeing) thought this was a substantial part, because it was the part showing the winner and the winner's reaction to being announced as the winner. Hely J, on the other hand, said that it was only 10 seconds of a 2 hour program, and 'does not include any critical moments or highlights of the original broadcast such as Mr McGrath receiving the award or giving his acceptance speech'.
• another exceprt showed Glen Lazarus performing a cartwheel in post match celebrations of the NRL grand final. Finkelstein thought this was a substantial part because Lazarus was playing his very last game of rugby league, and was able to celebrate it with a 1999 grand final win. Hely J thought this was not a substantial part because it did not show any of the game, was incidental, trivial, inconsequential and insignificant.

Moral of the story

Those wishing to use little bits and pieces of others' work must be extra, extra careful now. Particularly about the language they use. Commentators using clips from other peoples' programs must be extra, extra careful. If you want to avoid copyright infringement you:

• must take extra special care that you engage in definite criticism of the material. Pass judgment. in bold with underlining. That will help you argue fair dealing.
• but never, never, never call the excerpt a 'highlight' or a 'little highlight' of the program. That will make a judge think that you have taken a substantial part.

(Please note tongue in cheek nature of this. Unfortunately, however, it's only part tongue in cheek. The words you use in your intro and commentary on a clip do appear to make an inordinate amount of difference on the approach that the Full Federal Court has taken, both on substantial part and on fair dealing. Sigh.)


Aaarrgghh that word piracy.

One final point. Justice Finkelstein, in his judgment, uses the concept of 'piracy' (see para 8). TIn fact, he doesn't just use it. He makes very extensive use of the concept, and appears at times to rely on it, although from a close reading, I suspect 'piracy' as used in different parts of his judgment has slightly different meanings.

The use of this concept is extremely unfortunate. To my mind, 'piracy' should be confined, in essence, to counterfeiting cases. Every other use of the term 'piracy' tends to lead to it becoming more and more meaningless - and makes it harder and harder for those not wanting absolute copyright rights to condemn what really is the bad stuff - that is, counterfeiting. So please, judges - do not buy in to the broadening of this term. Let's be exact. It's just too emotive and rhetorical a word to be appropriate in any case of copyright infringement which is less clear cut than a straightforward counterfeiting.