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24. PUBLIC PROGRAMS

Panel of Experts:

Mr Simon Elliott

Assistant Director, National Gallery of Australia

Mr Peter Naumann

Head, Education & Public Programs, National Gallery of Australia

 

INTRODUCTION

Most public collecting institutions administer programs that seek to educate and engage the community. Central to these programs is the provision of public access, for access, whether physical or digital, is a pre-condition to intellectual engagement. In the old days this required physical access but these days, access to public programs is just as likely to be off-site and digital. How we meet, engage, stimulate and educate our public, is still evolving.

There is no one area of law that is of special importance to those who administer public programs: those working in this section need to have an all-round knowledge of legal issues and risk-management. For example, in drafting the application form to be used for people wanting to join a program, particular thought has to be given to the contractual issues: what is the point in drafting a document that is legally ineffective? It can be simple and ‘non-scary’ and still have legal meaning and force. To do so requires some knowledge: it is a skill, not an intuitive attribute. Further, if an activity involves any kind of physical risk, the documentation may require some consideration of occupiers liability, negligence, occupational health and safety regulation, volunteer and employment law, trade practices law and exclusion for liability. These things are easy for the bush-lawyer to get wrong. (‘But, heavens above, it’s just a simple little document. Surely I can just write something common sense? I’ll just adapt the one used at my colleague’s institution’. And in so doing, they fail to apply the same rigorous standards to the legal documentation as they apply to other parts of their professional work.)

As soon as members of the public come onto the grounds to attend lectures or other events, there are public liability issues. These are real risks. People do hurt themselves, sometimes in very predicable ways; at other times in ways that are hard to believe. They are all legal matters and those organising any program in which the public is going to be physically present, must take into account the legal duties that they owe to their visitors.

The relationship between the organisation and those that it invites to present lectures, tours and workshops is often given insufficient attention. What is the legal relationship between the organisation and its guides; its guest lecturers; the group of musicians that play in the vestibule on Sunday afternoons; the sound or lighting technicians associated with a performance? Is it different if the visitor is paying for the lecture series or if it is free? The list goes on.

Even the content of the programs can themselves cause problems. What are the copyright requirements when the lecturer wants to show images in the course of the presentation? What if the presentation includes music? What is the position if the lecturer says something that is defamatory in the course of the lecture? Or does something obscene?

What obligation does the institution have in respect of vetting those who are given the care of children who come to participate in public programs? Yes, of course, there are rules about responsibility for children and they can be taken to ridiculous lengths – but you must know what they are and how they work. Without this basic knowledge you are not administering a public education program – you are running a lottery.

CHAPTERS RELEVANT TO PUBLIC PROGRAMS

Rather than regurgitate material already set out in this work, let me point out the chapters that I believe are particularly important to those administering public programs:

  • Collection management
  • Acquisition of collection items
  • Permissions and Acknowledgements
  • Expression
  • Copyright
  • Philanthropy
  • Consultancies
  • Duty of care – general principles
  • Duty of Care to the public and lenders
  • Duty of Care to staff (Occupational Health & Safety)
  • Contracting employees & consultants
  • Volunteers
  • Ethics, conduct & conflicts of interest
  • Insurance and indemnification

It’s a long list but quite manageable. Let’s put it another way: exhibitions may be seen as the public face of the collecting institution. And of course they are just that – the public face. A more intimate face of a collecting institution is reserved for those who participate in its public programs.

CONTRACTS

Because the area of public programs is so sprawling, it uses many different types of contract.

1.1.  Live Performance Contracts

It is quite common for a collecting institution to contract performers. Sometimes these performances are to create a general ambience for visitors; other performances are directly linked to exhibitions or particular collection material.

It is usually most practical to create a standard form for these kinds of contract. Such contracts need to contain all the performance-specific terms that vary from deal to deal as well as all of the legal terms that will rarely change. You want the contract to read easily and be simple to negotiate and administer. This is best achieved by using a ‘front-loaded’ structure: put the schedule of variables at the front and the legal terms and conditions that are largely immovable, at the back. With this format, when you prepare a performance contract you only have to fill in the front section and the complex stuff remains untouched unless and until it is specifically negotiated.

The following is a checklist of things that should be considered when contracting performers. It is divided into two sections: The things that should be in the schedule (i.e. the things that change from contract to contract) and the things that should be in the standard conditions that accompany the schedule (i.e. the legal conditions that are unlikely to change).

 

LIVE PERFORMANCE CONTRACT
SCHEDULE
1. Specified Personnel What are the names of the personnel? If there are particular people who are key to the performance, they need to be specified.
2. Performance Description What are the specifics of the program (details of songs/music) and also attire or costume. This is important so that the institution can be sure that the performance is appropriate for its purposes and reputation.
3. Venue Specify where is the performance to take place. Are there any particular restrictions relevant to that space?
4. Technical What sound and lighting is required? Who is to supply it?
If it is the artist, when will access be given for set-up?
If it is the institution, what does the artist require?
5. Rehearsal Will there be a rehearsal or sound check? (This is usual.) When? What are the access arrangements?
6. Dressing rooms Will you provide dressing rooms? Is there a locked space for their valuables, instruments etc?
7. Catering Will the artists be given food and drink? What?
8. Publicity material Does the performer have to supply publicity and promotional material for approval. If so, by when?What are the institution’s obligations concerning promotion?
9. Travel and accommodation If the performer is from out of town, what are the travel and accommodation arrangements. Specify mode and class of transport. Specify whether accommodation is ‘room only’, b&b etc.
10. Payment What is the fee?Are there payment milestones? Some acts require a deposit (10% is common); specify time within which payment will be made and any formalities you require (ABN, tax invoice etc.)If electronic payment is preferred, this is the place to get the performer’s bank details.
11. Recording Is the organisation permitted to photograph, film or record the performance?If so, what is it allowed to do with them: can it use them for web-casting (live or retrievable), promotional material and publications in connection with the organisation, archival purposes, merchandising, etc?If so, are any additional payments required?
12. Contacts Specify the institution’s contact person (with contact details).Specify the performer’s contact person (with contact details).

 

 

STANDARD TERMS
1. Specified Personnel Where this is relevant, the contract should require that the services be delivered by the specified personnel.
No deletions, additions or substitutions should be allowed without your approval.
The organisation must have the right to request sufficient information so that it may undertake police checks.
2. Performance Description It is often prudent to include a clause requiring that that the performance be presented in a professional manner with consideration to the status of the Museum and the inclusion of children within the audience.
Is there a specific artist promise that no part of the performance or interaction with the audience will involve language, gestures, attire or references that would be inappropriate to the audience (including children).
3. Dressing rooms Is there an exclusion of liability for possessions that are stolen or damaged either in the dressing rooms or elsewhere?
4. Cancellation If either party wishes to cancel, what notice and what formalities are required?
When the agreement specifies personnel making up the act, where such a person is unable to perform, the artist is usually required to immediately inform the organisation and use all reasonable endeavours to propose a suitable substitute. What is to happen is a suitable substitute is not agreed? Does this give the hirer the right to terminate?
5. Force Majeure What events will be defined as ‘force majeure’? They should be specified. What is the consequence?
6. Museum directions It is essential that the terms require the artist to comply will comply with all requests or directions by the collecting institution regarding noise levels, security, safety, emergency procedures, police liaison and crowd control measures. The institution must be able to stop the performance at any time.
7. Intellectual Property The Artist should promise to ensure that the will not infringe any third party intellectual property rights and that the performer is responsible for obtaining copyright clearances and licences where necessary. Additional care with this is necessary where the performances may be recorded.
8. Security and Supervision The venue usually agrees to provide appropriate security and supervision to permit the artist to undertake the performance and to ensure artist safety.
9. Invoice and payment details The performer will be required to provide a tax invoice. This is what triggers payment. There may be additional details required of the invoice. These may include a description of the services delivered, name of their contact officer, any BAS details and the amount claimed.
10. Insurance Specify what cover the performer has and make it clear that all other insurances are a matter for the performer. It would be unusual for the institution to provide any personal accident insurance or worker’s compensation or insurance over equipment or personal effects for the performer.
11. Variation It is sensible to require that any variations be in writing. This can be email but there does need to be a record of any changes so that clarity of expectations is maintained.
12. Boiler plate Most of these agreements have clauses relating to warranties, jurisdiction, dispute management and other matters. Keep them to a minimum because they are rarely called for in contracts such as these that have such short life-spans. They are important but can be overdone.

1.2.  Lecturers and Other Public Speakers

When speakers are engaged to deliver a paper, a workshop or some other public presentation, most institutions are quite informal in their arrangements. This is no bad thing as the expectations and arrangements are usually quite straightforward. One person giving a lecture is less problem-prone than putting on live musical entertainment. It’s low in the risk-management scheme of things but this doesn’t mean that there isn’t a better way of doing it than the one you presently use.

Have a look at the previous section on ‘live performance contracts’. Instead of doing everything by informal letters or emails, might there be an advantage in having a set form that the organisation provides every time it books a speaker? If you adopt the structure of a front-loaded agreement that sets out in one section the details relevant to the particular engagement and in the other section the standard terms that protect the interests of the institution, would not the interests of the institution be better protected? A standard form agreement such as this would be a short and simple document – no great legal complexities are necessary. However if you go through the checklist above you will see that some of the issues raised would be sensible to include in a pro-forma contract for lecturers and presenters.

1.3.  Commissioning Contracts

An important part of many public programs is the commissioning of freelancers to provide content for articles and educational materials. These may be intended for use for training volunteers, distribution to exhibition visitors, inclusion in the institution’s members’ magazine and so on. Such commissioning contracts are not complex legal creatures. Often these are done very informally through an exchange of letters or email. There is nothing wrong with such informality.

Such correspondence is usually focussed on:

  • Who – who is the author?
  • What – what is the topic?
  • Length – how long is the piece expected to be?
  • Use – Where will it be first published? How else will it be used?
  • Readership – to whom should the piece communicate?
  • When – when must it be delivered?
  • Fee – is there a fee and if so, how much and what are the payment details?

Where the correspondence often falls down is that it fails to provide clarity about ownership and usage.

1.4.  Ownership

Who is to own the copyright in the commissioned piece? The Copyright Act 1968 provides that the owner of copyright in a commissioned work is generally the author.[1] If the institution commissioning the work wishes to vary the general position and be the owner of the copyright, this must be a specific term of the contract.[2] This can be achieved very simply by stating something along the following lines: ‘Upon delivery, the (museum etc) shall be the owner of copyright in the work.’ It is not complex but unless the intention is clear, the author will remain the copyright owner.

This is an important consideration whenever commissioning freelancers to create work. Sometimes the institution does not need or want to own the copyright. However if it intends to reuse, edit or combine the work with other material, it may need to. Remember that the usual commissioning fees do not necessarily take into account a transfer of ownership. Where the contract includes a transfer of copyright, the contract is actually two quite separate deals rolled into one transaction.  One is for the work involved in bringing the work into existence and allowing its use; the other is the transfer of intellectual property. Both should be paid for.

1.5.  Usage

Commission agreements naturally specify the intended use of the work.

If the commission is stated to be for a particular purpose, it is assumed that the fee reflects that usage. If the commissioner later decides to use the work for other purposes it may well be a breach of an implied term in the contract, namely, that the use of the work is restricted to the stated purpose. Generally, if the intended use of the work is ‘one off’ then you don’t need to own the copyright and the fee need only reflect that limited use. However if you are likely to wish to reuse the work or need to edit and combine it with other materials, you should either acquire the copyright (and pay for it) or be very clear in the commission agreement that it includes a licence that is sufficiently broad as to cover any future uses that the institution might choose.

Similarly, the commission agreement should specify the media in which the work may be used. If the agreement states that the work is commissioned for inclusion in the institution’s magazine, this does not give you the right to include it (or excerpts of it) on your web site. These days it makes sense to be technology neutral and inclusive.

Accordingly, the commissioning agreement might include a sentence as follows:

Although the primary purposes of this commission is to (e.g. publish the work as educational materials) we shall be entitled, in perpetuity and without further fee, to use the work for any other purpose relevant to the work of the (museum etc). To achieve these purposes, we may use any medium or technology, whether now known or yet to be invented.

Although this may seem overkill, it is not. If you might wish to reuse the commissioned work the easiest time to acquire the rights to do so is when entering the relationship.



[1] s.35(1)

[2] s.35(2)

Introduction

INTRODUCTION

The body of a collecting institution is made up of many interconnected parts. Although some of those parts do not readily recognise the importance of the role played by others, their interdependence is irrefutable. Everyone involved in the life of the institution plays a role in ensuring that the public purposes of the collection are fulfilled.

To the modern collection, those working in collection management are no more or less important than those who work as curators. Both are essential. For the institution to operate with maximum effectiveness, each must understand and respect the needs of the other, for neither are there to serve their own interests. The responsibility of every staff member is to the public purposes of both the collection and the institution.

This is a book about the legal issues that arise in the daily life of a collecting institution. Although its subject may be expected to be dry, it is written for the professionals working within collecting institutions. If ‘dry’ means that there aren’t many car chases, it is dry. However there are lots of intellectual labyrinths that you will find fascinating. If I am right, there will be many sections that will make you think, ‘Ah, that’s how that works’ or “So that’s how it can be done!’

This book is a personal approach. It is a result of many years working for collecting institutions and seeing the difficulties that arise and noting how those problems can be resolved, or even better, avoided in the first place. Some readers will disagree with some of my comments. That is as it should be. Experiences differ and the evaluation of experiences is a subjective affair. I hope that through the way that the project has been developed, these differences will work to enrich and improve the book.

The project started when, some years ago, I proposed the project to the National Museum of Australia. It was greeted with great enthusiasm and support, but politics and people changed. Then the Collections Council of Australia became the publisher and it was during this period that the project took its current shape. The work is now published by Simpsons Solicitors – one of the only firms in Australia to specialise in servicing the legal needs of collecting institutions.

It is important to appreciate that Collections Law has placed its roots strongly in the collection community. While I devised the table of contents, those subject areas were debated within and approved by the both the National Museum and later, the Collections Council of Australia. Each area has a number of experts from the profession who have volunteered to read drafts and make comments. These experts have been an extraordinary resource for it is their experience and skill that ensures that the material is professionally accurate and relevant.

In some chapters, I have invited an expert to be the author or co-author. These are subjects on which I do not have sufficient experience, to thunder and pontificate.

When all of the chapters are complete it is intended that the book be published in paper form. It may remain a digital creature. That decision is not wholly mine.

So much for process. Now a last word about purpose. Collecting institutions are unusual in that they own and administer assets worth many millions of dollars. Yet they do so without the support of much legal expertise. Smaller organisations rely on the generous support of volunteer lawyers from their local community. The large state and federal institutions have access to their government legal services. A few institutions now have in-house lawyers and that is an excellent and recent development. In general, very few collecting organisations have ready access to lawyers who are experienced in collections law or the collections environment. When I was a student, a lawyer told me that the need for specialisation was a deceit: ”Just tell me the facts and I’ll tell you the Law!” Those days, like that lawyer, are gone. The collections world is a very specialised environment in which very sector-specific legal issues arise. Yes, the issues are all tackled by the application of general legal principles but prudent legal problem-solving demands knowledge of the practices, standards, expectations and limitations of the sector. Still, I hope that this book will also be useful to your advisors so that they can work more effectively with you.

Remember, a lawyer’s most lucrative client is the ‘bush-lawyer’. The best client is an informed one who doesn’t pretend that they know it all.

The purpose of this book is to give you information so that you can do what you do, better. Don’t think of the Law as seeking to inhibit, restrict or forbid. Look at it as enabling. It is my hope that this book will provide you with knowledge and understanding as to the legal tools that you can bring to enhance your own performance and, in so doing, promote the public benefits that flow from vibrant and effective collections.

Shane Simpson

March 2012

25. RESTRICTIONS ON FREEDOM OF EXPRESSION

Authors: Shane Simpson and Richard Potter [1]

A. Introduction

The law restricts the freedom of expression in different ways. The most obvious, are the laws against obscenity, defamation and more recently, discrimination.[1]

These restrictions are relevant not only to the content of the material but also to the manner of distribution and the place and manner of exhibition of the material. For example, the classification of publications, films, and digital media can impact on publication or exhibition, not only in the traditional media of print and broadcast but also DVD and Internet. Such restrictions are often antithetical to the intellectual freedom so important to both art practice and curatorial practice.

Throughout most of Australia,[2] it is misleading to talk of a right to freedom of expression. Certainly everyone in Australia has the right to be an artist, a performer, a writer, and to curate and present exhibitions. No law permits it and no law forbids it, and the freedom to express oneself can only be protected in a limited way.[3] Unlike the United States where the right of free speech is guaranteed by the First Amendment of the Constitution, in Australia, freedom of expression is not an inviolable constitutional right, able to override legal restrictions or government action.[4]

Two jurisdictions have bucked this approach: Victoria and the Australian Capital Territory. The first was the ACT and its approach was simple and brief: section 16 of the Human Rights Act 2004 created the first right of to freedom of expression in Australia. It is in the following terms:

Freedom of expression

(1)         Everyone has the right to hold opinions without interference.

(2)         Everyone has the right to freedom of expression. This right includes the freedom to seek, receive and impart information and ideas of all kinds, regardless of borders, whether orally, in writing or in print, by way of art, or in another way chosen by him or her.

Just two years later, Victoria introduced a right to freedom of expression with section 15 of the Charter of Human Rights and Responsibilities Act 2006. It took a more comprehensive approach:

Freedom of expression

(1) Every person has the right to hold an opinion without interference.

(2) Every person has the right to freedom of expression which includes the freedom to seek, receive and impart information and ideas of all kinds, whether within or outside Victoria and whether:

(a) orally; or

(b) in writing; or

(c) in print; or

(d) by way of art; or

(e) in another medium chosen by him or her.

(3) Special duties and responsibilities are attached to the right of freedom of expression and the right may be subject to lawful restrictions reasonably necessary:

(a) to respect the rights and reputation of other persons; or

(b) for the protection of national security, public order, public health or public morality.

This is an excellent statement as it articulates a balancing of the social responsibilities that attend a right of expression. There are limits. It is a freedom within boundaries.

The belief in freedom of expression is a fairly recent phenomenon, perhaps concomitant with the artist’s role transition from tradesman to independent genius. Similarly, the right of collecting institutions to show confronting material is something that is changes with the role of the museum, the politics of the day, and the manner and place of the display.

Certainly, the restriction of creativity, of ideas, is not new. The experience of many centuries shows that censors and their motives are extraordinarily diverse. There is the censorship imposed by religious organisations, such as that exemplified by the various popes who sought to reduce or remove the licentiousness that they perceived in Michelangelo’s Last Judgment’.[5] The political regulation of artistic freedom is similarly easy to point out. That art can be ‘ideologically corrupt’ is illustrated by the attitudes of Soviet Russia to ‘bourgeois’ art, the Nazi restrictions upon ‘degenerate’ art, the cultural stricture of the American ‘McCarthy period’ or the Taliban’s destruction of Bamiyan’s majestic fifth-century Buddhas.

One of the most obvious tools of control is the legal system itself. The law of obscenity, the law of defamation, classification regimes and anti-vilification provisions are not as dramatic as some earlier forms of restriction, but restrictions they most certainly are.

The first section in this chapter, ‘From the Obscene to the Offensive’ will examine the origins of obscenity law, the legislative framework that governs the law of obscenity and introduce the different ways in which artistic merit may be taken into account in the context of restriction of artistic expression. This section includes some comments on the compliance with and enforcement of these laws. It will then examine the interrelated statutory regimes that govern the classification, distribution and restriction of work that might be considered obscene, indecent or offensive, and the regulation of online services.

The second section examines the law of defamation. The laws of defamation provide our society with an expensive, highly complex, unsatisfactory apparatus by which some of its individuals can defend their reputation after others have exercised their freedom of speech. It is a balancing mechanism. By it, we are restricted in our commentary on others and indeed, others are restricted in their commentary on us. It is an area of enormous legal complexity and few lawyers are expert in its intricacies. This chapter discusses the components of defamation and its attendant defences of truth, fair comment and privilege.

The final section briefly looks at the legislative restrictions imposed under anti-discrimination legislation. While there are exemptions under the legislation for artistic works and it is likely that they will be interpreted so as to protect artistic expression, the parameters of those exemptions have yet to be conclusively determined.

B. From the Obscene to the Offensive

It is the aesthetic which distinguishes the artistic from the pornographic, the moral which provides the societal gauge that transforms the erotic into the obscene, and the utilitarian which suggests that the members of a healthy society enjoy only pure thoughts and can have no proper use for obscene or indecent publications, images or text.

Obscenity laws were originally concerned with protecting people from materials that might have a tendency to ‘deprave’ or ‘corrupt’ readers or viewers. They restricted access to publications, works or exhibits that were seen to have no redeeming social value.

There has perhaps been a shift in more recent times that recognises, in a limited fashion, the subjective nature of judgment concerning what is obscene, indecent or offensive. The concern with nudity and sexually explicit materials has been replaced by a broader definition of offensiveness that includes depictions of drug use or violence alongside sexually explicit material. The underlying policy reflected in our classification regime is one that seeks to protect members of a society from unwanted exposure to indecent or obscene materials, while at the same time recognising the rights of adults to see, hear and read what they want.[6] This is balanced by the taking of special measures taken to protect children from accessing or being exposed to confronting or potentially indecent material.[7]

The English Royal Academy held an exhibition in 1997 entitled Sensation. Artworks included depictions of the Virgin Mary surrounded by pornographic images, a painting of the Moors murderer, Myra Hindley, made up of child’s handprints and depictions of children with images of genitalia superimposed over their faces. The gallery avoided prosecution by designating the exhibition room in which these artworks were displayed an ‘adults only’ space and posted strong warnings that some of the artworks could be considered ‘distasteful’.[8] Would an Australian public gallery have avoided prosecution?

Role of public galleries

Exhibiting institutions themselves play an important role in defining what is acceptable, for their acquisition policies are insidiously influential in determining what material the general public can see. The formation of the Salon des Refuses and the fame that hindsight accorded many of its artists stands testimony to the powerful restrictive influence of the art establishment. Similarly, while one may complain about the machineries of censorship legislation, the commercial galleries and art museums themselves perform considerable informal censorship. Their guidelines are generally informal and unavailable for public scrutiny.

Arguably there is a need for major institutions to stand up for freedom of expression by publicly defending the material they choose to exhibit if they come under attack. By providing for a reasoned and intelligent public discourse in such circumstances, they enhance the public appreciation, understanding or at least tolerance of ideas and expression. Finally, in any consideration of the tools of control, one must acknowledge the role of the critic, the person who can promote the interests of certain creators and institutions and damage the reputations of others.

When considering the restrictive potential of obscenity law, the role of public galleries is an increasingly important one. There have been a number of occasions in Australia where pressure has been brought to bear on institutions that exhibit work that are sexually explicit and which some would characterise as obscene. It is a tradition that reaches past the removal of the Arthur Boyd Lysistrata etchings from the Bathurst Gallery and even back beyond 1907 when Norman Lindsay’s pen and ink drawing Pollice Verso was hung face to the wall at the National Gallery in Victoria. Indeed there are numerous ways that censorship can occur:

  • Hiding the offending portions: In 1985 a Tasmanian artist, Anne McDonald, was invited to exhibit in Perspecta ’85 at the Art Gallery of New South Wales. After complaints, reportedly from some attendants, the gallery refused to exhibit the works. After certain pressure it agreed to exhibit the photographs if they were ‘edited’. This consisted of attaching large and obvious black shapes over the sexually explicit portions of the work. After only a few days, the covers were well dog-eared from being continually lifted by members of the public who wished to see what was being so obviously censored. To the curator’s credit, the manner of censorship emphasised the process to the viewers. The censorship was explicit.
  • Removal of the work, such as when Nigel Thompson’s painting from the 1984–1985 Sulman Prize exhibition at the Art Gallery of NSW, after complaints from some members of the Art Gallery Society.
  • Cancellation of the show: Sensation was a well-named show.[9] When the deliberately provocative show opened at the Royal Academy of Arts in 1997, visitors were greeted with the following warning:

There will be works of art on display in the Sensation exhibition which some people may find distasteful. Parents should exercise their judgement in bringing their children to the exhibition. One gallery will not be open to those under the age of 18.

There was violent protest, damage to works, extensive press criticism – and the exhibition attracted over 300,000 visitors. When the show opened in New York at the Brooklyn Museum of Art in 1999, public outcry was enormous, violent and the museum’s funding was threatened. In Australia, the show was cancelled by the National Gallery of Australia – not on the basis of its content but because, as the then director declared, the show was ‘too close to the market’. [10]

  • Alteration of the work itself. When certain persons from the Art Gallery of New South Wales disapproved of the drug references in the painting Henri’s Armchair by Brett Whiteley, the artist was asked to paint them out. Even more extraordinary was the incident in which the Art Gallery of Western Australia ordered a conservator to painting the sexually explicit portions of Whiteley’s major work, American Dream.[11]

The threat of prosecution can be enough for galleries to withdraw a work or restrict public access. In 1982, Juan Davila’s Stupid as a Painter was seized by the Vice Squad from its place of exhibition in the Biennale of Sydney. The complainants on that occasion were an evening newspaper and a member of the Festival of Light who was a candidate in a then approaching by-election. The issue was fought, almost entirely, in the media. After timely comment by the Premier to the effect that the Vice Squad had no place in art galleries, the Minister of Police ordered the Vice Squad to return the work. It was bravely shown to the public again at the University of Sydney’s Power Gallery, shielded by an alluring red screen and a sign which read:

Viewers are advised that they may find some parts of the work in this bay offensive and disturbing. Since the work is classified with an R-rating it may not be viewed by those under the age of 18. Should any question be raised as to the legal age of a viewer, he or she will be required to complete a form stating name, address and date of birth.

In 1993 the National Gallery of Victoria came under pressure to remove Serrano’s  Piss Christ from display.[12] In this case the complaints came from the Catholic Church, represented by Archbishop Pell, who argued that the image was blasphemous. Pell also applied for an injunction restraining the gallery from exhibiting the work on the basis that it was in breach of the indecency provisions of the Summary Offences Act 1988 (NSW). While Pell’s action was unsuccessful, the catalogue from the exhibition was submitted to the Film and Literature Classification Board and given a Restricted Classification.

Certain exhibitions, such as a retrospective of the work of photographer Robert Mapplethorpe (which included photographs depicting sado-masochistic acts) have caused controversy in a number of countries. In the United States the Mapplethorpe exhibition was at the centre of attempts to de-fund the National Endowment of the Arts.[13] In Australia, the Museum of Contemporary Art exhibited the work but with warning signs and entry restricted. In keeping with the current emphasis on child protection, some of the most controversial photographs were those that Mapplethorpe had taken of a friend’s children, not withstanding the fact that these photographs were not pornographic.[14] Other recent cases, such as Petrillo’s Case, discussed below are also in keeping with this trend.

Just in case we thought that we could dismiss these examples as being indicative of another ethical and cultural time, in 2008 we revisited the past when the Bill Henson controversy took over the front pages. Were the seized works ‘obscene’ at law? No. However, the power of pressure groups with a specific agenda can influence the actions of the police, corporate sponsors, the rhetoric of politicians, and the quality of decision-making by individuals under pressure.

Another way

Sometimes the puritan or sensationalist attitudes can be tempered with humour. In 2010 the Christchurch Art Gallery in New Zealand had a show called, The Naked and the Nude. Perhaps there was no public outcry because, at the entry to the exhibition, there was a sign that read:

 The Naked and the Nude contains,

well, nakedness and nudity.

We advise discretion.

Simple, humorous, non-legalistic and charming. Nice.

The legal mechanisms

In Australia, two legal mechanisms operate to restrict the exposure of people to obscenity: common law and statute.

At common law, it is a misdemeanour to ‘publish an obscene libel’. This has been described in the following terms:

Everyone commits a misdemeanour who without justification … publicly sells, or exposes for public sale or to public view, any obscene book, print, picture, or other indecent exhibition; or any publication recommending sexual immorality, even if the recommendation is made in good faith for what the publisher considers to be the public good.[15]

In such proceedings, three things must be proved. The work must:

  • have been published,[16]
  • be obscene, and
  • be published with a criminal intention (that is, to corrupt public morals).[17]

The offence of criminal libel is rarely alleged these days in Australia. The related common law offence of blasphemous libel, the publication of material that is likely to outrage Christian believers, is likewise rarely prosecuted (the last successful prosecution in Australia was in 1871) but apparently remains part of the law of Australia.[18]

In the English case of Gibson & Sylveire[19], the artists and the gallery curator/owner were convicted of the common law offence of outraging public decency. The artwork that had caused offence was a model of a head with earrings made of freeze-dried human foetuses. The two men appealed their convictions, but the Court of Appeal rejected that appeal. Kearns argues that one of the troubling aspects of the case is that the Court of Appeal did not consider Gibson’s position as an artist to be in any way relevant to the offence. Further, there was no defence available to either the artist or the curator that the exhibition was for the public good or of artistic merit.[20]

Although prosecutors do occasionally have recourse to the common law, they prefer to utilise the various pieces of legislation that attempt to limit what society’s members can see, if not enjoy.

There are many such pieces of legislation and thus obscene libel is only resorted to in situations in which the legislation is insufficiently flexible to permit prosecution. Given the wide language of the legislation, these occasions will be rare. However the common law provides the basis for the legislative regimes, even where the language of those schemes has changed from being concerned with obscenity to being concerned with offensiveness or indecency.

Defining ‘obscenity’

The starting point of any discussion of the definition of what is obscene must be the old English decision of R v Hicklin.[21] In that case the judge described obscenity in the following way:

The test of obscenity is this, whether the tendency of the matter charged as obscenity is to deprave and corrupt those whose minds are open to such immoral influences and into whose hands a publication of this sort may fall.

From this point, the dual concepts of ‘obscenity’ and ‘the tendency to deprave and corrupt’ were interwoven. Attempts by the judges to give meaning to the phrase ‘tendency to deprave and corrupt’ cannot be counted as great moments of jurisprudence. Indeed, as Justice Windeyer once observed, the Hicklin test ‘has only survived really because, although constantly mentioned, it and its implications have been ignored. Courts have not in fact asked first whether the tendency of a publication is to deprave and corrupt. They have asked simply whether it transgresses the bounds of decency and is properly called obscene. If so its evil tendency and intent are taken to be apparent’.[22]

Many cases have decided what a ‘tendency to deprave and corrupt’ does not mean. For example, the case of R v Martin Secker & Warburg Ltd,[23] held it to mean more than ‘to shock or disgust’, and in Knuller v DDP[24] it was held not to correspond with the phrase ‘to lead morally astray’. But considerable difficulty lies in understanding the positive guidelines attempted by the courts. Most cases give the words ‘tendency to deprave and corrupt’ one of three meanings:

First, they can mean that the tendency of the (work) is to arouse impure thoughts in the mind of the reader or the viewer. Secondly, they can mean that such a person would be encouraged to commit impure actions. Thirdly, they can mean that the reading of a book or looking at the picture would endanger the prevailing standards of public morals.[25]

In Australia, the third of those categories has attained predominant judicial favour. For example, in Crowe v Graham,[26] it was held that an indecent picture is one that is ‘an affront to modesty’. This is based on the belief that there ‘does exist in the community at all times however the standard may vary from time to time – a general instinctive sense of what is decent and what is dirty’.[27]

In R v Close, Justice Fullagar stated that the ‘tendency to deprave and corrupt’ was not to be taken as a logical definition of the word ‘obscene’, but was merely explaining that particular characteristic which was necessary to bring an obscene publication within the law relating to obscene libel. The tendency to deprave is not the characteristic which makes a publication obscene, but is the characteristic which makes an obscene publication criminal.

Thus the tendency to deprave and corrupt is not to be taken as the sole test of what constitutes obscene libel. Rather, to prove the offence it will be necessary to show that the work is ‘both offensive according to current standards of decency and calculated or likely to have the effect described in R v Hicklin.[28]

Both aspects of this two-limbed test may be influenced by the nature of the work (for example, an artwork or medical text) and the manner and place of its exhibition:

  1. 1.    The nature of the work

The cases recognise that works of art enjoy a certain amount of licence. Thus it has been held that the ‘representation of nudity in what is not a work of art is not to be regarded as protected (merely) because similar realism in a work of art would not be regarded as indecent.’[29] On the other hand, the issue of indecency cannot be answered by simply asking, ‘Is it art?’ Had this been the relevant test, a photographic representation of Giorgione’s Sleeping Venus would surely not have been found to be an indecent document.[30]

  1. 2.    The manner and place of exhibition

The manner and place of the work’s exhibition is relevant to both limbs of the obscene libel test.

As to the first (whether or not it is obscene, at all), suppose that a lithograph of erotic theme is exhibited in an art gallery and an identical image is hung in a school. The hypothetical community standard of what is decent would probably accept the former and condemn the latter. An artwork acceptable in the one place is obscene in the other.

As to the second limb (the tendency to deprave and corrupt), the manner and place of exhibition is directly related to the law’s concern with, who is likely to see the work and thus be influenced by it. So, in the above example, the patrons of an art gallery are considered less likely to be ‘depraved and corrupted’ by the erotic work than the younger and, presumably, more impressionable school children. Furthermore, nobody finds in himself or herself an example of a person actually depraved by erotica:

(so) discussion tends to centre on a hypothetical, unencountered ‘them’ in contrast to incorruptible ‘us’. This perhaps is why in 1962 the courts established that no amount of exposure can deprave a policeman: He is indissolubly one of ‘us’.[31]

The legislation

Every State and Territory has legislation restricting the exposure of its people to obscene or indecent material. These are all derived historically from an English statute of 1857 known as Lord Campbell’s Act. This was ‘intended to apply exclusively to works written for the single purpose of corrupting the morals of youth and of a nature calculated to shock the common feelings of decency in a well regulated mind’.[32] Although the explanation reflects a Victorian attitude, it is none the less one that remains relevant to a description of the modern position in so far as the various legislative schemes show a concern for community standards of decency. When looking at the selection of State legislation below, two things will be apparent: first, the echoing theme of the Hicklin test (the tendency to deprave and corrupt); but second, the variety of ways in which each State has moved away from these early roots.

At a Federal level, the regulation of potentially offensive material occurs through the Classification (Publications, Films and Computer Games) Act 1995 (Cth)[33] and other Acts such as the Customs Act 1901 (Cth) (which, generally, controls the importation of indecent or obscene works),[34] the Criminal Code 1995 (Cth)[35] (which makes it an offence to ‘transmit, make available, publish, distribute, advertise or promote child pornography material).[36] The latter is relevant to every collection that places on its website any sexually explicit image involving a child. There is no artistic merit defence. A lack of intention is not a defence. It is a strict liability offence.[37] If you think that the Henson image on your website is not problematic, consider the definition of child pornography provided by the Act:

‘child pornography material’ means:

 (a)       material that depicts a person, or a representation of a person, who is, or appears to be, under 18 years of age and who:

(i)       is engaged in, or appears to be engaged in, a sexual pose or sexual activity (whether or not in the presence of other persons); or

(ii) is in the presence of a person who is engaged in, or appears to be engaged in, a sexual pose or sexual activity;

and does this in a way that reasonable persons would regard as being, in all the circumstances, offensive; or

 (b)  material the dominant characteristic of which is the depiction, for a sexual purpose, of:

(i)       a sexual organ or the anal region of a person who is, or appears to be, under 18 years of age; or

(ii) a representation of such a sexual organ or anal region; or

(iii)        the breasts, or a representation of the breasts, of a female person who is, or appears to be, under 18 years of age;

in a way that reasonable persons would regard as being, in all the circumstances, offensive; or

 (c)  material that describes a person who is, or is implied to be, under 18 years of age and who:

(i) is engaged in, or is implied to be engaged in, a sexual pose or sexual activity (whether or not in the presence of other persons); or

(ii) is in the presence of a person who is engaged in, or is implied to be engaged in, a sexual pose or sexual activity;

and does this in a way that reasonable persons would regard as being, in all the circumstances, offensive; or

 (d)  material that describes:

(i) a sexual organ or the anal region of a person who is, or is implied to be, under 18 years of age; or

(ii) the breasts of a female person who is, or is implied to be, under 18 years of age;

and does this in a way that reasonable persons would regard as being, in all the circumstances, offensive.

Obscene, indecent, offensive or objectionable?

Some states have now opted to use the term ‘indecency’ rather than ‘obscenity’ (and indeed some States use both). The definitional distinction has attracted considerable attention in the courts. Generally speaking, both terms contemplate the contravention of accepted societal standards of decency, with obscenity at the higher end of the scale and indecency at the lower end. What is indecent is not necessarily obscene, but what is obscene will always be indecent.[38] Thus, presumably, the law is stricter in those States that prohibit indecency than those which prohibit obscenity. But the distinction and its importance is always only one of degree and fact and thus, in practice, the personal view of society’s standards held by the judge will have more impact on the outcome of any particular case than this matter of sliding definition. Other States have developed categories that refer to ‘objectionable’ or ‘offensive’ material, but again it the underlying test looks at whether the material offends recognised community standards of decency.

Summary offences, crimes and misdemeanours

Most States regulate indecent or obscene material though legislation such as their Crimes Acts, Summary Offences Acts and Police Acts. Some of this legislation has moved explicitly towards a ‘reasonable adult’ or ‘community standards test, while others continue to use the language of the Hicklin test and prohibit material that has a tendency to corrupt morals.[39] However, where the case concerns sexually explicit material, these different sections frequently rely on the judge to decide whether the publication, picture, film or photograph offends accepted community standards.

Thus, as already mentioned, the case of Crowe v Graham[40] held that an indecent picture was one that was an affront to modesty, taking into account the current community standards. In Sancoff v Holford; Ex parte Holford,[41] the judge described the proper approach for a magistrate to take. It was held that the magistrate should:

(i)              look at the article;

(ii)            adopt what he or she reasonably thinks are proper standards of decency now commonly accepted by the average person in the community; and

(iii)           find whether such a person taking up the publications and reading them would regard them as publications offensive to his or her modesty in regard to matters of sex.

In determining whether or not a work ‘offends modesty’ the courts will generally take into account the manner and place in which the article was displayed (note however the South Australian exception discussed below). For example, In the Appeal of Marsh[42] concerned four sketches by Tane, which were seized from the Nth Degree Gallery in Paddington. They could be plainly seen through the window from the street. In dismissing the charge his Honour said that the distinction between the decent and indecent in works of art depends on the honesty and integrity of the work in its use of the sexual or erotic theme. Such a work – if it is dealt with frankly and artistically – is not indecent. He went on to say that the place and manner of display is a relevant factor. Thus, something that might be indecent if exhibited in a church or outside a school might not be indecent if exhibited in a Paddington art gallery, for the community has different expectations and imposes different standards on such a place.

However, the placing of a work in a gallery will not always avoid prosecution. In 1984, Juan Davila, along with several other artists were commissioned by the Lake Macquarie Regional Gallery to create works for an exhibition on the theme of ‘Romance’. The show had been previewed by the mayor and local government members and had been seen by large numbers of viewers. The Vice Squad went to the gallery after receiving a complaint from a member of the public (who was also a member of the Call to Australia Party, the political wing of the so-called Festival of Light). A week later, only a few days before the closure of the show, they returned with a warrant and seized three of the works by Davila. The council was charged and convicted. It did not appeal because it did not wish to prolong the considerable publicity that the Call to Australia Party was receiving over the affair.

Pell v Council of Trustees of the National Gallery of Victoria[43] has been mentioned above in the context of the offence of blasphemous libel. This case also examined the meaning of indecency and obscenity under the Summary Offences Act 1966 (Vic), placing the two concepts along a spectrum. Both concepts represented ‘a failure to meet recognised standards of propriety’, and the extent of the failure was what determined whether an act or display was indecent or obscene. The question raised in Pell was whether the photograph that offended specific religious standards or could constitute an offence against contemporary community standards, given the predominantly secular, tolerant and multicultural nature of the Australian community. The court avoided making a conclusive finding but seemed to indicate that the photograph ought not be regarded as obscene or indecent.

Phillips v South Australian Police[44] is interesting for its discussion of the relevance of the location or manner of display of the material in question. The South Australian Summary Offence Act directs that such considerations are irrelevant to a finding of obscenity or indecency. The court in this case, asked to determine whether video tapes of boys undressing and urinating were indecent or obscene, indicated a preference for the common law position that took into account the circumstances in which the material was produced and displayed and the purpose for which it was made. The court (applying the same sliding scale referred to in Pell) indicated that, taking into account contemporary community standards, there was nothing inherently obscene or indecent in the depiction of the bodies of young boys. Ironically, because the Act prevented the court from considering the circumstances in which the tapes were made (secretly, in a boys changing room, without the consent of the subjects), the finding that there was nothing inherently obscene or indecent in the tapes meant that the defendant was successful in his appeal against conviction.

Artistic merit?

The law has approached the intersection between art and obscenity in different ways. One approach is to say art and obscenity are two mutually exclusive categories; if a work has artistic merit it cannot be indecent. This argument works until the artistic purpose pushes beyond an uncertain line of social acceptability whereupon the public says ‘that is a bridge too far’. For example, artwork that depicts two adults performing a sex act might be acceptable (think Persian miniatures) but if the adults were substituted for children we may wish to say, ‘This is art, but it is indecent.’

A second approach is to say artistic merit should be relevant to determining whether or not material is indecent. It recognises that we should treat Les Demoiselles d’Avignon differently from gross and demeaning sexually explicit photographs readily available from any Internet porn site. This approach says that even if a work is of proven artistic merit[45], that merit will not necessarily provide a licence for talented obscenity.

The fact that conduct is engaged in for political or artistic purposes does not throw around such conduct a kind of cordon sanitaire, producing the result that it cannot be found to be illegal. It is entirely possible that a person might, for political or artistic purposes, take a photograph of an act that a jury regards as an act of indecency.[46]

This quote is from the judgment in a case in which the defendants had taken a number of photographs of an eleven-year-old girl, with the consent of the girl’s mother, for purpose that the court accepted could be ‘described as political, in the broadest sense, or artistic. In particular the photographs were taken, it was said, for the purpose of making a protest against abuse of females’. The court recognised that the artistic or political purpose was relevant for determining whether the photographs were indecent and also that the test was whether the photographs offended contemporary community standards. However, the Court of Criminal Appeal dismissed the appeals, indicating that artistic purpose or merit was not determinative and that it was open to the jury to find that, notwithstanding that legitimate purpose, the photographs were indecent. The CCA implicitly endorsed the direction given to the jury that the relevant community standard was ‘not a test of the most avant garde members of the community’ but the ‘ordinary standards of propriety of respectable people in this community.’ In a similar case in Western Australia, an art student, Concetta Petrillo, who had taken photographs of her children as part of her coursework was prosecuted under the Western Australian Criminal Code. Despite the clearly apparent artistic purpose of the work, the case dragged on for nearly two years. Petrillo, however, fared better. Her trial culminated in a verdict of not guilty.[47]

The Henson affair

In May 2008 the police seized 20 of 41 images from a Bill Henson exhibition at Roslyn Oxley 9 Gallery. The police informed the press that they were doing so with the intention of laying charges under both the NSW and the Commonwealth legislation for publishing an indecent article.[48] In explaining the seizure, the police superintendent who made the decision to seize the works issued the statement: ‘This morning police have attended the gallery and executed a search warrant and seized some items depicting a child under the age of 16 years in a sexual context.’[49] Apparently ‘sexual context’ means ‘nude’ in police speak.

It was a shock horror media event that allowed the ignorant and the righteous an opportunity to voice their views. The distinction between pornography, paedophilia, and sexually explicit art was ignored. Prime Minister Rudd, without seeing the images, felt able to publicly state that he found ‘the work absolutely revolting’ and without artistic merit. Anonymous callers threatened to burn down the gallery that had exhibited the works. The police accompanied by TV news crews examined the Henson works held by public collections. Talkback radio was in meltdown. And all this over works that involved nudity but not obscene acts and where the artist had the consent and support of the child and the parents.

Eventually everyone had a cup of tea, a Bex and a good lie down when the works were submitted to the Classification Board. The Board gave the works that had sparked the fire, a PG rating. And remember that the film Harry Potter and the Prisoner of Azkaban is rated M15+.

Some legal analysis of Henson affair

  1. 1.    NSW OFFenceS

In NSW there are two avenues available – although commentators in the general media rarely bother to distinguish between them. First, there are the traditional ‘indecent/obscene publications’ provisions and then there are the provisions designed to deal with hard-core child pornography offences. We know now that the police would fail to lay charges of any kind but while they made up their mind, the public debate veered between paedophilia, pornography and offensiveness without much concern for the difference.

It was never likely that either artist or gallery would be convicted of having committed an offence under the child pornography laws:  ‘A person who produces, disseminates or possesses child pornography…’,[50] or…uses a child for pornographic purposes’,[51] is guilty of an offence. To establish such an offence, the Act requires that the prosecution show that the material is child pornography. To do this the prosecution would have to prove that the material:

(i)         depicted or described a child:

(a)        engaged in sexual activity, or

(b)        in a sexual context, or

(c)        as the victim of torture, cruelty or physical abuse (whether or not in a sexual context), and

(ii)        that the material would in all the circumstances cause offence to reasonable persons.

None of the images showed children ‘engaged in sexual activity’ and certainly none depicted a child as the ‘victim of torture, cruelty or sexual abuse’. The only possibility was to argue that children were depicted ‘in a sexual context’. This phrase is not defined in the legislation but it would be a Sisyphyian taskto argue that ‘nudity’ is a synonym for ‘sexual context’. Unless the prosecution could get over this hurdle it was not even necessary to ask whether the material would ‘in all the circumstances’ cause offence to reasonable persons[52] or whether the artistic purpose defence provided in the legislation would apply.[53] It would have been a defence if, having regard to the circumstances in which the material concerned was produced used or intended to be used, the defendant was acting for a genuine … artistic … purpose and the defendant’s conduct was reasonable for that purpose.

No, although the media had allowed the argument to slew off into anger and indignation against child abuse and child pornography, there was little likelihood of proving any such thing.

Alternatively, the police may have laid charges under section 578C of the Crimes Act 1900. A person who publishes an indecent article is guilty of an offence.[54] This was a much more viable avenue for the prosecution. Section 578C is a provision that has been around for a very long time in one form or another and has spawned many cases as to the meaning of ‘indecent’. This is discussed at length elsewhere in this chapter.

One interesting aspect of section 578C is that it is sometimes thought to provide an artistic merit defence:

(6) In any proceedings for an offence under this section in which indecency is in issue, the opinion of an expert as to whether or not an article has any merit in the field of literature, art, medicine or science (and if so, the nature and extent of that merit) is admissible as evidence.

As you will note, this does not actually say that the work cannot be ‘indecent’ if it has artistic merit. Indeed it does not provide a real defence of artistic merit. It doesn’t even say that the artistic purpose and merit of a work must be taken into account when determining whether a work is indecent. It merely provides that such evidence is admissible. In practice it is relevant to the magistrate’s sentencing decision.

When the Henson storm had calmed, the NSW Attorney-General announced that the government would amend the legislation. Those old enough might have remembered that after the ruckus caused by the seizure of Juan Davila’s Stupid As A Painter, Premier Wran declared that the NSW Government would amend the indecency laws so that artistic merit would be an absolute defence. No such changes were introduced. Two decades later, another government faced by the same embarrassments, took a different approach and declared that it would repeal the artistic merit defence altogether.

Fortunately, the reform was more nuanced than the press release. In 2010 the NSW Government passed the Crimes Amendment (Child Pornography and Abuse Material) Act 2010.[55] This did away with general concept of child pornography[56] and replaced it with ‘child abuse material’. Child abuse material is defined as material that depicts or describes:

(a)      a person who is, appears to be or is implied to be, a child as a victim of torture, cruelty or physical abuse, or

(b)    a person who is, appears to be or is implied to be, a child engaged in or apparently engaged in a sexual pose or sexual activity (whether or not in the presence of other persons), or

(c)    a person who is, appears to be or is implied to be, a child in the presence of another person who is engaged or apparently engaged in a sexual pose or sexual activity, or

(d)    the private parts of a person who is, appears to be or is implied to be, a child,in a way that reasonable persons would find, in all the circumstances, offensive.

It will no longer be a defence to that offence that the material concerned was produced, used or intended to be used by the defendant acting for a genuine child protection, scientific, medical, legal, artistic or other public benefit purpose.[57] Instead, the new provisions set out the factors to be taken into account in deciding whether reasonable persons would regard particular material as being, in all the circumstances, offensive. These factors include any literary, artistic, educational or journalistic merit of the material. These are matters now to be taken into account when considering whether or not the material is offensive. If it fulfils the definition of ‘child abuse material’ and if the court finds that reasonable persons, in all the circumstances, would (not could) find the material offensive, the offences may be proved. Now, artistic merit and intention is relevant only to the determination of whether the material is offensive. If it is, artistic merit and intention is no defence. If a gallery wishes to show sexually explicit images, the safest avenue is to submit them to the Commonwealth Classification Board. Classification provides the exhibitor with a defence.[58]

  1. 2.    Commonwealth offence

As mentioned above, when the NSW police seized the Henson works they said that they were considering laying charges under the Commonwealth legislation. How real was this possibility?

The basic offence is for a person to use a ‘carriage service’ in a way that ‘reasonable persons would regard as being, in all the circumstances, menacing, harassing or offensive’.[59] The test for what is ‘offensive’ is as follows:

Determining whether material is offensive

The matters to be taken into account in deciding for the purposes of this Part whether reasonable persons would regard particular material, or a particular use of a carriage service, as being, in all the circumstances, offensive, include:

(a)        the standards of morality, decency and propriety generally accepted by reasonable adults; and

(b)        the literary, artistic or educational merit (if any) of the material; and

(c)        the general character of the material (including whether it is of a medical, legal or scientific character).[60]

It is for the magistrate to determine the standards of ‘morality, decency and propriety generally accepted by reasonable adults’ and this makes the test enormously subjective. Note that ‘artistic merit’ is not, in itself, a defence. It is merely one of the factors to be taken into account in determining whether or not the material is indecent. There is no question that that the communication could have artistic merit but still breach the ‘morality, decency and propriety’ test.

Enforcement, compliance and reform

Enforcement of the obscenity laws is the responsibility of the police. They usually act only when a complaint is made but they have the power to proceed on their own volition. Usually, members of the vice squad will enter the gallery and informally look at the suspect works. Then, if some of the works give offence, they will approach the director and suggest that if the offensive works are not removed, they will be seized and legal proceedings may be commenced. Sometimes, this informal enforcement procedure sees the work removed from exhibition and society’s sensibilities protected. However, the work may be in itself an important one, or it may be important to the balance or theme of the exhibition. Or the work may gain an importance by the very fact of its censorship and become a symbol of artistic freedom denied.

With the informal system of enforcement at least the gallery, and to a lesser extent the artist, has two options: concede quietly or fight loudly.

There is no doubt that any sophisticated society will demand that there be some laws against ‘offensive’, ‘indecent’ or ‘obscene’ material and it is totally impracticable to suggest that such laws should be repealed or that works of art in general should be excluded from their ambit or even that there should be an absolute defence for works of art. To argue the social desirability of such suggestions is a waste of time. They are politically impossible. Rather, a simple (and politically acceptable) reform would be to enact a statutory presumption whereby material exhibited in a bona fide art gallery or museum would be presumed to be not ‘indecent’, ‘offensive’ or ‘obscene’ for the purposes of the legislation. The suggestion that this would allow every porn vendor to open an ‘art gallery’ and sell disgusting material without appropriate public control would surely be met by the ability of any court to determine whether the gallery was bona fide.[61] In addition, a suitably drafted defence of ‘artistic merit’ would also ensure that the material (as well as the venue of exhibition) was put into its proper perspective.

As matters stand, the customer of a newsagency is subjected to material that is far more sexually explicit, confronting and lacking in artistic merit than that which adorns any museum wall.

For the exhibiting organisation the message is clear – if not simple. If the material is erotic or brutish to such an extent that it breaches the community’s standards of ‘decency’ one can expect trouble. The heinous feature of the law of obscenity is that one cannot possibly know whether one has breached that nebulous standard until it is too late.

National classification scheme

The classification process is a legislative scheme designed to restrict or regulate access to material according to the principles outlined in the National Classification Code 2005 and the National Classification (Serial Publications) Principles 2005. These, on the one hand seek to protect people from unwanted exposure to offensive material, while at the same time recognising that adult members of the community should ordinarily have a choice about what they can see, read and watch.[62] In 1995 a national cooperative scheme was established.[63] This legislation was accompanied by complementary state legislation containing the enforcement provisions. These enforcement provisions compel compliance with the Federal scheme and set out the penalties for failure to comply. In some cases these enforcement provisions intersect with other state legislation that governs indecent or obscene material. For example in New South Wales if a film, publication or computer game has been given a classification under the Commonwealth scheme allowing it to be published or distributed, then it can not be an indecent article. It is specifically excluded from the definition.[64]

Classification decisions are made by the Office of Film and Literature Classification in accordance with the National Classification Code. The Code sets out the criteria for different levels of classification (from General to Refused Classification) and also indicates that the Code is concerned with not only nudity or sexually explicit material, but also material that depicts or promotes illegal activity, violence or drug use.[65] In making classification decisions, the matters that are to be taken into account include the ‘standards of morality, decency and propriety generally accepted by reasonable adults’, whether the material has artistic merit, where the material is going to be displayed or distributed and the material’s intended audience.[66] The ‘reasonable adult’ test owes much to the development of the law in relation to the regulation or prohibition of the possession, publication or distribution of indecent or obscene materials away from the Hicklin test towards a standard that looks not so much at the tendency of material to deprave or corrupt, but rather asks whether the material offends generally accepted community standards.[67]

The National scheme treats ‘publications’ and ‘films’ differently. Publications (which includes ‘any written or pictorial matter’) need only be classified if they are ‘submittable publications’ and they are sent to the Board for classification. In effect, with regards to artworks, catalogues and so forth, these will not ordinarily come to the attention of the Classification Board unless they are sent to the Board or someone makes a complaint. This is what happened in both the Henson case and the Pell case (see above). Following the controversy over the exhibition of Serrano’s work, Piss Christ, the catalogue was sent to the Board by someone offended by the work and the Board gave it a restricted classification. When the Board reviewed the Henson photographs they were given a PG rating.

By contrast, all films must be submitted for classification, regardless of content, if they are to be shown in public. The definition of ‘film’ is a broad one and would include video installations shown in galleries as well as animated art. It certainly includes all film and video shown in the institution’s education programs.

Perhaps the ordinary procedure would be to apply for an exemption from classification. An application for an exemption needs to be accompanied by a synopsis of the ‘film’. An exemption can only be granted if the classification board is satisfied that the ‘film’ would not be given any form of restricted classification such as MA, R or X (see above). The board could ask to see a copy of the work if it cannot make a decision based on the synopsis. In making its decision to grant an exemption or to classify a submitted film the classification board is bound to consider the ‘artistic merit’ of the film but as with publications, the artistic qualities of the work will not in and of themselves be determinative of the decision.

Regulation of online services

A recent development in the area of classification and censorship has been the attempts to extend censorship regimes to material available over the Internet. This ‘net-widening’ has been prompted by concerns about the easy availability of pornographic material on the web and in particular the use of the Internet for the circulation of child pornography. The move to regulate and restrict Internet content is characteristic of what has been termed the ‘moral panic’ engendered by the difficulties of restricting access to indecent, obscene or offensive material on the Internet.[68] The Australian response to concerns about the content of websites and the use of the Internet for circulation of potentially illegal material has been to extend the classification scheme governing publications and films to the content of websites. The Broadcasting Services Amendment (Online Services) Act 1999 (Cth)[69] establishes procedures for the removal of content that breaches the standards of the national classification scheme.

The scheme is established under Schedule 5 and Schedule 7 of the Broadcasting Services Act 1992. It establishes a complaints mechanism that allows complaints to the Australian Communications and Media Authority (ACMA) about potentially offensive website content. The Act sets out certain categories of prohibited online content.[70] The ACMA has powers to investigate complaints and can issue a ‘take-down’ notice to the ‘content service provider’ – the host of the content. There are a number of penalties available under the act for failure to comply with a take-down notice or failure to take reasonable steps to restrict access. If you wish to challenge the take-down notice, you have a right of appeal to the Administrative Appeals Tribunal.

C. Defamation[71]

Introduction

Defamation, or libel and slander as it is still referred to England, is the delicate balance which the law tries to achieve between freedom of speech and protection of reputation. That balance seeks to give effect to contemporary custom and culture. What used to be offensive and damaging may now be accepted as satirical or even complimentary.

The relevant principles are found in state and territory laws as opposed to federal law. This meant that eight different laws could apply to one publication across Australia on the television or Internet for example. However, in 2005, defamation law in Australia was simplified by a uniform law across Australia. That is, each state and territory enacted a statute which is identical in terms of the law applying to defamation and the defences available to those who publish defamatory material.

What is defamatory?

Publication can be in almost any medium of communication whether by conversational word, written communication, a film or photograph, a painting or sculpture or even by silent gestures. Publication must also, of course, be communicated to at least one person other than the person defamed.

The publication must convey a defamatory meaning, which is referred to as an ‘imputation’.  Many cases do not concern explicit outbursts of invective, but are subtle inferences or innuendos which are often unintentional. Whether one intends to defame is of course irrelevant;, it is what the words actually convey which matters.

Whether or not an imputation is defamatory will depend on whether the published material conveyed a meaning which can lower that person’s personal or business reputation in the eyes of reasonable members of the community (applying general community standards) or lead people to ridicule, avoid or despise that person.

Examples of what can be defamatory – that the plaintiff was:

  • running Premier Cabs like a ‘little Hitler’[72]
  • a con-man or confidence trickster[73]
  • fraudulently obtaining a disability pension while still able to pursue a hobby of parachuting[74]
  • a gangster and a criminal.[75]

Identification

The person defamed must show that he or she is the actual individual referred to if not expressly named. For example, there may be a drawing of a recognisable person (even known only to a few people) portrayed in a ridiculous light. One such case concerned a cartoon showing a well-known female newsreader dressed on top but graphically naked under the desk, entitled ‘newsflash’. The real person was recognisable from the cartoon and it portrayed her in a ridiculous light, which she considered went beyond harmless humour (the case was settled without trial).

The test is whether some readers or viewers (who have knowledge of certain facts) would reasonably understand the words or images as referring to the person defamed.

A person may also be identified by a description of their occupation such as a CEO or even a director (there may also be a danger in a small group such as directors of coincidentally defaming other directors as well).

Ridicule and satire

Satire tears down façades, deflates stuffed shirts and unmasks hypocrisy by cutting through the constraints imposed by pomp and ceremony, it is a form of irreverence as welcome as fresh air.[76]

If a man in jest conveys a serious imputation he jests at his peril.[77] Two very different views and illustrative of the lottery in seeking these questions to be determined by the Courts, as one judge may think it is harmless satire or acceptable opinion, another may think it offensive and defamatory. There is no doubt that ridicule can be defamatory. There is a fine line between trivial ridicule and that which is actionable. Satire is a particularly effective means of ridicule and thus susceptible to defamation actions.

There are cases going both ways. After all, what seems on the surface to be trivial has been held to be defamatory and vice versa. A few cases illustrate the point:

  • A photograph of the footballer Andrew Ettingshausen’s penis was said to expose him to ridicule and the photograph was found by a jury to be defamatory.
  • A song by Pauline Pantsdown called Back Door Man, which featured digitally sampled words of Pauline Hanson was held to be prima facie defamatory of her (enough to warrant an injunction).
  • The case over the ‘newsflash’ cartoon referred to above was settled out of court.
  • A Gary Larson cartoon depicted Satan, a trident and the words, ‘For a good time, call 555 1232’ and ‘Satan is a warm and tender guy’. The phone number belonged to a woman who sued on the grounds that the cartoon led people to believe that she was ‘akin to the devil’ and ‘pretends to be a pleasant person when in fact she is evil with evil intentions’. The plaintiff failed on the grounds of reasonableness. In this case,[78] Justice Levine commented that the test was ‘the ordinary reasonable reader, knowing the relevant facts’ and not ‘what must have been a great deal of weird people who merely called the telephone number’.
  • Bare Buttocks and the SMH: The Sydney Morning Herald also found itself on the defence after it published a photograph of a man positioned beneath a billboard displaying the bare buttocks of two women, accompanied by text including ‘they like to watch’. The plaintiff pleaded that the whole of the matter complained of conveyed the defamatory imputations that he was a dirty old man, a voyeur, sexist and the kind of low individual who would pose in front of a billboard of scantily clad young girls for the purpose of having his photograph in The Sydney Morning Herald. The case was settled before the jury had the opportunity to decide the publication’s meaning and its implications.

Ridicule – what is defamatory?

Ridicule can equally be considered defamatory. Case law to date has found exposure of a plaintiff’s penis, description of an actor as ‘hideously ugly’, or photographs of a plaintiff looking absurd sufficient ridicule to be held defamatory. In many instances it simply depends on the subjective view of the judge or jury.

However insulting they may be, words that do not tend to damage a person’s reputation or cause their exclusion from society or hold them up to ridicule are not actionable. Determining in all the circumstances what is ‘more than trivial degree of ridicule’ and what is mere ‘vulgar abuse’ is not straightforward. Invective, such as  labelling a person an idiot or stupid or even insane, where the context is clear that the publication is a more of a rant than a calm and clinical allegation of fact, would not be actionable as the reasonable reader would not believe it to be literally true. However, comparisons of photographs of individuals as ‘Miss Piggy’ or ‘hideously ugly’ have been held to be defamatory.

Defences

  1. 1.    Honest opinion

For publications that may engage in reviews of public works, truth is rarely a defence as such views cannot usually be proved literally true. If they can be proved true then this is an effective defence as after 2005 there is no public interest condition to this defence, so there is no ‘privacy’ element any more in defamation (prior to 2005 an allegation not in the public interest, for example adultery or the like, could not be defended on truth). As an aside, there are proposals to introduce a statutory tort of privacy in Australia but this has not happened yet so there has been no replacement law following its removal from defamation law. (England for example has a much stricter personal privacy law.)

The most appropriate defamation defence in this sphere of publication (public reviews and so forth) is the law of ‘fair comment’ now known as ‘honest opinion’.

The rationale of this defence is the public protection of an expression of opinion on an issue of fact that is considered to be a matter of public interest. It is of course every person’s right to express an opinion on matters of public interest. In essence this is a right to freedom of speech on a topic of public interest. ‘Public interest’ has been interpreted very broadly to include any public exhibition or topic within the public arena.

Such an opinion may be contentious or possibly grossly exaggerated, but it is nevertheless defensible. The first step is to ensure that the matter complained of was an opinion and not a statement of fact.

Having determined this and that the subject matter is one of public interest, the following must be established:

  • the facts upon which the comments are made are contained in the publication or are ascertainable by the reader;
  • the facts are true (or were published under another defence called ‘qualified privilege’);
  • the comment was the defendant’s opinion.

The usual examples are theatre or book reviews where the writer’s personal opinion is the central theme. A cartoon by Patrick Cook in The Sydney Morning Herald depicting a retirement home with individuals living in boxes being fed through slits was found by a jury to be an honest opinion based on the known facts of the architectural style of Harry Seidler.[79]

A further colourful example was the case of Meskenas v Capon[80] where the artist Vladas Meskenas sued the director of the Art Gallery of NSW for describing his portrait of Rene Rivkin as ‘Yuk’. Capon raised the defence of comment but in cross-examination admitted that he did not intend to convey the defamatory meanings (imputations) pleaded by the plaintiff (which related to Meskenas’ ability to paint not the quality of the painting). As the law in NSW was then (under the old 1974 Defamation Act), a defensible opinion had to be the actual imputation pleaded by a plaintiff (and not as per the 2005 Act where the opinion may be derived from the publication itself not just the precise defamatory meaning). Under the old law therefore, the defence failed. However, the victory was rather pyrrhic with a meagre damages award of $100 from the jury.

Following a recent High Court case,[81] the law relating to public reviews has been clarified. For comment to usually apply, the facts upon which it is based must be present or indicated or notorious (that is in the public arena). Often a review does not supply all the facts but simply passes opinion (for example the view of the Rivkin painting as ‘yuk’). Now where material is submitted for public criticism, it is not necessary for any reviewer to include the facts behind the review and therefore public reviews stand apart from the conventional cases on comment.

  1. 2.    Innocent Dissemination

Another defence worthy of mention in this context is innocent dissemination. This defence excuses those who have no control over publication such as printers, libraries and newsagents as well as Internet service providers. However, this is only where such a person or entity ‘neither knew nor ought to have known’ of the defamatory content. There is a difference between mediated or unmediated (unfiltered) web material as where it is clear that material has been considered beforehand then in it is no longer innocently disseminated and other defences must be relied upon.

The defence could be applicable to a collecting institution which is not aware that something is defamatory in circumstances for example, where a work is believed to be fictional or is only defamatory with special knowledge of extrinsic facts.

There are other defences available (such as qualified privilege) but in this context the main defences would be comment/honest opinion and possibly innocent dissemination.

Damages capped

A surprising inclusion to the uniform law is the capping of general damages (currently indexed at $294,500). Under the old law in NSW, each imputation was a separate cause of action, so multiple imputations could mean cumulatively large awards. Under the new regime there is only a single cause of action for each publication,[82] so general damages will be capped at the statutory total unless the court awards aggravated damages in excess of that figure.

Damages can be mitigated by evidence of an apology or correction being published before the trial or evidence that a plaintiff has already recovered damages or even brought proceedings elsewhere in similar circumstances.

An apology cannot constitute an admission of liability and is not admissible in evidence for this purpose. This is a very effective way of dealing with complaints as apologies can be given freely without concern that they constitute admissions of liability.

Limitation period

Proceedings for defamation must be brought within one year from the date of the publication. The period can be increased to three years if the court is satisfied that it was not reasonable for a plaintiff to have commenced proceedings within a year. If not brought within time, the right to claim is lost.

Risk management checklist

Below is a series of suggestions in no particular order that may assist in minimising risk:

  • Always look at potentially defamatory statements as if you are the person defamed. Ask yourself how you would feel to be on the receiving end and consider alternative wording if appropriate – a carefully worded qualification can diffuse a defamatory statement without losing the intended thrust.
  • Be sure that the real meaning of facts is obvious and there is no unintentional inference present.
  • Avoid expressing an opinion unless you honestly hold that opinion.
  • Always check the information that underlies any defamatory statement; do not assume its correctness. If there is simply too much, try taking a sample and test the thoroughness of an author’s research on that sample.
  • Satire – although vulgar abuse and light ridicule are not actionable, assess whether the material is humiliating or unnecessarily cruel. Also consider whether it ridicules someone’s race, gender or sexuality.
  • Instil an effective email policy to ensure staff are aware of these pitfalls in such a spontaneous forum.
  • Put in place a system for vetting third party material such as contracted or guest seminars or other public programs. Check draft contracts to provide warranties/indemnities about defamatory and copyright material from such individuals.
  • Carefully filter any material intended for a public website and ensure access is restricted for new material.

Getting a complaint

There is nothing quite like a solicitor’s letter threatening defamation proceedings to get stomach muscles knotted! The most obvious advice is do not respond (apart from a holding letter) until the facts have been properly investigated and an assessment made as to the real risk of liability.

If after such an investigation (including possible legal assistance), you decide that there is a significant risk then you should consider an offer of amends under the Act and/or an apology.

First, the Act provides a procedure whereby an early apology and offer to pay costs and consideration of some monetary compensation (although this is not mandatory) may provide you with a full defence (regardless of other defences) if it is a reasonable offer and made within 28 days of a letter of complaint (which should state that the letter should be regarded as a ‘concerns notice’ under the Act). Part 3 of the 2005 Act spells out the steps which must be taken for such an offer and which must be followed carefully.

Even if no offer of amends is made, an apology can now be given openly without fear that this is an acceptance of liability that may take away defences such as truth or comment. The Act now forbids any apology being used in such a way, so it can always be used by a defendant to reduce damages without fear and should be seriously considered if there is a real risk of ultimate liability.

Misleading or deceptive conduct

Finally, a brief word should be said about misleading or deceptive conduct under section 52 of the Trade Practices Act 1975 (Cth). Often a complaint may include this as well as defamation. This Act does not apply to the media who are exempt from section 52 as they are ‘information providers’ under section 65A of the Act. There are no known cases on this topic, but there must also be an argument that a collecting institution may also be an ‘information provider’ and also exempt. If such a claim is made against you then this may be an available argument.

C. Anti-Vilification Legislation

The structure of this legislation that makes vilification on the basis of race or homosexuality unlawful is similar in all jurisdictions.[83] Generally, in the context of considering whether the display of an artwork or the performance of a dramatic or musical performance might be affected by the legislation, it is the following questions are relevant:

  • Was the conduct or act in public?
  • Did the act or conduct ‘incite hatred towards, or serious contempt for, or severe ridicule of, a person or group of persons”[84] or was the act ‘reasonably likely, in all the circumstances, to offend, humiliate or intimidate a person or group of people’?[85]
  • Was the act done because of the race or other characteristic of the person or group of people?
  • Was the act or conduct done reasonably and in good faith for an artistic purpose?

It is unlikely that this legislation will have any major affect on the freedom of creative expression because of the difficulties faced in proving that the act was done because of the race or characteristic of the person or group, and because the terms ‘reasonably and in good faith’ and ‘artistic purpose’ are likely to be interpreted broadly in the favour of artists: Bryl & Kovacevic v Louis Nowra & Melbourne Theatre Company (Unreported, HREOC, Peter Johnson (Inquiry Commissioner), 21 June 1999, H97/161). However, these provisions remain relatively untested and it is certainly possible that an artistic work could be rendered unlawful by the operation of the various legislative provisions.

e. Further Reading

J Bakan, Just Words, Toronto: University of Toronto Press (1997).

D Browne, ‘The curtain falls on-line’ (1999) 4(2) Artlines 9.

M Clayton & T Borgeest, ‘Free speech and censorship after the Rabelais case’ (1998) 3 Media and Arts Law Review 194.

B Cossman, S Bell, L Gotell, & BL Ross, Bad Attitude/s on Trial: Pornography, Feminism and the Butler Decision, Toronto: University of Toronto Press (1997).

C Douzinas & L Nead (eds), Law and the Image, University of Chicago Press (1999).

L Edwards & C Waelde (eds), Law and the Internet: Regulating Cyberspace, Oxford: Hart Publishers (1997).

S Edwards, ‘On the contemporary application of the Obscene Publications Act 1959’ [1998] Criminal Law Review 843.

J Eisenberg, ‘In cyberspace, everyone can hear you scream: Internet defamation for beginners’ (1996) 1(4) Artlines 1.

S Fish, There’s No Such Thing as Free Speech, and it’s a Good Thing Too Oxford University Press (1994).

H Foerstel, Free Expression and Censorship in America: An Encyclopedia Westport, Connecticut: Greenwood Press (1997).

J Fleming, The Law of Torts (9th Edition) Sydney: LBC Information Services (1998).

M Hamilton, ‘Art speech’ (1996) 49 Vanderbilt Law Review 73.

B Harris, ‘Should blasphemy be a crime? The Piss Christ case and freedom of expression (1998) 22 Melbourne University Law Review 217 (Case Note: Pell v Council of Trustees of the National Gallery of Victoria [1998] 2 VR 391).

Hon Justice P Heerey, ‘The bite bit – literary criticism and the law of defamation’ (1992) 11 University of Tasmania Law Review 17.

N Hore, ‘Censor and be damned’ (1996) 1(5) Artlines 14.

L Kaplan, The Culture of Slander in Early Modern England, Cambridge: Cambridge University Press (1997).

P Kearns, The Legal Concept of Art, Oxford: Hart Publishing (1998).

A Kenyon, ‘Defamation, artistic criticism and fair comment’ (1996) 18(2) Sydney Law Review 193.

A Kenyon, ‘Problems with defamation damages?’ (1998) 24(1) Monash Law Review 70.

L McNamara & T Solomon, ‘The Commonwealth Racial Hatred Act 1995: Achievement or disappointment?’ (1996) 18 Adelaide Law Review 259.

C Manchester, ‘Obscenity, pornography & art’ (1999) 4(2) Media and Arts Law Review 65.

R Mortensen, ‘Blasphemy in a secular state: A pardonable sin?” (1994) 17 University of NSW Law Journal 409.

R O’Neill, ‘Free Speech on the Internet: Beyond “Indecency”’ (1998) 38 Jurimetrics 617.

C F Stychin, ‘A “timid esthetic”?: Performance art in the United States Supreme Court’ (1999) 4 Media and Arts Law Review 4.

Hon D Williams, ‘From censorship to classification’ (1997) 4(4) E Law – Murdoch University Electronic Journal of Law.

 

 



[1] Prohibiting racial vilification and homosexual vilification. In the United States such instances also include desecration of the flag and blasphemy.

[2] Except Victoria and the ACT.

[3] See Brown v Classification Review Board (1998) 154 ALR 67 at 76–77 for a discussion of the common law’s limited protection of freedom of expression in Australia.

[4] The High Court of Australia has developed a limited constitutional right to ‘free speech’ (see discussion below), but this too can be overridden by the legislature in certain circumstances. Similarly in the United States it can be misleading to imagine that the Constitutionally protected right to free speech is an unlimited right, the protection is broader than that provided in Australia but it is not boundless. For a discussion of the protection of speech in the United States, see, for example, S Fish, There’s No Such Thing as Free Speech, and it’s a Good Thing Too, Oxford University Press (1994) and H Foerstel, Free Expression and Censorship in America: An Encyclopedia, Westport, Connecticut: Greenwood Press (1997). In relation to the protection of speech under the newer, Canadian Charter of Rights and Freedoms, see J Bakan, Just Words, Toronto:University of Toronto Press (1997).

[5] Paul IV and Pius IV added draperies and still more draperies, Pius V had some of the figures repainted and Clement VIII wanted to destroy the whole damned thing. See Anthony Blunt, Artistic Theory in Italy 1450–1600, (1940), pp 118–119.

[6] See Hon. Daryl Williams, ‘From censorship to classification’ (1997) 4(4) E Law – Murdoch University Electronic Journal of Law, <www.murdoch.edu.au/elaw/issues/v4n4/will441.html>.

[7] The introduction of legislation to ‘classify’ internet content was consistently portrayed as a necessary protective measure undertaken to shield children from exposure to pornographic or offensive material in their homes. See: ‘Legislation introduced to protect children online’, media release, Senator Richard Alston, Minister for Communications, Information Technology and the Arts, 21 April 1999.

[8] See Kearns, The Legal Concept of Art, Oxford: Hart Publishing (1998) at p 37. This exhibition continued to provoke heated reactions outside of England. In 1999 it toured to New York and was exhibited at the Brooklyn Museum of Art. While in England it was the portrait of Myra Hindley that provoked the strongest reaction, in New York it was the work depicting a Black Virgin Mary daubed with cow dung that was at the centre of the controversy. The mayor of New York at the time threatened to withdraw the Museum’s funding if it exhibited the works. The Museum retaliated by applying for an injunction restraining the Mayor from withholding the City’s funding for the institution.

[9] The show was covered extensively in the press but a useful overview is at: <http://en.wikipedia.org/wiki/Sensation_(exhibition)>.

[10] Quite how a collection of works owned by Charles Saatchi would not have been seen as ‘close to the market’ from the outset might be considered a ‘bit of an oops’. Given that the show would have been funded by a conservative commonwealth government, the director of the NGA, Brian Kennedy, must have felt as though he was channelling one of the works – the Damien Hirst shark suspended in formaldehyde, appropriately entitled, The Physical Impossibility of Death in the Mind of Someone Living.

[11] The conservator obeyed the order but used a patching technique that allowed the painting to be restored under a subsequent administration.

[12] The work is a photograph of a crucifix immersed in urine. One of the unusual aspects of this case is that it is the image combined with the title that gives rise to the potentially offensive nature of the work. See Pell v Council of Trustees of the National Gallery of Victoria [1998] 2 VR 391.

[13] See Herbert N Foerstel, Free Expression and Censorship in America: An Encyclopaedia, Westport, Connecticut: Greenwood Press (1997).

[14] By contrast, at another MCA – that of Chicago – the Mapplethorpe show entitled Robert Mapplethorpe: The Perfect Moment drew that museum’s highest attendance figures, without a whisper of controversy.

[15] Stephen, Digest of the Criminal Law, 3rd edn, London (1883), p 116.

[16] Publication is not to be given its colloquial meaning. It is used in its legal sense, to mean ‘communication to another person’. For example, an artwork would be published if it were merely shown to a prospective purchaser. Mere possession of the work would not be sufficient, for it is its ‘publication’ not its possession that is subject to sanction: see Dugdale v R (1853) 1 E & B 435; 118 ER 499.

[17] It has been a matter of considerable legal debate whether or not the prosecution has to prove that the publisher of the obscene work actually intended to deprave or corrupt the viewers. The better view appears to be that the offence of obscene libel is not one of strict liability, and that the prosecution does have to prove the criminal intention, namely an intention to deprave and corrupt. Given this, it is clearly difficult for the prosecution to prove that an accused person actually intended to ‘deprave and corrupt’. This problem used to be surmounted by reliance on the legal presumption that ‘one intends the natural consequences of one’s act’. This is no easy matter, and is perhaps a further explanation why cases of obscene libel are now very rare.

[18] See Pell v Council of Trustees of the National Gallery of Victoria [1998] 2 VR 391; Ogle v Strickland (1987) 71 ALR 41 at 52 (a case about the classification of the film, Hail Mary); and Right to Life Association (NSW) Inc v Secretary, Department of Human Services and Health (1995) 128 ALR 238 at 271. The common law of England continues to recognise the publication of a blasphemous libel as a criminal offence: see Whitehouse v Lemon [1979] AC 617 (concerning the publication of a homoerotic poem in the British newspaper Gay News) and Choudhury v United Kingdom (1991) HRLJ 172 (concerning the publication of Salman Rushdie’s Satantic Verses).

[19] [1990] 2 QB 619.

[20] Kearns at 29. Obscene libel was abolished in England in 1959, see the Obscene Publications Act 1959, s 2(4), but as this case shows, other common law offences endure.

[21] (1868) LR 3 QB 360 at 371.

[22] Crowe v Graham (1967) 121 CLR 375 at 392.

[23] [1952] 2 All ER 683.

[24] [1973] AC 435.

[25] St John-Stevas, Obscenity and the Law, London: Secker & Warburg (1956).

[26] (1967) 121 CLR 375 at 396.

[27] R v Close [1948] V.L.R. 445 at 465.

[28] R v Close above at 463–465.

[29] McGavan v Langmuir 1931 SC (J) 10 at 15.

[30] See Clarkson v McCarthy [1917] NZLR 624.

[31] The Obscenity Laws, A Report of the Working Party of the Arts Council of Great Britain, Andre Deutsch, (1969).

[32] St John-Stevas, Obscenity and the Law, London: Secker & Warburg (1956).

[33] This Act was accompanied by complementary State and Territory legislation that provides for the enforcement of the provisions of the Act.

[34] See s 233BAB of the Act and Regulation 4A of the Customs (Prohibited Imports) Regulations 1956 (Cth). Note that these Regulations use an ‘objectionable goods’ definition.

[35] See ss 471.16–471.23.

[36] Section 474.19.

[37] Section 474.22(2).

[38] See R v Stanley [1965] 2 QB 327; Crowe v Graham (1967) 121 CLR 375 at 390–394.

[39] Criminal Code Act 1899 (Qld), s.228.

[40] Above, para 20.

[41]  [1973] Qd R 25.

[42] (1973) 3 DCR (NSW) 115 at 123–124.

[43] [1998] 2 VR 391; see Bede Harris, ‘Should blasphemy be a crime? The Piss Christ case and freedom of expression (1998) 22 Melbourne University Law Review 217 (Case Note: Pell v Council of Trustees of the National Gallery of Victoria).

[44] (1994) 75 A Crim R 480. The report of this case includes considerable discussion of the Australian authorities, noting the relevance of drawing a distinction between the concepts of obscenity and indecency, expressing disquiet that the legislation seems to regard the concepts as interchangeable and that this could lead to an ‘undesirable level of censorship’.

[45] In Hennessy v Lee [1973] WAR 127 at 129–130, the expert witness said of the artwork: ‘it was pretty, of good design, well balanced and rhythmical. The colour was pleasing, very skilfully executed. It was a good piece of commercial art.’ This was not sufficient to establish that it was of artistic merit.

[46] R v Manson & Stamenkovic, Unreported, NSW CCA, 17 February 1993, Nos 60773/91 & 60821/91, per Gleeson CJ.

[47] This case is discussed in Manchester, ‘Obscenity, pornography and art’ 4(2) Media and Arts Law Review 65 at 78,and apparently led to the establishing of the Censorship Advisory Committee under the Censorship Act 1996 (WA).

[48] The Commonwealth offence presumably related to publishing an indecent article on the Internet. For consideration of what ‘offensive’ and ‘sexual pose’ mean, refer to R v Alexandro Silva [2009] ACTSC 108.

[49] L Kennedy, ‘Henson show charges’ SMH, May 23, 2008.

[50] Section 91G(2) Crimes Act 1900 (NSW).

[51] Section 91 G(3).

[52] And thus the author avoided making mention of the former Prime Minister who was able to be disgusted on morning TV without an opportunity to view the exhibition and the NSW Premier who was then in China but who was similarly disgusted. One might assume that both would be found to be reasonable persons.

[53] Section 4(c).

[54] Section 578(2).

[55] See the very useful Report of the Child, Pornography Working Party, Dept of Justice and AG (NSW) (2010) upon which the reforms were based: <www.lawlink.nsw.gov.au/…Child_Pornography_Working…/Final_Child_Pornography_Working_Party_Report_8Jan.pdf>.

[56] It abolished the old definition of child pornography: that is material that depicts or describes … a child: ‘(a) engaged in sexual activity, or (b) in a sexual context, or (c) as the victim of torture, cruelty or physical abuse (whether or not in a sexual context)’, in a manner that would in all the circumstances cause offence to reasonable person.

[57] NSW Bills Explanatory Notes: <www.austlii.edu.au/au/legis/nsw/bill_en/capaamb2010475/capaamb2010475.html>.

[58] Section 91HA; Classification is under the Classification (Publications, Films and Computer Games) Act 1995 (Cth).

[59] Part 10.6 of the Criminal Code 1995 (Cth), s 474.17.

[60] As above, s 473.4.

[61] Certainly being a public institution should meet the standard.

[62] Clause I of the Code states:

Classification decisions are to give effect, as far as possible, to the following principles:

(a)         adults should be able to read, hear and see what they want;

(b)         minors should be protected from material likely to harm or disturb them;

(c)         everyone should be protected from exposure to unsolicited material that they find offensive;

(d)         the need to take account of community concerns about:

(i)         depictions that condone or incite violence, particularly sexual violence; and

(ii)         the portrayal of persons in a demeaning manner.

[63] Classification (Publications, Films and Computer Games) Act 1995 (Cth).

[64] Section 578C Crimes Act 1900 (NSW).

[65] The Rabelais case involved a student publication that contained an political article, ‘The art of shoplifting’ that allegedly promoted illegal activity. The publication was refused classification. See Brown v Members of the Classification Review Board of the Office of Film and Literature Classification (1998) 154 ALR 67; M Clayton & T Borgeest, ‘Free speech and censorship after the Rabelais case’ (1998) 3 Media and Arts Law Review 194.

[66] Section 11 Classification (Publications, Films and Computer Games) Act 1995 (Cth).

[67] Critics of classification decisions point out that the material that is refused classification is often that which is aimed at audiences outside the ‘mainstream’ and can operate in a discriminatory fashion. See Queer Screen Ltd v The Chief Censor, Unreported, FC of A, Lindgren J, 23 February 1995; cf Bad Attitude/s decision in R v Butler [1992] 1 S.C.R. 452, 89 D.L.R. (4th) 449 (Canada).

[68] Wilson & White (eds), ‘Panic: Media, morality, culture’ (1997) 85 Media International Australia.

[69] A Philips, ‘How not to be offensive online’ (1998) 144 Communications Update 20.

[70] See <www.acma.gov.au/WEB/STANDARD/pc=PC_90156>.

[71] The Defamation material is written by Richard Potter, barrister, Lower Ground, Wentworth Chambers. Richard is a specialist in defamation law.

[72] Hyer v Lindholdt [2007] NSWSC 795.

[73] Atrill v Christie [2007] NSWSC 1386.

[74] Arthur Dent  v  Macquarie Radio Network Pty Ltd [2006] NSWSC 186.

[75] Moumoutzakis v Caprino [2008] NSWDC 168.

[76] Hustler Magazine v Falwell (1988) 485 US 46.

[77] Donogue v Hayes (1831) Exch 265.

[78] Falkenberg v Nationwide News Pty Ltd Unreported (16 December 1994) (NSW).

[79] Harry Seidler & Associates Pty Ltd v John Fairfax & Sons Ltd [1986] Aust Torts Reports 80 – 002.

[80] District Ct (NSW), Unreported, 28 September 1993.

[81] Channel Seven v Manock (2007) 232 CLR 245.

[82] Section 8.

[83] Racial Discrimination Act 1975 (Cth), s 18C – unlawful behaviour, s 18D – exemptions; Anti-Discrimination Act 1977 (NSW), s 20C – Racial Vilification, s 38S – transgender vilification, s49ZT – homosexual vilification, s 49ZXB – HIV/AIDS vilification unlawful; Discrimination Act 1981 (ACT), s 66 –vilification in relation to race, sexuality, gender identity or HIV/AIDS); Civil Liability Act 1936 (SA) s73 – racial victimisation and the Racial Vilification Act 1996 (SA).

[84] Anti-Discrimination Act 1977 (NSW) s 20C(1).

[85] Racial Discrimination Act 1975 (Cth), s 18C(1).

 

16. LOAN AGREEMENTS

16.1       Introduction

Before using this Chapter it would be wise to have already considered the issues set out in Chapter 15 and, in particular, to have given thought to the checklist for loan agreements. Checklists such as these are an invaluable risk-management tool when drafting agreements because they help you to ensure that the agreement contains everything you need. Given that we usually work from an earlier document (a precedent) it is an understandable temptation simply to review what is already there: it is much harder to recognise what should be there but is not. For this reason, the prudent drafter will always use a checklist of issues as an aid to memory. Checklists are invaluable drafting tools and you should personalise them so that they cover everything relevant to your needs.

16.2       Form of documentation

There are two basic styles of loan-in agreement: one can be described as ‘body heavy and annexure light’ and the other, ‘body light and annexure heavy’. There is no right or wrong approach; it is a matter of preferred style.

Annexure heavy

Some borrowers put as much of the detail as possible into the annexures. For example, the loan–in agreement for the National Museum has a first section that is little more than a cover sheet with a place to sign. All of the details are in the annexures:

  • The unique details of the loan are set out in one annexure: Name of lender; description of objects being lent; purpose of the loan; value of the objects and so on. This allows all of the matters that will vary from loan to loan to be provided without the need to vary that part of the document that sets out the rights and obligations that govern the loan. Keeping the variables in a separate annexure facilitates the administration of the loan and makes it easier for the subsequent computerisation of the loan details, thus improving administration during the period of the loan.
  • Descriptions of the substantial (and largely immoveable) legal rights and responsibilities are contained in another annexure. When the legal matters are set out in a form that appears ‘standard’ they can appear less overwhelming (and less negotiable) than when they are contained in the body of the agreement. Their legal effect is the same; it is a matter of psychology, style, and administrative convenience.

Annexure light

It is the experience of some borrowers that the use of annexures is daunting for lenders – particularly where the lender is not another institution. Where material is borrowed from members of the public, a bulky contract full of legalese creates an unnecessary psychological hurdle in the loan process. The simpler the form and the language, the easier it is for the lenders to understand the terms of the loan and the easier it is for them to agree to those terms.

16.3 Examples of loan-in agreements

Major institution: non-art museum

The following is the Loan Agreement/Incoming that Simpsons developed for a federal collecting organisation. Like those of most major institutions, it is of the ‘annexure heavy’ variety:

INWARD LOAN AGREEMENT

LOAN No:    2000/62

FILE No:      00/195

LENDER(S):          Mr Joe Citizen

                  23 Every Street

                  ANYTOWN NSW 2564

LOAN START DATE: 10 May 2010

LOAN FINISH DATE: 10 May 2012

DESCRIPTION OF OBJECTS: See attached schedule

CONSERVATION[1] (Mark ‘NO’ if not permitted) May the Museum carry out a minimal amount of conservation treatment if necessary [The lender would be advised beforehand of the work to be carried out]. Yes ….   No  ….

COPYRIGHT OWNER

Copyright owner’s name: …………………………………………………….

Address: ……………………………………………………………………………..

The Lender has agreed to loan to the Museum the object(s) described on the basis detailed in the Agreement and on the terms and conditions attached.

The Museum has agreed to accept the object(s) on loan to it on the basis detailed in the Agreement and on the terms and conditions attached.

Lender’s Signature(s):……………………………… Date:………………….

X Museum, Manager, Registration:………………………….. Date:……………

(a)            Inward Loan no. 2010/62

For xyz Exhibition

Loan Schedule

                           Description                                    Value

  1.                                          $

                           TOTAL                                    $

 

CONDITIONS OF INWARD LOAN

The Lender nominated above agrees to lend the Object listed above (‘the Object’) for the purposes identified above to the Museum a body corporate established by the ## Museum Act (‘the Museum’) in accordance with the conditions (‘the conditions’) of loan printed on the back of this Agreement. Where more than one Object is listed above, this Agreement applies to each of those Objects.

Costs

1. Unless the Lender states otherwise in writing, the Museum shall meet all reasonable costs associated with the shipping of the Object.

Shipment of Object to Museum

2. (a) Unless the Museum states otherwise in writing, the Lender shall pack the Object and undertake shipping or courier arrangements for delivery of the Object to the Museum. Prior to dispatch of the Object, the Museum and the Lender shall agree on the method of shipment which is to be confirmed on dispatch.

     (b) If the Lender ships the Object the Lender shall warrant to the Museum that the Object is adequately and securely packed by professional packing staff for the method of shipment agreed upon, including any special instructions for unpacking and repacking.

     (c) The Lender shall arrange for all necessary international customs clearances in relation to the Object imported/exported, except for Australian customs clearances and shall provide the Museum with copies of all necessary customs clearance documentation.

     (d) The Museum shall arrange all necessary Australian customs clearances in relation to the Object imported/exported.

Damage to Object

3. (a)   The Museum shall report any damage or loss immediately to the Lender. Photographic documentation of damage will be undertaken by the Museum.

     (b) Where in the opinion of the Museum, the Object may be damaged by infestation, the Object may be fumigated at the discretion of the Museum.

Purpose of Loan

 4. (a) The Museum may, at its discretion, display the Object at such places as the Museum considers will be suitable having regard to the necessity to properly preserve the Object.

     (b) Should the Museum wish to include the Object as part of a touring exhibition or to loan the Object to other museums this shall be indicated on the front of this Agreement, or the Museum shall obtain the written agreement of the Lender.

     (c) The Museum is not obligated to display the Object for the whole of the term of this Agreement.

Period of Loan

5. (a) Subject to these conditions, the Object shall continue on loan to the Museum until the date specified under the heading ‘Period of Loan’ on the front of this Agreement.

     (b) The period of loan may be extended or reduced by further agreement in writing between the Museum and the Lender.

Insurance

6. The Museum will insure the interests of both the Lender and the Museum in the Object from the time the Museum or its agent takes possession of the Object against loss or damage, until the Object is either returned to the Lender (or dealt with in accordance with Clause 16(a) of this Agreement) under an all risks, wall-to-wall insurance policy of the Museum, with terms as similar as possible to the terms of policies taken out by the Museum in respect of Objects deposited with it and subject to the exclusions usually applying to such policies.

7. (a) The Object shall initially be insured for the value specified under the heading ‘Value’ on the Schedule to this Agreement. The valuation specified by the Lender shall reflect the fair market value of the Object. If the Lender fails to specify an amount under the Valuation heading, the Museum shall set an estimated value for the purposes of insurance for the period of the loan.

    (b) When the Museum nominates a value in accordance with paragraph 7(a), the value is not to be construed as an appraisal by the Museum.

     (c) Where the loan period exceeds twelve months, the Lender shall notify the Museum if the nominated insurance value is to be changed. Any such change to the nominated insurance value shall reflect the fair market value of the Object.

8. If insurance is waived by the Lender, this waiver shall constitute the agreement of the Lender to release and hold harmless the Museum from any liability for damages to or loss of the Object whether due to the negligence of the Museum, or any other cause whatsoever.

9. In the event of loss or damage to the Object the liability of the Museum to the Lender shall not exceed the amount recoverable to the Museum by its insurers under the insurance policy effected by the Museum in accordance with clause 6.

Conservation

10.(a) Unless otherwise indicated by the Lender under the heading ‘Conservation’ on the front of this Agreement, the Museum will request the Lender to provide written authorisation for any alteration, restoration or repair of the Object. The Museum for its own purposes, may examine the Object by modern scientific methods.

     (b) During the period of the loan the Museum will, subject to paragraph 10(a), maintain the Object in good order and repair having regard to their condition at the commencement of the loan.

11.(a) Condition records will be made by the Museum on arrival and departure. The Museum will provide the Lender with a report on the condition of the Object if requested to do so in writing by the Lender.

Credit

12. Unless otherwise indicated on the front of this Agreement, the Museum will acknowledge the Lender in any publicity or in relation to any reproduction or photographs of the Object.

Copyright and Reproduction

13. Subject to the Museum obtaining the necessary copyright consent (if any), the Museum may reproduce and photograph the Object for publicity, loan, sale or educational purposes.

14. If the Lender is the owner of the copyright in the Object, the Lender agrees that the Object on exhibition to the public may be subject to photography by the public, using existing ambient lighting.

Return of Object to Lender

15. (a) At the end of the period of loan, the Museum shall return the Object to the Lender at the address specified in this Agreement.

      (b) The Object(s) will be returned to the Lender in their original container, unless other arrangements are made with the Museum in writing.

16. (a) If the Museum, having made all reasonable efforts to return the Object, is unable to return the Object within six months of the termination of the loan, the Museum may place the Object in storage with any warehouse company for the account and risk of the Lender or may retain possession and charge storage fees at the rates quoted by any such warehouse company and carry insurance on the Object also at the cost of the Lender.

     (b) The Museum shall have a lien against the Object and any other objects loaned under separate arrangements by the Lender to the Museum for any storage fees and insurance costs incurred in accordance with sub-clause 16(a).

Applicable Law

17. The law applicable to this Agreement shall be the law of Australia and the courts of Australia shall have exclusive jurisdiction.

Major institution: art museum

Most loan-in agreements share common principles, irrespective of the subject matter of the loan. That said, art museums have some special needs.

Sample Loan-in Agreement

     

16.4       VARIATION AGREEMENT

One of the dangers with model agreements is that they suffer from ‘cut and paste’ syndrome. The busy Collections Manager takes the last contract they used and amends it for the present loan; then takes that amended document for the next one and makes changes…and so on. Of course all model contracts should be seen as living creatures that can be improved by experience but sometimes, the changes are not deliberate improvements. More commonly, after a while, the integrity of the original document is compromised in ways that are not obvious to the non-lawyer.

To avoid this, the Christchurch Art Gallery has adopted an unusual but excellent risk management strategy. The body of the standard agreement remains intact and  unamended from loan to loan but where individual transactions require that the standard terms be amended, a Variation Agreement is entered. This document is provided below. As you will see, it is very simple. By using this strategy the lender can be confident in the integrity of the basic terms of the contract and if the negotiation requires amendments to be made, they are made in an obvious, deliberate way that will not, by oeversight, carry forward into future transactions.

My description of the contract as being ‘a living creature’ is intended to recognise that contracts should be regularly reviewed in light of experience from use. All contracts benefit from this but it should be treated as a deliberate process: are there things that are regularly changed in the Variation Agreement that would be best taking up in the standard agreement? The organisation’s lawyer should check those changes before being put into effect.

Commentary on the inward-loan agreements

The above agreements reflect the particular needs of each kind of organisation given the scale of exhibitions and the values of items being loaned. The following are some of the issues that deserve to be highlighted: not all necessarily should be included – but they should be considered.

The lender notifications

One common matter that would be a beneficial inclusion in most agreements is a clause that obliges the lender to advise the borrower if there is any change in address of the lender or change of ownership of the borrowed material. Many borrowers have faced difficulties when, at the end of the loan period, they discover that the material has been sold, the lender has died, gone bankrupt, gone into liquidation or simply moved. The borrower needs to know that the person giving it instructions has the authority to do so (and the basis of that authority) and needs to be assured it is returning the loan to the appropriate person, entity and place. It is exposing itself to a potential claim for negligence if it does not do so and including such notice requirements alleviates some of that risk. If the lender fails to provide such notice to the borrower in breach of its obligations under the agreement, it is more difficult for it to allege negligence on the part of the borrower.

Copyright

Where the loan is of material in which copyright subsists, most agreements should contain a provision that articulates the borrower’s rights to exercise any of the rights that are the exclusive property of the copyright owner. Can it be reproduced in the catalogue, on the web site, in advertising for the show, for teaching purposes, for archival purposes? If so, what are the limits of that permission? Too often, the copyright clauses in loan agreements are too bland and without sufficient detail to act as tools that facilitate or maximise the opportunities of the loan.

It is also important that some enquiry be made as to the basis upon which the lender has made the claim of ownership of copyright. All too often, the owner mistakenly assumes that it is the owner of copyright and grants the borrower rights that it does not have. When dealing with non-sophisticated lenders it is well worth including a question in the pre-loan negotiations along the following lines: ‘(i) Are you the owner of copyright in the work? If so, what is the basis of your ownership of copyright?’ This assists the borrower to ascertain the validity of the claim. If the answer to the second question is ‘Because it owns the work’, the borrower knows that it cannot rely on the claim of copyright and the permissions that flow from it.

Where the lender does claim to be the owner of copyright it is also worth including a simple clause that states: ‘If the Lender is not the owner of copyright in respect of any of the Works that are subject to this agreement, the Lender warrants that he/she has obtained all necessary permissions.’ This is simple risk management: sometimes, no matter how careful the borrower is and how honestly and fervently the lender believes in its ownership of copyright, the lender may be sued by a third party who believes that they are the real owner of the rights. The inclusion of a warranty such as this means that the borrower can then look to the lender for the costs and damages incurred as a result of its breach.

Period of the loan

Although most lenders and borrowers think that this is clear in all loan agreements, often it is not. Absolute clarity as to the commencement of the loan is essential because this is the moment that risk transfers to the borrower. All standard loan agreements should be reviewed to ensure that this apparently simple feature is clearly established.

More commonly, loan agreements do not sufficiently specify the end of the loan period. This is particularly important in situations in which the loaned material is not collected or is unable to be returned.

First, at the end of this period, the borrower’s legal duty of care owed to the lender should reduce to those of an involuntary bailee.

Second, it is the date of the end of the loan from which all notice periods will need to be calculated. For example, if the agreement contains a provision that allows the borrower to warehouse, sell or acquire the abandoned material, the borrower must be able to comply meticulously with its time-based obligations and be able to show exactly upon what dates it acquired which rights.

Return of the loan material

As is discussed in Chapter 15.7, many institutions are plagued with the problem of uncollected loans – material that can never become part of the collection but which the organisation is obliged to store, insure and administer. Given that all public institutions need to maximise the effectiveness of their limited resources, it is a waste.

It is essential that lenders include full and favourable clauses that articulate their rights over uncollected or undeliverable loan material. The National Museum example above is deficient in that it does not provide for a right to actually dispose of the material. It promises that the museum will warehouse the material and although the storage costs may at some time be recoverable from the owner, it is foreseeable that there will be a time when the storage charges far exceed the value of the material and until the owner is found, the museum has to keep paying the costs.

In the Regional Galleries agreement there is a provision to dispose of uncollected loans but, it is suggested, the time lines are too long. Having to hold the work for six months before putting it in a warehouse is an undue burden on the storage facilities of many regional galleries and having to pay for the warehousing of the work for two years before being able to dispose of it, is similarly too burdensome.

Also in the Regional Galleries example, the disposal power only applies to situations in which the lender is obliged to collect the work. It does not deal with the situation in which the borrower has agreed to return the work but is unable to do so because the lender has failed to advise it of a change of address, has gone into liquidation or done something else that causes to frustrate the borrower’s fulfilment of its obligations. As is discussed earlier, it is essential that careful consideration be given to this provision so that the borrower can rely on the contract’s mechanisms rather than the more arduous statutory ones.

Catastrophe

As hard as one might try to avoid them, accidents do happen. People are thoughtless or ignorant. The elements wreak their havoc. Whatever the reason, all borrowers are familiar with the dreaded situation in which loaned material suffers damage.

It is good practice to include a provision that provides an agreed mechanism that will be carried out in such situations. The Regional Galleries agreement includes a simple version of this in the body of the agreement, but where the procedure is more complex, it is best handled as a schedule to the agreement. The relevant clause in the National Museum example needs expansion. It neither gives guidance to staff in the event of disaster nor gives the lender assurance as to what procedures will snap into effect in such circumstances. If we think of the loan agreement as a risk management tool, it is clear that this provision could be made much more useful. It is also interesting to note that the same institution’s loan-out agreement contains a much more useful provision – a useful example of how so many institutions use more vanilla contracts when borrowing than when they lend their own material.  In a commercial context this approach is understandable but in the case of collecting institutions, where lenders are borrowers and borrowers are lenders, it makes sense to have a uniform approach to such obligations so that the administrative procedures are uniform allowing the staff to be more certain of what is expected of them.

16.5       Loan-out of collection material

Introduction

The museum’s collection is its core business. Moreover, the items that make up the collection are often of considerable monetary, social, spiritual or intellectual importance. They are often unique and easily damaged or destroyed. Accordingly, when collection items are allowed out of a museum, it can only be in circumstances in which all aspects of the transaction are highly controlled. The loan-out agreement is the very heart of the risk management regime and every prudent owner will need to ensure that its asset is treated in a way that reflects its value and importance.

Outward loan agreements take into account the nature and particular characteristics of the material being loaned. The concerns of a loans officer in an art museum will have some resonances for the loans officer in a natural history museum: the generic issues will be consistent. However, the natural history loan agreement will have greater emphasis on quarantine obligations, the prohibition or regulation of destructive testing, the mechanisms required by CITES legislation and the risk management procedures required by the sometimes hazardous nature of the collection materials (or storage media such as ethanol). Each collection type imposes its own requirements on the loan-out agreement.[2]

The issues relevant to the loan-out agreement are no different from those discussed in relation to loan-in agreements: the positions are merely reversed. Each party will consider such issues from its own point of view. Yet the loan-out agreement seems to attract more time and care from collection managers and registrars than the loan-in documentation. Curious. So, if you are reading this chapter because you want to review your loan-out agreement, please take one step back and start by reading the early part of this chapter relating to Loans-in.

The Scream

In the course of researching this chapter, I spoke to a number of experienced registrars and collections managers. They agreed that the terms of their loan-out agreements were clearly more stringent than those imposed by their loan-in agreements. Why is it that we lend our own assets we want maximum protection but when we borrow the assets of others, we want wriggle room? The contradiction of logic is obvious.

There is no rule as to how this is resolved. Sometimes the owner insists that the use of their contract must be used; sometimes it the larger institution dominates over the smaller organisation. Unbelievably, some of the managers disclosed that where each insisted on the use of their own agreement, each would sign the other’s contract! A lawyer’s Christmas! It means that, in effect, there is no written contract of loan because the terms of the transaction are conflictual and uncertain. This is what I call ‘The Scream’.

Let’s be clear. In every loan transaction there is an owner who is entrusting its asset into the hands of the borrower. Why not acknowledge the obvious? It will save a lot of negotiation time (and avoid your being tempted into The Scream) if your loan-in agreement is consistent with your loan-out agreement. To show that this can be done, the following loan-out agreement is one that is consistent with the loan-in agreement provided above.

ENDNOTES


[1] The question relating to conservation should not be in this part of the agreement. It would be more appropriate in the Description of Objects annexure where all the variable details are set out.

 [2] It may also allow the collection to gain an individual kind of benefit from the loan. For example, where a natural science museum lends a quantity of material to a researcher it may require that the researcher gives the museum a copy of the article and, further, that the researcher uses the museum’s numbering when referring to the museum’s objects. Similarly where the loan material is largely unidentified or classified, the museum may require that all data be made available to the museum. In this way the researcher benefits from having access to the public asset and the public interest is promoted by the enhancement of publicly available knowledge. (If the researcher is not prepared to agree to the release of information because of its potential for commercialisation, the museum should consider entering a commercialisation agreement in respect of the project.)

26. THE USE AND PROTECTION OF COPYRIGHT

This chapter has benefited from the extensive comments of Ian McDonald MA LLB. Ian is a lawyer who specialises in copyright. He was formerly a senior legal officer with the Australian Copyright Council.

26.1 INTRODUCTION

Copyright plays an essential role in any developed sophisticated society. It is the principal tool by which society accords recognition to creativity, innovation and imagination. This is economically expressed awarding the owner of the copyright a range of exclusive rights and powers.

At the end of the day, the rights of copyright are an award for innovation, creativity and risk taking. It is recognition that both the culture and the economy of our community are dependent on encouraging and fostering these characteristics.

Copyright is one of the basic tools of every museum, gallery, library and archive. Indeed, such institutions are not only holders of large quantities of copyright material, they are, themselves, great users and creators of copyright material. As an owner, it is important for collection managers to understand the basic principles of copyright, so that they may better utilise and protect the institution’s resources and assets. As a user, it is important so that the institution can better fulfil its public exhibition and education purposes.

The change from closed fist to open palm

In just a generation, we have seen great changes in the purpose and function of collecting organisations. We have seen a steady (or perhaps unsteady) move by which collection, conservation, protection, and the carrying out of closed research has evolved to embrace public access, public education and indeed public pleasure and entertainment.

One might observe that purpose and function have always varied between the collecting sectors: a hundred years ago, although the cant may have included fine words about the public benefit of collections, the reality was that many were operated as fiefdoms in which public access and participation was only modestly encouraged. Those attitudes are unrecognisable in the modern museum or gallery. For their part, archives, because of their very nature and purpose, were seen as repositories of the public record; whereas now, archives have a much greater, and developing, focus on public access and education.[1] In contrast to other collecting institutions, libraries have always been oriented towards public service and access.

These changes have an important effect on the attitude of collection managers towards copyright. There is an often-expressed annoyance or frustration that copyright inhibits the ability of the collecting institution to fulfil its public access and educational purposes. This is understandable but needs to be taken in a wider context: the system of copyright is one of competing public interests. There is a public interest in granting copyright owners certain control over their intellectual property just as there is a public interest in granting limited exclusions and exceptions in favour of those who need access to the copyright material for acknowledged public purposes. The public interest in, say, a library, gallery or museum making its collection available on-line is not inherently more important than the public interest in protecting the economic rights awarded to copyright owners. It is a question of balance.

The change as to the identification and management of assets

This evolution in thinking about collection functions has been reflected in the way that we identify, capture, administer and exploit the assets of the organisation. Every collecting institution is a repository of vast opportunities to encourage thinking and to promote, commercialise, publish and disseminate knowledge. But to do this effectively, it must rethink the way that it defines its assets: the modern institution has its accessioned collection but, just as important is the value in its name and reputation and in the ideas, knowledge, creativity and public reputation of its professional staff. It is these things that confer or enhance the value of the collections. These are the invisible assets of the institution. They are off balance sheet. They are part of the intellectual property assets of the organisation but most organisations fail to capture, either properly or at all, the potential value of these assets. Many do not even try to identify them. This is changing rapidly.

The changes imposed by technology

Copyright is also one of the areas of collections management that has been particularly affected by technological changes. The development of digital technologies and the Internet have, on one hand, made collections more accessible to the public and, on the other, have made it more difficult to prevent unauthorised reproduction and distribution of copyright material.The fact remains that computerisation has been probably the biggest change to the way collecting organisations function. Virtually all areas of professional practice are now assisted by computerisation and this is probably the greatest single catalyst for change in the way that we administer, conserve, protect, exhibit and explain our collections.

In spite of its importance, too few collection workers sufficiently understand the law of copyright.[2] Indeed few enough lawyers are competent in it. The aim of this chapter is to provide a basic guidance to the principles of copyright law, and to indicate the kinds of issues and problems that can arise in this area.

An approach to answering your copyright questions

To use this chapter effectively, it is useful to understand the approach taken in setting out the information.

First, the chapter sets out the general principles of copyright. This is basic knowledge for any collection manager. This includes understanding what copyright is; how it comes into existence; what material it affects; how to work out who owns it; and how long it lasts. It is important to replace old and inaccurate rules of thumb with a correct, if basic, understanding of the principles.

Second, the chapter asks: If the material is protected by copyright, what general exceptions exist? The Copyright Act 1968 (Cth) provides a number of general exceptions that permit the use of material when certain conditions are met.

Third, there are a number of special exceptions provided for collecting institutions. These are discussed last because, generally, they only become relevant (a) if an application of the general principles demonstrate that the material is protected by copyright, and (b) the general exceptions do not apply.

In this way, finding the correct answer to a copyright question is like climbing a pyramid. You start by applying the broad principles and work your way up an ever-narrowing path towards the answer.

26.2 WHAT IS COVERED BY COPYRIGHT?

The phrase ‘intellectual property’ includes copyright[3], patent, trademark and confidentiality. Copyright, the focus of this chapter, is principally about the right to reproduce, publish or publicly communicate. In contrast, patent is a system whereby the patent holder has a monopoly on an invention or novel process; trademark provides a system of protection for names and logos used in connection with the supply of goods or services; and confidentiality provides a non-statutory, case law-based rules to permit confidential information to be communicated without the fear that the confidence (and the value in it) will not be breached, abused or appropriated.

Three independent rights arise from an act of authorship:[4]

(a)                The rights that accompany ownership of the atom-based object or “thing” (such as the right to hang it, shelve it, exhibit it, clean it, sell it, protect it, or even destroy it); and

(b)                The copyright that arises from putting the concept into a material form. (These are ephemeral, for copyright is just an intellectual construct. We know that it’s a noun – but who has ever touched one?); and

(c)                The moral rights of the author – rights that are granted by the Copyright Act 1968 (Cth) that are distinct from copyright personal to the creator and are inalienable.

For example, if an article is written or a canvas painted, A may own the physical thing, B may own the copyright in the work, and C, the moral rights in the work. The collecting organisation may own the object but not the copyright in the object, may own the copyright without owning the thing itself, or may own both. In any event, it will never own the moral rights.

Copyright protection is given to two classes of things:

(a)                 ‘Works’ (including artistic, musical, literary[5] and dramatic works).

(b)                 ‘Subject matter other than works’ (for example sound recordings, cinematograph works, broadcasts and published editions).

The latter, are a quite modern addition to the copyright armoury. They are a result of publishers, record companies and film studios lobbying governments to invent a whole new species of copyright material on the basis that they invest enormous sums and should have the benefit of rights that will allow them to protect and profit from that investment. It illustrates an interesting divergence in the development of copyright: for ‘works’, media convergence has required that the technology or media (used to embody a creative idea in material form) is becoming increasingly irrelevant. In contrast, the laws relating to ‘subject matter other than works’ remain steadfastly focused on individual media or technologies.

26.3 WHAT IS THE SOURCE OF COPYRIGHT?

Copyright is a creation of statute. The first Australian copyright legislation was enacted in 1905[6] and came into effect in 1907. It was short-lived. In 1912, the Australian Federal Government enacted a further Act that adopted the UK legislation.[7] In a startling exhibition of colonial dependence by a newly independent country, Australia declared the British legislation to be in effect throughout Australia. It remained in force in Australia even after it had long been repealed in the United Kingdom.[8] Indeed, it stayed in effect until it was eventually repealed and replaced in 1968.[9] These days, copyright protection in Australia is provided by the Copyright Act 1968 (Cth) (as updated from time to time).

In addition, Australia belongs to a number of international treaties, which dovetail into the Australian laws. These treaties provide Australian copyright owners with reciprocal copyright protection in other treaty countries.

 26.4 FORMALITIES NECESSARY TO PROTECT WORKS

Requirements

The Copyright Act 1968 (Cth) provides automatic protection for ‘works’. No formalities are necessary provided the person claiming copyright meets the criterion of being a “qualified person”.[10] As soon as an idea is given a ‘material form’, copyright exists in it. It is automatic.

Although no formalities are necessary for copyright to subsist, it can still be worthwhile to include the commonly seen formula: © name and the year that the work was first published.[11] It is a useful reminder to would-be users that the material is copyright but is not a requirement for the subsistence of copyright. The roots of the copyright notice lie in legal and diplomatic history: although most developed countries had long been members of the Berne Convention (which provides a formality-free approach), the United States did not sign the Berne Convention until 1989. Rather, it was a member of the Universal Copyright Convention (‘UCC’), which requires that every published copy of the copyright material must bear the copyright notice if it is to qualify. Until the United States joined the Berne Convention, if one wanted protection in the US, formal registration of the copyright at the Library of Congress and use of the copyright notice, was essential. Much US material fell into the public domain in this way.[12]

Many people are mystified by the P symbol on records. The P symbol stands for ‘Phonograph’ and comes from the Rome Convention (yet another treaty!). It came into force in 1964. This was the first time sound recordings were given copyright recognition in an international treaty. Again, all published copies should have a P symbol, the year of first publication and the owner or the person who published the record itself (not always the same person).

In Australia, the principal purpose of the copyright notice is simply to remind would-be users that the work is subject to copyright and that permission is required. It is not a requirement for the subsistence of copyright. [13]

Essentially, copyright in Australia is automatic and it is free.

26.5 REQUIREMENTS OF COPYRIGHT

A ‘work’ will be the subject of copyright, from the moment of its creation, if it satisfies the following conditions:[14]

  • it has been reduced to a ‘material form’;
  • it is an artistic, musical, literary or dramatic work;
  • the author is a ‘qualified person’; and
  • the work is ‘original’.

Each of these requirements needs some explanation.

What is ‘material form’?

Copyright only protects a work[15] that is in a ‘material form’. Copyright does not protect ideas; rather, it protects the physical form in which those ideas are expressed.[16] So it does not protect the idea or subject matter of work, only the representation itself. Thus the idea of painting a soup can is not protected, but a painting of it would be.[17]

The work need not be a physically separate or discrete entity; it can be integrated into a larger structure or object. If so, it must be sufficiently identifiable to attract protection.[18]

It is not vital that the material form be permanent. After all, what is permanent? Thus if a work, such as Dobell’s portrait of Joshua Smith or Sutherland’s portrait of Sir Winston Churchill were destroyed, the copyright would continue to protect the exclusivity of the reproduction rights. Nevertheless, the question of when a form is sufficiently substantive to qualify as ‘material’ has remained a point of discussion in the case law. For example, is a vapour sculpture (made by an artist using a jet engine) ‘material’? Some would say not because it is insufficiently substantial. But what of an ice sculpture?[19] It employs the same substances but lasts slightly longer. All would surely say, ‘Yes’. What then is the difference? Merely the length of time that the work exists? Given that every physical object is in a constant state of decay, the question is ‘what degree of substantiality is required?’ From vapour to ice to stone – it is only a matter of degree. [20]

The subtleties of the ‘materialness’ issue are further demonstrated by holograms and laser light sculptures. The eye sees the work but the hand cannot feel it; yet, with a movement, the hand can destroy it. The work in any traditional sense exists only in the eye of the individual viewer. In this instance the right question to ask is not ‘How long did the work exist?’ but rather, ‘What is the work?’ In this case, the real work is the photographic plate that is the basis of the holographic projection – rather than the projection itself. (Just as it is with film: it is the film that is protected, not merely the image projected from it.) The question of whether a transitory event such as a firework display could be protected both as an artistic work and as a dramatic work under the Act was raised when Channel Nine sought to prevent the ABC from filming and broadcasting certain elements of the 1999/2000 New Year firework display in Sydney.[21]

What is a ‘work’?

The word ‘work’ in the Act is defined as meaning ‘a literary, dramatic, musical or artistic work’.[22]

        1.1.    Literary Work

The Act provides no definition of ‘literary work’ although the Act states that it includes: ‘(a) a table, or compilation, expressed in words, figures or symbols; and (b) a computer program or compilation of computer programs.’ There is a considerable quantity of case law as to what amounts to a literary work. Where the proposed entity is a novel or a poem, it is easy to identify. Where the proposed entity is a betting slip or a recipe or a newspaper advertisement, the results are not so readily intuitive.

There is no requirement that a literary work be ‘literary’ in character: a train timetable and the lyrics to a song are as readily protected as a novel. Nor does a literary work contain any prescribed number of words: While we can safely say that a single word cannot be a literary work[23] and that titles alone would not usually be sufficiently substantial, there is no doubt that a haiku would suffice.

In 2010 this issue came before the courts when a newspaper sought to prevent an abstracting service using its headlines. This was the first case to fully examine whether headlines were sufficiently substantial to attract copyright protection. The court held that: ‘Headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works.’[24]

        1. 2.    Musical Work

Nor is the phrase ‘musical work’ defined. It would appear that the legislators assume that anyone can tell music when they hear it. Style, genre, length (and volume) are irrelevant. The Act doesn’t legislate as to how many musical notes it takes to make a musical work.[25]

        1. 3.    Dramatic Work

Similarly, a ‘dramatic work’ is not defined except that the Act states that it includes ‘(a) a choreographic show or other dumb show; and (b) a scenario or script for a cinematograph film; but does not include a cinematograph film as distinct from the scenario or script for a cinematograph film.’ In one case[26] it was suggested that there was a minimum requirement of some type of performance, whether by human beings or by characters, and something sufficiently predetermined as to plot, choreography, script, characterisation or interaction between characters.

        1. 4.    Artistic Work

By contrast, an ‘artistic work’ is defined in the Act as follows:

  • a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not;
  • a building or a model of a building, whether the building or model is of artistic quality or not; or
  • a work of artistic craftsmanship.[27]

An artistic work is given a broad definition and can include very simple designs, such as the design for a flag,[28] or a logo for a company or event.[29] The Act also provides that:

  • A ‘drawing’ includes a diagram, map, chart or plan;
  • An ‘engraving’ includes an etching, lithograph, product of photogravure, woodcut, print or similar work, not being a photograph. Arguably it also extends to cover the block or plate that is used to produce an engraving or similar work.[30]
  • Photograph’ means a product of photography or of a process similar to photography, other than an article or thing in which visual images forming part of a cinematograph film have been embodied, and includes a product of xerography.
  • Sculpture’ includes a cast or model made for the purposes of sculpture, medallions and friezes. It can also include found objects that are installed or assembled as a sculpture, and objects created for a purpose that is not solely artistic, such as models of mundane objects used for an advertising campaign.[31]

With paintings, drawings, engravings and photographs, the work need be neither skilful nor artistic, but this is not the case where the work is classified as one of ‘artistic craftsmanship’. There is no statutory definition of ‘artistic craftsmanship’ and until 2007 there was considerable uncertainty as to what constituted ‘artistic craftsmanship’.

The work of ‘artistic craftsmanship’ must actually be one of ‘craftsmanship’; something demanding a particular skill or training. This is now interpreted quite generously and even includes situations where the work has been produced by machine rather than by hand. In the Cuisenaire case, it was alleged that the defendant was breaching the plaintiff’s copyright in an educational tool for the teaching of arithmetic. The ‘material form’ consisted of small wooden rectangular blocks that were variously coloured. The court held that no copyright existed in the blocks because they were neither ‘artistic works’ (see the definition above) nor ‘works of artistic craftsmanship’. The reasoning for the latter finding was: (a) they were not works of ‘craftsmanship’ in that no special skill or training was necessary to cut out simple shapes of wood, and (b) they were not intended to be ‘artistic’.

‘Artistic craftsmanship’ is not a synonym for ‘hand made’. It does not preclude items that have been made by machine.[32]

The cases have long required that such works both be works of ‘craftsmanship’ and ‘artistic’ and there has always been tension around the weight to be accorded to a maker’s desire to design something beautiful and the constraints imposed by utility of function. In Burge v Swarbrick,[33] the issue was whether a ‘plug’ or mould for a racing boat was capable of being a work of artistic craftsmanship. The High Court held that a work could be on of artistic craftsmanship notwithstanding that its form was partly dictated by functional considerations: beauty and utility are not mutually exclusive. The court distinguished between designs that were determined by functional requirements (such as the physics of yacht speed or the shape of a horse shoe) and designs that were unaffected by function (such as wallpaper or a wrought iron gate). Here, the speed of the racing yacht was more important than aesthetic considerations and, therefore, the yacht was not a ‘work of artistic craftsmanship’.[34]

What is a ‘qualified person’?

Even if something has ‘material form’ and is a ‘work’, in order to attract copyright protection a ‘qualified person’ must have created it. Who is such a person can be a complicated legal question but it is not one that will concern the majority of readers; anyone who is either a citizen of or a resident of Australia at the time the work was ‘made’ or reduced to its material form (which includes when the work was first stored if it is a digital work) is a ‘qualified person’. To qualify as ‘resident’ the person need not be formally a ‘permanent resident’; rather, a ‘qualified person’ need only be ordinarily resident in Australia.[35]

What is ‘originality’?

Irrespective of the date of its creation, a work must be ‘original’ if it is to be protected by copyright[36]. This does not mean that the idea behind the work must be novel, for copyright does not protect ideas but rather the material form in which those ideas are expressed.[37] Thus, in the unlikely event that two artists working absolutely independently produced identical works, both would be ‘original’ for the purposes of the Act and both would be capable of attracting copyright protection. For example, if two artists independently paint a picture of Ayres Rock and by some extraordinary chance produce identical images, both works would be protected. Neither would be novel but both would be original. This is because the ‘originality’ of the works flows from the independent application of skill by their authors.[38] The amount of skill, labour and experience necessary is not defined in the Act or the cases, but one authority has suggested that it must be more than ‘negligible’.[39]

The requirement of ‘originality’ has two related aspects. The first is that the creation of the work has required some independent skill on the part of the author.[40] The second aspect requires that the work should not be a substantial copy of another. ‘Originality’ is always a question of degree. It is not merely a matter of ‘changing a line here or there’. If a person copies a substantial part of another artist’s work but changes the odd line or colour, not only will it not be sufficiently original to attract protection but further, the first artist will still be able to show a causational link between the works, and thus establish that the copyright of the original piece has been infringed. Conversely, an adaptation or modification of a previously existing image or pattern may none the less satisfy the requirement of ‘originality’ even if it does infringe the copyright of that prior image. This is a fraught area for designers, commercial artists and illustrators. Often the brief from their client starts with an example of an existing work and the instruction: ‘We want something that looks and feels like this.’ Although you will hear many rules of thumb about how much you can use,[41] the only thing they have in common is that they are wrong. There is only one test:  Has there been a reproduction of a substantial portion of the work? But more of this later.

In the 1981 Archibald Prize competition, considerable controversy arose when it was discovered that the winner, Eric Smith, had painted the Komon portrait from a photograph. Although the publicity of the time concerned whether the painting was ‘from life’ as required by the rules of the competition, the circumstances are also interesting from a copyright point of view. The original photograph was clearly a copyright work. The painting was a reproduction of at least a substantial portion of that work. Accordingly, (unless the artist had obtained a licence to use the photograph in this way) the painting was probably a breach of the copyright in the photograph and thus exposed the artist to a potential claim for damages.[42]

This, however, does not prevent the portrait from attracting copyright protection in its own right. Although the artist used the photographic image as the basis of his painted work, he clearly used considerable skill, labour and experience in its production. The exercise of these personal attributes was sufficient to make the work ‘original’ for establishing the subsistence of copyright. Strictly, there is no reason why a work cannot be both an infringement of copyright in an earlier work, and, at the same time, an original work in its own right.

Related to this is the question of whether a compilation of works that are themselves copyright can itself attract copyright protection. For example, a collection of essays in an exhibition catalogue, or a website, where the works have been arranged in a particular way and accompanied by commentary, can itself be protected, over and above the copyright in the individual works. Provided a sufficient degree of skill and labour has gone into the compilation and presentation of the compilation, and the individual authors who contributed to the making of it can be identified, it may be protected.[43]

Similarly, although a work from a collection may not be protected because the copyright in it has expired, reproductions of the work may be protected because the ‘originality’ threshold is a low one in relation to photographs.[44] On a practical level the museum can prevent visitors from taking photographs of works in the gallery and can issue its own reproductions of that work that are themselves copyright protected.[45]

26.6 WHAT ARE THE RIGHTS OF COPYRIGHT?

Because copyright arises purely from each country’s national laws there are differences from country to country. Although the actual rights which are recognised may differ, because of the network of international treaty obligations, the principles in most countries are reasonably common.

In Australia, the specific rights of copyright vary according to the subject matter:

(i)            Literary, dramatic or musical works[46]

In relation to literary, dramatic or musical works, copyright is the exclusive right to do all or any of the following acts:

  • to reproduce the work in a material form;
  • to publish the work;
  • to perform the work in public;
  • to communicate the work to the public;[47]
  • to make an adaptation of the work;[48]
  • to convert a work into a digital or other electronic machine-readable form;[49]
  • to rent recorded music and computer programs;[50]
  • to make a sound recording or cinematograph film of the work.[51]

All of these things require the permission of the copyright owner.

(ii)          Artistic works

In the case of an artistic work, copyright is the exclusive right to do all or any of the following acts:

  • to reproduce the work in a material form;[52]
  • to publish the work;
  • to communicate the work to the public.[53]

Note that there is no ‘exhibition’ right. Exhibition does not require the permission of the copyright owner.

(iii)         Sound recordings[54]

In relation to a sound recording, copyright is the exclusive right to do all or any of the following acts:

  • to make a copy;
  • to cause it to be heard in public;
  • to communicate it to the public;
  • to rent it;
  • to convert it into a digital or other electronic form.[55]

(iv)          Films[56]

In relation to a cinematograph film, copyright is the exclusive right to do all or any of the following acts:

  • to make a copy;
  • to show it in public;
  • to communicate it to the public;
  • to convert the film into a digital or other electronic form.[57]

(v)           Television, cable and sound broadcasts[58]

In relation to a television broadcast or sound broadcast, copyright is the exclusive right:

  • in the case of a television broadcast in so far as it consists of visual images – to make a film of the broadcast (or a copy of such a film);
  • in the case of a radio or television broadcast – to make a sound recording of the broadcast (or a copy of such a sound recording); and
  • in the case of a radio or television broadcast – to re-broadcast or communicate it to the public.

(vi)         Published editions

Copyright, in relation to a published edition of a literary, dramatic, musical or artistic work, is the exclusive right to make a facsimile copy of the edition.[59]

The right to reproduce

Although the term ‘reproduction’ is used a lot when talking about copyright, it is commonly misunderstood. Reproduction may take many forms. Although it is most usually used as a synonym for ‘copy’ it actually has a wider meaning in copyright law, for the copy does not have to be exact.

Reproduction need not be a copy of the whole work, merely a ‘substantial part’ of it. For example, using four notes from a piece of music would not usually be thought of as a ‘substantial portion’, but in the case of, say, the opening four notes of Beethoven’s Fifth Symphony, the answer would be different.

Reproduction need not be in the same medium.[60] It need not be in the same dimension.[61] It need not be in the same form.[62] If one takes a photograph that is in copyright from the collection and, without permission, prints it on card for sale in the institution’s shop, the copyright owner’s exclusive right of reproduction is infringed. Similarly, digitising an artwork, a literary or a musical work without permission of the copyright owner, (for example by scanning it and storing it on a hard disk) would constitute an infringement.[63] This is so even if a two-dimensional work is reproduced in a three-dimensional version, and vice versa.[64]

A commonplace example of this right in practice occurs where a collecting institution wishes to reproduce a copyright work from its own collection in an exhibition catalogue. It must obtain the permission of the copyright owner. Accordingly, to minimise the pain of chasing permissions, it is good practice to ensure that the acquisition documentation states:

  • whether or not the work is copyright;
  • if so, who is the owner of copyright;
  • when the copyright expires;
  • and if the lender, donor or vendor of the work is also a copyright owner, whether they give the museum a licence to reproduce the work for, say, non-commercial use within the museum and the right to publish it in catalogues (which presumably will be for sale).

        1. 5.    Control of Access

Where the collection owns a unique work but not the copyright in it, the institution may still effectively control the making of reproductions. Although it does not have the right to make reproductions itself, it can prevent the person who does own the copyright from having access to the work for the purpose of making transparencies or other copies of the original. Refusing physical access in effect hobbles the copyright owner. Accordingly, in order to exploit its exclusive rights, the copyright owner must either make the reproduction before losing possession of the work or get permission of the owner to access the work for such purpose. Access to the original work is not one of the rights of copyright.

The right to publish

In relation to the exclusive rights enjoyed by a copyright owner, the terms ‘publish’ and ‘publication’ have a specific meaning. Essentially it means, the right to make something public for the first time.[65] A literary, dramatic, musical or artistic work, or an edition of such a work, is ‘deemed to have been published if, but only if, reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public’.[66] For example, it might include placing an image of the work on the Internet, where copies can be viewed or downloaded.

The Act provides for a number of situations that do not to constitute ‘publication’:

  • mere exhibition of an artistic work;
  • (of a sculpture) the public supply of photographs or engravings of the sculpture;[67].
  • the performance of a literary, dramatic or musical work;
  • the supply (whether by sale or otherwise) to the public, of records of a literary, dramatic or musical work;
  • the construction of a building (or of a model of a building);
  • (of a building or a model of a building) the public supply of photographs or engravings of the building or model.

For a musical composition, publication may be by means of sheet music or records; for an artistic work it may be by the making and selling of limited edition prints or by reproducing it in a catalogue.

A film is ‘published if, but only if, copies of the film have been sold, let on hire, or offered or exposed for sale or hire, to the public’.[68] Similarly, a sound recording is ‘published if, but only if, records embodying the recording or a part of the recording have been supplied (whether by sale or otherwise) to the public’.[69]

The right to communicate to the public

Communication of a copyright work to the public requires the permission of the copyright owner.

This right came into effect in 2001. It was a major development in Australian copyright law. The new right not only includes the right to ‘electronically transmit’ but also to ‘make available on-line’.[70]

This right is technology non-specific but certainly covers free-to-air television, cable, radio, email and the Internet. It also covers Intranets, both within an individual institution and with partnering institutions.

Whereas the old Act did not contemplate the Internet, email and Intranets, the new right provides specifically for ‘on-line’ distribution and, because the right is ‘technology neutral’, it will continue to operate and withstand the semantics and processes of scientific innovation that would outdate a definition based on existing technology.

Importantly, the right covers communications not only within Australia but ones originating here and received overseas. Australian copyright owners can thus seek to prevent the unauthorised communication of their works offshore. For example, the right can be used to stop an Australian based website from making digital material available not just in Australia but also anywhere in the world.

In brief, the new right to ‘communicate’ works to the public is extremely broad. It clarifies and reinforces the basic and exclusive right of copyright owners to control the use of their work in the digital environment.

26.7 OWNERSHIP OF COPYRIGHT

Introduction

Understanding how to work out who is the owner of copyright is one of the core skills of collection utilisation. This is not a matter of intuition. Getting the right answer requires the application of quite complex principles but once applied, you know who is capable of granting the permissions that you require.

As you will see from this section, even when people such as lenders and donors say that they own the copyright, reliance on such assurances is dangerous. Few owners have the knowledge to make such an assertion. This is not an area where you can say, ‘I think it is, therefore it is.’ You must apply the principles.

The impact of contract

The sections that follow, describe who will own the copyright in the work if no specific agreement is made between the owner and the other party (such as the employer or the client). However it is very important to remember that the statutory provisions as to the ownership of copyright are all subject to amendment by contract. When you are trying to determine the true ownership of copyright the starting point is to understand the statutory position and then ask whether that position was varied by contract. For example, it is common for employment agreements to contain provisions that vary the general rules and that change the statutory position by providing the employee with carve-outs or particular rights. Similarly there frequently clauses in commissioning agreements that vary some aspects of rights ownership as conferred by the Act.

Artistic, musical, dramatic and literary works – the general rule

As a rule, the ‘author’ of a work is the first owner the copyright in it.[71] The Act does not define ‘author’ (except with regard to photographs) but the cases show that the ‘author’ is the person who gives physical form to the creative idea. It is not necessarily the person who thought of the idea; rather, it is the person who transformed that idea into a material form.[72]

Where the focus of the enquiry is ‘subject matter other than works’, the first owner of copyright is generally the ‘maker’. The question, ‘who is thy maker?’ is discussed below.

There are exceptions to this general rule (such as those relating to employees and the Crown) and these will be discussed later. For the moment it is important to understand that the general rule – and indeed any of the ownership provisions of the Copyright Act 1968 (Cth) can be altered by contract. Accordingly, even where the Act provides the general rule, you must ask whether there was any agreement that might have varied the standard position.

Musical works

        1. 6.    The General Rule

The general rule is that the ‘author’ is the owner of copyright. The composer is the author of the music. The lyricist is the author of the lyrics.

The lyrics are protected as a literary work and the music as a musical work. If their authors are different people, then separate permissions will have to be obtained from each if you want to reproduce the song.

Even if a composer is commissioned to write the music, he or she still retains the copyright. However, where composers are actually employed to write songs (such as the ‘Tin Pan Alley’ composers earlier last century in New York), the employer owns the copyright. Without knowing the facts surrounding how a work came into existence, it can be difficult to determine whether it was created as a result of a commission or as part of an employment. For example, original music in a television commercial might have been written in-house by an employee of the jingle house. Alternatively, it might have been commissioned from a freelance composer.

        1. 7.    Tracking Down the Owner

Where the work has been released on a record, CD or DVD, the label information is the starting point. The label usually will tell you the name of the composer (and any lyricist) of the track and the publisher of the composition. The publisher represents the author and should be your starting point. With the constant ebb and flow of companies and catalogues within the music industry, the label may not represent current ownership. If the named publisher no longer represents that composer, it will tell you. If Google does not give you a contact, you can contact the Australasian Performing Rights Association (APRA). It represents all of the Australasian music publishers and 99.9% of the professional composers.

If the label says ‘Copyright Control’ this generally means that there is no publisher involved and the rights are retained by the writer. Again, this is not infallible as the writer may have done a deal after the date of the release of the recording. In such cases, go to APRA.

Literary works

        1. 1.    The General Rule

The basic rules concerning the ownership of copyright in literary works are the same as those relating to musical works: the owner is the author, even where the work is commissioned; but if a person writes something in the course of employment, the employer will own the copyright.[73]

As a consequence of this, personnel who write learned books and articles should clarify with their employers, exactly who is to control the copyright of their works. This is a potential industrial relations landmine, for most writers of academic material would be horrified if they knew that their employer may have the right to claim the copyright in their work.

        1. 2.    Tracking Down the Owner

The best lead in tracking ownership of material that has been published in book form is to examine the copyright information at the beginning of the book. This will usually tell you whether the publisher is the owner of the content or whether rights in the literary work have been retained by the author.[74]

Where the publication is older, the publisher information is not very reliable. Many publishers have been taken over, catalogues are sold, rights expire and publishers wind up business. Nevertheless, contacting the publisher is the first prudent step. If an Internet search does not give you the required contact information, then contact the Copyright Agency Limited. This organisation represents all professional publishers and a large proportion of authors.

Remember that many literary works in fact are accompanied by other copyright works such as licensed photographs, diagrams or quotations. To reproduce these you will need to get permission from all of the rights owners not just the principal author. Rights ownership of these will usually be described in the published work[75] and if not, the owner of copyright in the principal work will usually be able to provide contact details.

Exceptions affecting artistic, musical, dramatic and literary works

There are some important exceptions to the general rule. These relate to commissioned works and work made pursuant to an employment agreement.

        1. 1.    Commissions for Photographs

(vii)        Photographs taken before 1 May 1969

In the case of photographs taken prior to 1 May 1969, the copyright vests in the person who owned the material on which the photograph was taken.[76]

(viii)       Photographs taken after 1 May 1969 but before 30 July 1998

Where the commissioned photographs were taken between 1 May 1969 and 30 July 1998, the copyright is owned by the commissioning party[77] regardless of the purpose for which the photograph was taken.[78]

(ix)         Photographs taken after 30 July 1998

The law changed again on 30 July 1998. From that date, the rule for commissioned photographs came into line with other artistic works – the author of the work (the photographer) is the owner of copyright. The only exception to this general rule is a sensible one: Where the photographs are taken for a private or domestic purpose (such as family portraits or wedding photographs), the commissioner/client owns the copyright.

1. 2.    Commissions for Engravings

If the commissioned work is an engraving, the commissioning client owns the copyright.[79] For example, an artist who commissions a person to make plates for print making, owns the copyright in the plates. Plate makers often control this by keeping physical possession of the plates. This doesn’t give them any copyright in the plates but creates an effective barrier to making reproductions. Accordingly, when seeking to acquire such rights the right person to approach is most likely to be the artist not maker of the plates.[80]

        1. 3.    Commissions for Portraits

If the commissioned work is a drawing or painting of a portrait, the commissioning party owns the copyright.[81]

(x)           The definition of portrait

The Act contains no definition of ‘portrait’ and, although this may be surprising to artists, the courts have not really defined it either. One commentator has suggested that ‘a portrait is any painting or drawing, the principal purpose of which is in the representation of a person or animal in whatever style of artistic expression’,[82] and certainly the courts seem to have developed a broad interpretation of the term. An example of this broad interpretation is provided by the extraordinary English case of Leah v Two Worlds Publishing Co Ltd in which a father asked an artist to paint a likeness of his dead son – by means of extrasensory perception. In a subsequent law suit brought by the artist against the publisher of a periodical entitled Two Worlds for the infringement of his copyright, the judge held as follows:

‘Engraving, photograph or portrait’ is a curious collocation of words: one would have expected the third word in that grouping to be something like ‘painting’, because engraving is a method of production, and so is photography; and it would seem that ‘portrait’ covers all kinds of pictorial representation, however produced. I am not sure that it is necessary to express a concluded view about the matter, but I should have thought that on the whole this was a portrait, a portrait produced by the mental process of the artist, and intended to represent a deceased person as that person was when living; and that it is none the less a portrait because the materials that the artist used were entirely subjective.[83]

The definitional problem also arose in the famous case of Attorney-General v Trustees of National Art Gallery of NSW & Dobell[84]. In this action an injunction was sought, restraining the trustees of the gallery from paying the 1943 Archibald Prize monies to Dobell. Also sought was an order requiring the trustees to carry out the terms of the trust. Obviously, this was not a copyright case, but nevertheless it did focus upon the definition of a portrait. The following is an extract from Justice Roper’s judgment:

The word is an ordinary word of the English language and its meaning has to be ascertained accordingly. … From the context in which it is used it is clear that the testator was referring only to a particular type of portrait namely one of a human being and painted by an artist. Considered alone the word has a wider meaning and would include certain forms of sculpture, certain types of photographs and certain other methods of representation all of which the testator has himself excluded and which require no further consideration. With the assistance of dictionaries and the many works to which I have been referred by counsel in this case, I think that the word ‘portrait’ as used in this will, incorporating in its meaning the limitations imposed by its context, means a pictorial representation of a person, painted by an artist. This definition connotes that some degree of likeness is essential and for the purpose of achieving it the inclusion of the fact of the subject is desirable and perhaps also essential. The picture in question is characterised by some startling exaggeration and distortion clearly intended by the artist, his technique being too brilliant to admit of any other conclusion. It bears, nevertheless, a strong degree of likeness to the subject and is I think, undoubtedly, a pictorial representation of him. I find as a fact that it is a portrait, within the meaning of the word in this will, and consequently the trustees did not err in admitting it to the competition.

Further, his Honour refused to state an opinion on the claim that the work was a ‘caricature’ or a ‘fantasy’. He said, ‘If it could be so classed that would only establish to my mind that the fields are not mutually exclusive, because in my opinion it (the work) is in any event properly classed as a portrait’.[85]

1. 4.    Works Created by Employees and Apprentices

Where a work was created under a contract of service or apprenticeship, the employer owns the copyright in any work done by the employee pursuant to that contract.[86] This is particularly important for commercial artists and photographers, designers, curators, text writers, jingle writers and the like, who are often employed.

Had Andy Warhol painted his soup can in the course of his employment with an advertising agency, the copyright in it would have vested in his employer and the artist would have made nothing from the thousands of reproductions that were made of the work. In contrast, if someone creates a work in his or her own time, outside the scope of employment, the copyright would vest in the employee.

To determine who owns the copyright in these cases there are two essential questions:

  • Was the person an employee?
  • If so, were the works created in pursuance of the employment?

Neither can be assumed. In many situations the person who created the work did so as an independent contractor rather than an employee. For example many architects retain contractors to work on projects and unless their contract specifies that the company will own the copyright in their work, the usual rules apply and the contractor as the ‘author’ of the work will own the copyright.

The second issue is to determine what is meant by the phrase ‘in pursuance of the terms of his or her employment’.[87] Sometimes people will claim ownership of copyright because they authored the work ‘in their own time’. That is not the issue. In a recent case, the Federal Court said that the appropriate question to ask is: ‘… did the employee make the work because the contract of employment expressly, or impliedly, required or at least authorised the work to be made?’[88] Looked at this way, the issue cannot be determined by looking at when the work was created but rather by looking at the overall terms of the contract of employment.

        1. 5.    SPECIAL RULES FOR Employees of Newspaper, Magazine or Other Periodicals

(i)            Pre 1 May 1969

If the work was created pursuant to an employment agreement with a newspaper, magazine or periodical before 1 May 1969, the proprietor owns the whole copyright. The only limitation is that the author has a right to restrain the owner from using the work in any way other than publication in a newspaper, magazine or similar periodical. The author has no right to use the material in any way. Rather, he or she has the right to supervise and limit the use made of it by the proprietor.[89]

(ii)           Post 1 May 1969 to 30 July 1998

Where an author made a literary, dramatic or artistic work between these dates, the publisher owns all copyright insofar as it relates to publication of the work in any newspaper, magazine or periodical, broadcasting the work, or reproducing it for the purposes of publication in the newspaper, periodical or broadcast. Apart from these rights, the employee owns the copyright. For example an employed journalist would own the right to publish a collection of her articles in a book and an employed artist would be able to publish postcards of his illustrations.

(iii)         Post 30 July 1998

The law changed again in the late 1990s as the role and importance of the digital environment became obvious to newspaper publishers. If the work was made on or after 30 July 1998, for inclusion in a newspaper magazine or journal, the employee or author owns only the right to control photocopying and book publication and the proprietor owns all other rights (including all other forms of commercialisation and digital rights).[90]

Sound recordings

Although we usually think of sound recordings as musical recordings, they actually cover a much wider range of material. For example, where the collecting institution records a speech or panel discussion given in the course of a public education program, that recording comes within this section.

        1. 1.    The General Rule

The general rule is that the copyright in a sound recording is owned by the maker of the recording. And who is the maker? There is no statutory definition but it is generally accepted that the ‘maker’ is the person who made the arrangements and paid for the master recording to be completed. Note that the focus is on who made the original master sound recording, rather than on the records that reproduce that master. After all, the record is just a copy of the master.

        1. 2.    The Live Performance Exception

Where the sound recording is of a live performance, the general rule is a little more complex: the copyright is shared by the maker and the performer.[91] Although the most common ‘live performance’ recordings are of musical works the net is much wider. The Act defines ‘live performance’ as:

(a)   a performance (including an improvisation) of a dramatic work, or part of such a work, including such a performance given with the use of puppets; or

(b)   a performance (including an improvisation) of a musical work or part of such a work; or

(c)   the reading, recitation or delivery of a literary work, or part of such a work, or the recitation or delivery of an improvised literary work; or

(d)   a performance of a dance; or

(e)   a performance of a circus act or a variety act or any similar presentation or show; or

(f)    a performance of an expression of folklore;

being a live performance, whether in the presence of an audience or otherwise.[92]

So then, who is ‘the performer’? The Act defines this as ‘each person who contributed to the sounds of the performance’.[93] If a person contributes to the sound, whether the drummer or the triangle player, that person is a ‘performer’.

To track down the copyright owner the first step is to contact the recording company. Sometimes the label copy will give you some clues. Sometimes though, recordings are made by one record company and licensed to another (for example, by an Independent which is tied to a Major) and these are a bit more complex, as copyright ownership will be determined by the terms of the contract between the label and the Major that is funding it. The company on the label will know the details of copyright ownership and will be able to give you the information you require.

If the collecting institution is a maker of sound recordings (say, as part of its public education program or an oral history project) it is important that its documentation acquires the rights from the ‘performer’ that permit it to use the recording. It is useful to adopt the same approach as that taken by music record companies: they get an assignment or licence of the performer’s rights in their recording contract. Similarly, the collecting institution should include a provision in its agreements with ‘performers’ that will allow the institution to use the recordings without having to go back to the performer. Although such permissions can be absolute, most institutions will specify the intended purposes and media. One of those purposes would usually include communication through the institution’s web site.

Published editions

The publisher of the edition owns the copyright in the published edition of a literary, musical, dramatic or musical work. Thus, if two institutions decide to co-operate in the mounting of an exhibition and a curator from one is asked to write an article for the catalogue whilst the other institution agreed to arrange and pay for the publication of the catalogue, the first museum would own the copyright in the article[94] and the second would own the copyright in the published edition.[95]

Joint authorship

Joint authorship exists where a work ‘has been produced by the collaboration of two or more authors and (is one) in which the contribution of each author is not separate from the contribution of the other author’.[96]

For example, if two or more people design a mural they would be joint authors and would share the copyright in that work. However, the person who thought up the theme of the mural or the very idea of painting the mural in the first place, would not be a copyright owner unless they had also been one of the artists. Only authors who have actually participated in the creation of a work can share in the joint ownership of copyright in it.

This distinction is important in Indigenous art because it explains why copyright is so unhelpful where the system of cultural control is based on the ownership of the subject matter rather than its material form. Joint authorship relates only to the making of the work. It does not recognise collective or group ownership of a particular story and its associated design under customary law, nor the right of that group to authorise a particular artist to create an artwork based on that story and design.[97]

Crown copyright

The Act provides special powers to commonwealth and state governments (the ‘Crown’). The general principle is that the Crown owns the copyright in any material made by or under its direction.[98] This principle can be amended by contract between the Crown and the relevant author or maker.

It is important to be clear about the legal structure of the collecting institution. As was seen in Chapter 1, some collections are part of the Crown but others, such as the major state and commonwealth collecting institutions are actually statutory corporations. They are established by their own individual statutes: although established by the Crown and controlled by the Crown, the purpose of establishing the institution as a statutory corporation is to create an entity that is distinct from the Crown. Such an institution can sue and be sued in its own name – and it is also independent of the Crown for the purposes of copyright.[99]

26.8 DURATION OF RIGHTS

Introduction

It is important to understand the principles underlying the duration of copyright. If you know that material is out copyright the world becomes simple: you don’t have to worry about whether any exceptions apply and you don’t have all of the problems associated with obtaining permissions.

Working out whether a copyright has expired or not is an everyday task for collection managers. Sadly, it is not easy. The laws affecting duration were changed in 1968 when the new Copyright Act came into effect – and then again in 2005 with the Australia–US Free Trade Agreement (AUSFTA). This is important to acknowledge because many of the old rules of thumb by which you may have lived have changed.

Generally, the AUSFTA extended the fifty-year copyright period to seventy years – but if a copyright had expired by 1 January 2005 when the AUSFTA can into force, it remained expired. Copyrights were not brought miraculously back to life by the introduction of the new, extended copyright periods. So, if something went into the public domain before 1 January 2005, it remains in the public domain. Let’s put that another way: if the author died before 1955, the work is out of copyright.

The following discussion may seem somewhat repetitive but it is worth risking the boredom of the reader so that the logic of the analytic principles is reinforced.[100]

Literary Works

With literary works[101] it is essential to determine whether the work has been:

  • published,
  • performed,
  • broadcast, or
  • recorded and those recordings offered or exposed for sale to the public.

For brevity’s sake, it is useful to summarise these uses of the work as ‘public uses’.

(iv)          Public uses during author’s life

If public use was made of the work during the author’s life and the author died before 1 January 1955, the work is in the public domain. The fifty-year period expired before the 2005 extension took effect.

If public use of the work was during the author’s life and the author died after 1 January 1955, copyright continues for seventy years from the end of the year in which the author dies.

(v)           No public use during author’s life

If there was no public use of the work during the author’s lifetime, the copyright period does not start running until the end of the calendar year in which it is published, performed, broadcast, or recorded and offered for sale. Accordingly, such works can remain in copyright indefinitely.[102]

Where the work was made public posthumously but before 1 January 1955, the work is out of copyright.

Where the pubic use of the work is posthumous but after 1 January 1955, the copyright period runs for seventy years from the end of the year in which the work is publicly used.

Musical works

(vi)          Public use during composer’s life

The work is in the public domain if:

  • the musical work was published, performed in public, broadcast, or recorded, or if recordings of the work are offered or exposed for sale to the public, during the composer’s life; and
  • the composer died before 1 January 1955.

In such a case, the fifty-year period expired before the 2005 extension took effect.

In contrast, if public use of the work (in any of the above ways) occurred during the composer’s life and the composer died after 1 January 1955, copyright continues for seventy years from the end of the year in which the composer dies.

(vii)        No public use during author’s life

If the work was not publicly used during the composer’s lifetime, the copyright period does not start running until the end of the calendar year in which it is published, performed, broadcast, or recorded and offered for sale. Accordingly, such works can remain in copyright indefinitely.[103]

Where the work was made public posthumously but before 1 January 1955, the work is out of copyright.

Where the public use of the work is posthumous but after 1 January 1955, the copyright period runs for seventy years from the end of the year in which the work was so used.

(viii)       Arrangements

It should never be assumed, just because the composer has been dead for centuries, that the work you wish to use is unprotected: An arranger may have rights, even though the work itself is out of copyright. Making an arrangement of a work that is in the public domain does not give the arranger rights in the work itself – but rather, in his or her arrangement of the work. The arranger is treated as an author and will enjoy copyright in their particular arrangement for the full period of copyright.

(ix)         Lyrics

Lyrics are protected as literary works.[104] There have been many mistakes made on the assumption that the period of protection for the musical composition was the same as that of the lyric or libretto.

Dramatic works

(x)           Public use during composer’s life

If the dramatic work was published, performed, broadcast, or recorded and offered for sale during the author’s life and the author died before 1 January 1955, the work is in the public domain. The fifty-year period expired before the 2005 extension took effect.

If public use of the dramatic work was made (in any of the above ways) during the author’s life and the author died after 1 January 1955, copyright continues for seventy years from the end of the year in which the author dies.

(xi)         No public use during author’s life

If there was no public use of the work during the author’s lifetime, the copyright period does not start running until the end of the calendar year in which it is published, performed, broadcast, or recorded and offered for sale. Accordingly, such works can remain in copyright indefinitely.[105]

Where the public use is posthumous, but before 1 January 1955, the work is out of copyright.

Where the public use is posthumous but after 1 January 1955, the copyright period runs for seventy years from the end of the year of the public use.

Artistic works

If an artistic work was created before 1 January 1955, it is in the public domain. The fifty-year period expired before the 2005 extension took effect.

If the work was created after 1 January 1955, the copyright in it will expire seventy years from the end of the year in which the artist dies.

There are some exceptions to these general rules. In particular, these relate to photographs and etchings.[106]

        1. 3.    Photographs

(xii)        Taken on or before 1 January 1955

If the photograph was taken[107] on or before 31 December 1955, the copyright expired prior to the AUSFTA coming into force and thus it is in the public domain.

(xiii)      Taken after 1 January 1955

Photographs taken after 1 January 1955 enjoy a seventy-year copyright period calculated from the death of the photographer.[108]

        1. 4.    Engravings

Engravings, although defined as artistic works, are treated more like literary works. Again, the fact and timing of publication is important.

(xiv)       Where the engraving has never been published

The copyright period does not start running until the end of the calendar year in which publication occurs. An unpublished engraving will remain indefinitely in copyright.

(xv)        Where the engraving is published during the engraver’s lifetime

If an engraving was made and published on or before 1 January 1955, it is in the public domain. The 50-year period expired before the 2005 AUSFTA extension took effect.

If the engraving was made and published after 1 January 1955, it benefits from the AUSFTA extension and copyright in it will last for seventy years from the end of the year in which the engraver dies.

(xvi)       Where the engraving was first published after the engraver’s death

If the engraving is first published posthumously, the copyright period runs for seventy years from the end of the calendar year in which the work is first published.[109]

Sound recordings

With sound recordings, it is essential to know when the recording was made. With commercially released recordings, this may be found in the liner notes or other notation on the cover (although there are complexities inherent in reworked, re-engineered recordings.)[110]

(xvii)     Sound recordings made prior to 1 January 1955

Copyright in sound recordings was first introduced in the Copyright Act 1968 (Cth). When they were given protection, the fifty-year period ran from the date the recording was made. Accordingly, any recording made before 1 January 1955 is in the public domain.

(xviii)    Sound recordings made after 1 January 1955

If recorded after 1 January 1955, a sound recording would have still been in copyright at the time of the AUSFTA and therefore it enjoys the extended period of protection. Copyright in these recordings lasts for seventy years and starts to run from the end of the year in which the recording was first published.[111]

Films[112]

It was the Copyright Act 1968 (Cth) that introduced copyright for films. Because of this, it is often said that films made before 1 May 1969 are not protected. This is not quite true. There is little doubt that the individual frames are capable of being protected as photographs.[113] It is also true that whole films may be protected as ‘dramatic works’. This applies where ‘the arrangement, the acting, form or the combination of incidents represented gives the work an original character’.[114] Thus, most commercially released films might reasonably come within this description whereas most home movies would not.

(xix)      Films made before 1955

Films made before the Copyright Act 1968 (Cth) came into force could only be protected as photographs or dramatic works. Accordingly, if the film was produced before 1955, any copyright protection has expired.

(xx)        Films made between 1955 and 1 May 1969[115]

Films made during this period may still be protected as a series of photographs or as a dramatic work. If the author of the photograph or dramatic work died after 1 January 1955, the film remains in copyright until seventy years from the end of the year of the author’s death.

There is little statutory guidance as to the definition of ‘author’ in this context.[116] It is a question of fact. Where reliance is on the photograph, the author of the photograph is most likely the cinematographer. In contrast, the author of the dramatic work will be either the scriptwriter or the director – depending on who is the person responsible ‘for the arrangement, the acting, form or the combination of incidents represented (that) gives the work an original character’.[117]

Note that in the film business it is important to distinguish between the author and the copyright owner. The film production company cannot itself be an author. In contrast it is almost always the copyright owner because it is standard industry practice to require everyone working on the film to assign all rights to the production company. This is significant because, although the owner of the rights is the person from whom you must get any permission, the identity of the owner is irrelevant to the duration of the rights. It is the date of death of the author that is crucial.

(xxi)      Films made after 1 May 1969

Films made after that date are protected for 70 years from first publication.[118]

Television and sound broadcasts

There was no copyright in television or radio broadcasts before 1 May 1969.[119] Since then, the copyright in a broadcast lasts for fifty years from the end of the year in which it was first broadcast. The AUSFTA did not change this position.

Published editions

There was no copyright in published editions before 1 May 1969.[120] Editions published after that, enjoy copyright protection for twenty-five years from the date of their first publication.[121] The AUSFTA did not change this position. Accordingly, any edition published more than twenty-five years ago, is in the public domain.[122]

Anonymous or pseudonymous works

If a literary, dramatic, musical or artistic work was first published anonymously or under a pseudonym before 1 January 1955, it is now in the public domain. [123] Photographs are an exception to this rule: their copyright expired if they were taken prior to 1 January 1955.

Those anonymous or pseudonymous works that meet the 1955 cut-off were still in copyright at the time of the AUSFTA and therefore benefit from the time extension. For these works, the period runs from the year of first publication plus seventy years. When calculating the duration of copyright, photographs are no longer treated differently from other works.

If the author’s identity is generally known or can be ascertained by reasonable inquiry, the general rule (where time is triggered by the death of the author) applies.[124]

Works of joint authorship

While a joint authorship work remains unpublished, the period continues indefinitely. It is publication that triggers the clock.

(xxii)     Published during the life of an author

Where the work is of joint authorship and is published during the life of the last surviving author, the period runs from the end of the calendar year in which the last surviving author dies. If we apply the general rule to this we can say that:

  • where the last author died before 1 January 1955, the work is out of copyright;
  • where the last author died after 1 January 1955, the AUSFTA applies and the period is seventy years from the death of the last surviving author.

(xxiii)   Published posthumously

Where the work was first published after the death of both authors,

  • where the publication took place before 1 January 1955, the work is out of copyright;
  • where the first publication took place after 1 January 1955, the AUSFTA applies and the seventy-year period runs from the end of the calendar year in which the work was first published.

(xxiv)    Joint authors and pseudonyms

Where one or some (but not all) of the joint authors uses a pseudonym, the period runs from the end of the year in which the last author whose identity is known, dies.[125] This means that where that author died prior to 1 January 1955, the work is now out of copyright. If the death is after that date, the AUSFTA has extended the term to seventy years from the end of the year in which the last surviving identified author died.

Where all of the authors use pseudonyms, if the identity of one of the authors is (or could have been) discovered while the copyright period was still running, the period runs from the end of the year in which that author, whose identity has been revealed, dies.[126]

Crown copyright

Where copyright is owned by the Commonwealth or a state, duration can be summarised as follows:

(xxv)     Literary, dramatic or musical works

(a)          where the work is unpublished, crown copyright continues to subsist so long as the work remains unpublished; and

(b)          where the work is published, the copyright subsists for fifty years after the expiration of the calendar year in which the work was first published.[127]

(xxvi)    Artistic works

The general rule is that crown copyright in an artistic work of which the Commonwealth or a State is the owner, continues to subsist until the expiration of fifty years after the expiration of the calendar year in which the work was made.[128]

There are exceptions relating to engravings and photographs:

i.Engravings: crown copyright continues for fifty years from the end of the calendar year in which the engraving is first published.[129]

ii.Photographs: If the photograph was taken before 1 May 1969, crown copyright continues for fifty years from the end of the calendar year in which the photograph was taken.[130] However if it was taken after that date, crown copyright continues to subsist for 50 years from the end of the calendar year in which the photograph is first published.[131]

(xxvii)  Sound recordings

Crown copyright in a sound recording made prior to 1 May 1969, subsists until the expiration of fifty years after the expiration of the calendar year in which the recording or film was made.[132] Where the recording was made after that date, crown copyright runs fifty years from the end of the year in which the recording was first published.[133]

(xxviii)                  Films

(a)  Before 1 May 1969

Where the film was made before 1 May 1965 there can be no crown copyright in the film itself.[134] As with other films, this does not mean that the film is unprotected, for it may be treated as an original dramatic work or as a series of photographs. There are a series of overly complex provisions in the Act dealing with this situation in relation to films made or published by the Crown. These may be condensed as follows:

If the film can be regarded as an original dramatic work[135] made under the direction of the Crown[136] or first published under the direction or control of the Crown,[137] then the crown copyright runs for fifty years from the end of the calendar year in which the film was first published.[138] Unless it is published, the copyright period does not start to run.

Where the film is not a dramatic work it may still be protected as a series of photographs. Crown copyright in those films or photographs runs for fifty years from the year they were taken. In other words, if it was taken more than fifty years ago, it is now in the pubic domain.

(b) After 1 May 1969

Where there is crown copyright in a film made after 1 May 1969, those rights continue to subsist for fifty years from the end of the year in which the recording was first published.[139]

(xxix)   Broadcasts

There is no crown copyright in broadcasts made before 1 May 1969. After that date, any crown copyright will subsist for fifty years from the date the broadcast was made.

(xxx)     Published editions

Crown copyright in a printed edition lasts for twenty-five years from the date of first publication.[140]

(xxxi)   The effect of contract

Where the Crown would have been the owner of copyright but agrees that the author of the work or maker of the recording or film is to be the copyright owner, the duration of those rights is less than in non-Crown situations[141]:

  • unpublished works: copyright continues indefinitely until publication;
  • literary, dramatic and musical works: copyright lasts fifty years from the date of first publication;
  • artistic works (except photographs and engravings): copyright lasts fifty years from the date the work is made;
  • films, photographs and engravings: copyright lasts fifty years from the date the work is first published.

Moral rights of authors

All of an author’s moral rights in respect of a work continue in force until copyright ceases to subsist in the work.[142] They are co-terminus with the copyright in the work.

There is an exception to this general rule for cinematograph works. For these, the author’s right of integrity of authorship continues in force only until the author dies.

Moral rights of performers for recorded performances

The performer’s attribution rights (the right of attribution of performership and the right not to have performership falsely attributed) continues in force until copyright ceases to subsist in the recorded performance.[143]

In contrast, the performer’s right of integrity of performership in respect of a recorded performance continues in force until the performer dies.[144] Upon death of the performer, his or her legal personal representative may exercise and enforce the moral rights in respect of the performance.[145]

Performers’ protection

The protection period of a performance begins on the day when the performance was given and ends twenty calendar years after the calendar year in which the performance was given.[146]

However, if the recording concerned was made without the performer’s consent, or involves the copying, selling, distributing, possession, importation or offering for sale of an unauthorised recording, then the protection period of a performance is fifty years.[147]

26.9 USES THAT DO NOT CONSTITUTE INFRINGEMENT

A: Introduction

Any discussion of uses that do not constitute infringement is destined to be complex. These exceptions are extremely detailed and complex and require detailed consideration of the relevant statutory provision. There has been much discussion of the new s 200AB of the Copyright Act 1968 (Cth). It had been hoped that this would provide a much needed simplification of the mechanisms available to collecting institutions that want or need to make copies of material in their collection. It did not. The provision, far from being a panacea, is complex, its meaning untested, and its practical implementation no easy matter. Nevertheless, it has added to the armoury.

No matter how frustrating it is on a day-to-day basis, it must be remembered that the rights of copyright are designed to be the exclusive rights of their owner. Any incursion into the exclusivity of those rights is only on the basis of acknowledged public interest but, notwithstanding that public interest, must necessarily be limited and particular if the value of those exclusive rights is to be maintained. Nevertheless, in a wide range of circumstances collecting organisations may make use of these third party rights.

It is useful to divide the exceptions provided by the Act into four categories:

(a)   general exclusions – exclusions available to everyone;

(b)   exclusions available to all collecting institutions;

(c)   exclusions available to Key Cultural Organisations; and

(d)   section 200AD.

Classifying the exceptions in this way not only gives some structure to what otherwise seems an amorphous jumble of possibilities; it is essential in order to get maximum use out of s.200AB. This new mechanism can only be used where there is no other exception available: If you don’t understand the exceptions, you cannot safely rely on s 200AB.

When working out whether there is an exception in the Act that allows you to do what you wish to do, always start at the top:

  • Is the material in copyright?[148]
  • If so, is it third party material?[149]
  • If so, do you want to use a ‘substantial portion’ of the material?[150]
  • If so, do you already have rights to use the material;[151]
  • If not, is there a general exception available?
  • If not, is there an exception that relates to collecting institutions?
  • If not, is there an exception available because your institution is a Commonwealth or state collecting institution?
  • If not, does s 200AB apply?
  • If not, can a licence be obtained for the use?
  • If not, what is your appetite for risk?

B: Licence

Although the most risk-averse approach is to obtain a licence from the copyright owner, this is not always realistic. Sometimes the sheer bulk of the material to be cleared makes it financially and administratively impracticable to obtain individual licences; sometimes the owner of the copyright is unidentifiable or untraceable.[152]

You will often find a way through the problem by following the path set out in this section. For example, with orphan works:

  • If the use is one of the general exceptions, you don’t need a licence and it doesn’t matter whether or not you can identify the owner.
  • If the use falls within the ‘libraries and archives exceptions’ (the administrative or preservation mechanisms) there is no requirement to identify or find the copyright owner.
  • Finally, there is s 200AB. As you can see from Example 3 in the discussion of s 200AB that follows, this provision has changed the way we look at orphan works: Once the legal analysis determines that s 200AB is available, whether or not to reproduce a work becomes primarily a risk management issue.[153]

C:     General exceptions

The general exceptions are available to everyone in the community – including collecting institutions.[154] These may be summarised as follows:

(i)            sculpture or craft works in a public place

(ii)          incidental use for film or television

(iii)         fair dealing[155]

(a)          fair dealing for the purpose of research or study

(b)          fair dealing for the purpose of criticism or review

(c)          fair dealing for purpose of parody or satire

(d)          fair dealing for purpose of reporting news

(e)          fair dealing for purpose of obtaining legal advice

(iv)        use in judicial proceedings

(v)          reading or recitation in public or for a broadcast

        1. 5.    Sculpture or Craft Works in a Public Place

Sculptures and other ‘works of artistic craftsmanship that are permanently installed in a public place may be photographed, sketched, painted, or engraved without infringing copyright.[156] Further, the copyright owner has no recourse if these reproductions are subsequently distributed and sold.

This exception does not extend to other sorts of artistic works, such as murals.[157] Nor does it extend to works in an exhibition since their installation is not permanent.

By way of example, this exception would allow a gallery to photograph a permanently installed sculpture and put that image on an invitation or annual report. No copyright permission would be required and no fee would be payable. Note however that this exception only permits two-dimensional copyright. It does not allow three-dimensional copies to be made.[158]

It is important to note that, except for this specific exception, there is no general exception for the taking of photographs by visitors to exhibitions. Although it is difficult in an age in which every mobile phone is also a camera, it is an identifiable risk for the organisation.

Most collecting organisations have a policy forbidding the taking of photographs in their gallery areas. There are four reasons for this prohibition:

(i)          There are potential conservation problems caused by flash bulbs or the hazards of tripods.

(ii)        The unauthorised photography of copyright works exposes the exhibiting institution to being sued in a copyright action.

(iii)       The photography may be in breach of the institution’s contractual obligations pursuant to a loan agreement.[159]

(iv)      Such photography interferes with the sale of postcards and other merchandising.

To minimise these risks the institution is well advised to have clear signage indicating the areas of the building in which photography is prohibited and should instruct the security staff (or those responsible for supervision) to quietly speak to visitors taking pictures and remind them of the prohibition. Some institutions allow photography in their exhibition areas on the basis that they consider the risk to be minimal or that they are unable to effectively administer the prohibition. It is true that the risk of being sued is small, but if anyone is going to be sued, it will be the institution.[160]

        1. 6.    Incidental Use for Film or Television

No infringement occurs if an artistic work is reproduced on film or television if that reproduction ‘is only incidental to the principal matters represented in the film or broadcast’.[161] As to what is `incidental’, that is a matter of fact and degree and will differ in each case. For example, there is usually no copyright problem in allowing a film crew to use museum premises as a set. It may of course be different if the film was The Picture of Dorian Gray and that portrait was held in the museum collection. Similarly, in most cases the filming of interviews in front of copyright works holds no problems, for usually this is either only an incidental use or would be covered by other exceptions.[162]

        1. 7.    Fair Dealing

There are a number of ‘fair dealing’ exceptions provided under the Act. These will be described in the sections that follow. These are narrow public interest exceptions: research and study; criticism or review; reporting the news; obtaining legal advice and use in or reporting of judicial proceedings. There is no general exception just because the use is ‘fair’. The ‘fair-go’ rule has not yet entered the copyright world.

Beware of clichés. Although one often hears glib and reassuring little phrases, such as, ‘you can use up to fourteen bars of music’ or ‘single pages are okay’ or ‘you only need to change a line or a colour here and there’, there are few rules of thumb that are accurate. Anyone who suggests there is some simple rule that lets you use grabs of copyright material for free is woefully misinformed or no friend of yours. Such people are ignorant, lazy and dangerous. Is that blunt enough?

(xxxii) General factors indicating fairness of the dealing

To determine whether or not the intended use is fair, the Act sets out a number of factors:[163]

(i)   the purpose and the character of the use;

(ii)   the nature of the work;

(iii)  the possibility of obtaining the work within a reasonable time at an ordinary commercial price;

(iv)  the effect of the dealing on the value of the work; and

(v)   where only a part of the work is copied, the amount and substantiality of the portion copied, taken in relation to the whole.

The last of these factors indicates that in order to be ‘fair’ the use must involve only a ‘reasonable portion’ of the work copied. So the question arises: What is a reasonable portion?

The Act assists by specifying some particular situations that will be considered ‘reasonable’[164] and then, where the specific definitions don’t apply, provides a number of general factors that are to be taken into account when forming a judgment as to reasonableness. If the specific exceptions do not apply or are exceeded, the proportion copied may still be ‘fair’. It will be for the person making the copies to prove that the portion copied was fair. Fairness will be a question of fact in the individual circumstances of the case.

        1. 8.    Fair Dealing for the Purpose of Research or Study

A fair dealing for the purpose of research or study of artistic, literary, dramatic and musical works does not constitute a breach of copyright.[165] This permits copying undertaken for the research purposes of a collecting institution; for example, where the research is undertaken in exhibition development, provenance investigation, ownership of title due diligence; but does not include administrative copying.

Provided the reproduction is for the purpose of research or study:

(i)            It is a fair dealing to reproduce ‘all or part of a literary, dramatic or musical work … contained in an article in a periodical publication’.[166]

(ii)          If the material is not in a periodical publication, it is a fair dealing to reproduce a reasonable portion. For this purpose, reasonable portion means:[167]

 

Work or adaptation

Amount that is reasonable portion

A literary, dramatic or musical work (except a computer program), that is contained in a published edition of at least 10 pages

(a) 10% of the number of pages in the edition; or(b) if the work is divided into chapters: a single chapter[168]
A published literary or dramatic work in electronic form [169] (a) The number of words copied must not exceed 10% of the number of words in the work copied; or(b) if the work is divided into chapters, the number of words copied may exceed 10% of the number of words in the work copied, provided that they are contained in a single chapter. In other words, one chapter is okay irrespective of the number of words.[170]

 

If the use complies with on of the above exceptions, it is deemed by the Act to be fair. If the use does not comply with the above deemed amounts and types of material, the proportion copied may still be ‘fair’ (and thus within the research and study exception) but it will be for the person making the copies to prove that the copying was fair. The factors to be taken into account are the five general factors indicating fairness set out earlier.

        1. 9.    Fair Dealing for the Purpose of Criticism or Review

‘A fair dealing with a literary, dramatic, musical or artistic work … does not constitute an infringement of the copyright in the work if it is for the purpose of criticism or review, whether of that work or of another work, and a sufficient acknowledgement of the work is made.’[171]

This is important for collecting institutions because they can make use of this exception in the writing of essays for exhibition catalogues. Care must be taken to ensure that the use is truly criticism or review of ‘a work’ (such as its ideas, techniques, content), not just a period or style. Also, it is essential that proper attribution be made.

   1. 10.    Fair Dealing for Purpose of Parody or Satire

‘A fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a literary, dramatic or musical work, does not constitute an infringement of the copyright in the work if it is for the purpose of parody or satire.’[172]

This is a quite recent change to the law. For many years the Act did not recognise parody or satire. Now, it has discovered its sense of humour.

        1. 11.    Fair Dealing for Purpose of Reporting News

‘A fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a literary, dramatic or musical work, does not constitute an infringement of the copyright in the work if:

(a)     it is for the purpose of, or is associated with, the reporting of news in a newspaper, magazine or similar periodical and a sufficient acknowledgement of the work is made; or

(b)     it is for the purpose of, or is associated with, the reporting of news by means of a communication or in a cinematograph film.’[173]

This can be important for collecting institutions for many communicate with their members through newsletters and these present articles and photographs, talking about recent and forthcoming exhibitions and acquisitions. Where these items are presented as news, provided that they are properly attributed, they will be covered by the exception.[174]

You cannot rely on this fair dealing exception for the purpose of including copyright material in advertising, the annual report, brochures or catalogues. Licences for such use are readily available from the relevant collecting societies. It is just a question of paying for the right.

     1. 12.    Use in Judicial Proceedings or Legal Advice

The copyright in an artistic work is not infringed by anything done for the purposes of a judicial proceeding, or of a report of such proceedings. Nor will a fair dealing with an artistic work for the purpose of giving professional advice by a lawyer or patent attorney, constitute an infringement.[175]

     1. 13.    Reading or Recitation in Public or for a Broadcast

The reading or recitation in public, or the inclusion in a sound broadcast or television broadcast of a reading or recitation, of an extract of reasonable length from a published literary or dramatic work does not constitute an infringement of the copyright in the work if a sufficient acknowledgement of the work is made.[176] This is important for those responsible for delivering or supervising public education programs in the institution.

D: Special mechanisms for collecting institutions

        1. 14.    Scope

Division 5 of Part III of the Copyright Act 1968 (Cth) contains special provisions relating to the copying of works by ‘libraries and archives’. Museums and galleries are included by means of a fabulously convoluted definitional path. Section 10 of the Act provides a definition of ‘archives’.

(10)(1)        archives means:

(a)     archival material in the custody of:

(i)      the National Archives of Australia; or

(ii)     the Archives Office of New South Wales established by the Archives Act 1960 of the State of New South Wales; or

(iii)    the Public Record Office established by the Public Records Act 1973 of the State of Victoria; or

(iv)    the Archives Office of Tasmania established by the Archives Act 1965 of the State of Tasmania; or

(aa)   archival material in the custody of a person (other than the National Archives of Australia) in accordance with an arrangement referred to in section 64 of the Archives Act 1983; or

(b)     a collection of documents or other material to which this paragraph applies by virtue of subsection (4).

The many hundreds of museums and galleries that do not fall within the above description must then refer to subsection (4):

(4)     Where:

(a)     a collection of documents or other material of historical significance or public interest that is in the custody of a body, whether incorporated or unincorporated, is being maintained by the body for the purpose of conserving and preserving those documents or other material; and

(b)     the body does not maintain and operate the collection for the purpose of deriving a profit;

paragraph (b) of the definition of archives in subsection (1) applies to that collection.[177]

Public museums and galleries and included within subsection 4(a) – being collections of ‘other material of historical significance or public interest’. Collections in the hands of individuals are excluded but those controlled by local historical societies, statutory corporations, as well as the major governmental collections, are included provided that the collection is not held for the purpose of deriving a profit.

1. 15.    Copying For Preservation or Replacement Purposes

In certain circumstances, the officer in charge of the collecting institution may order a copy of a copyright work to be made if the work is in danger of loss or deterioration. Although not specified in the Act, it is reasonable to assume that this does not provide a right to copy all collection objects merely on the basis that all material is in a natural state of decay. At the other end of the measure, it would be unreasonable to assume that material has to be in truly imminent danger before one can undertake the copying. Certainly if preservation or conservation work is being considered or undertaken, a copy of the material can be made.

 

(xxxiii)                  Manuscripts

If the work is in manuscript form a copy can be made for the purposes of preserving it ‘against loss or deterioration or for the purpose of research that is being, or is to be, carried out at the library or archives in which the work is held or at another library or other archives’.[178]

(xxxiv)                  Works in published form

If a work is held in the collection in a published form, if:

(a)     it has been damaged or has deteriorated; or

(b)     it has been lost or stolen,

it may be copied for the purpose of replacing the work.[179]

Published works that are being replaced because they have been damaged, have deteriorated or have been stolen, can only be replaced by copying, if the an officer of the institution[180] signs a declaration that the work cannot be purchased within a reasonable time at an ordinary commercial price.[181]

(xxxv)  Artistic works

(c)  Preservation

An artistic work may be copied for the purpose of preserving the work.[182] It may also be copied for ‘the purpose of research that is being, or is to be, carried out at the library or archives in which the work is held or at another library or other archives’.[183] These actions must be done by or on behalf of the officer in charge of the institution in which the work is held.

Where an original artistic work held in the collection:

(a) has been lost, or has deteriorated, since the preservation reproduction[184] of the work was made; or

(b) the work has become so unstable that it cannot be displayed without risk of significant deterioration,

it is not an infringement of copyright to make a preservation copy of the work or to communicate that copy by making it available on-line. However, the copy must only be available through computer terminals:

(a) installed within the premises of the library or archives; and

(b) that cannot be used by a person accessing the work to make an electronic copy or a hardcopy of the reproduction, or to communicate the reproduction.

Again, putting the copy on-line in this way can only be done by or on behalf of the officer in charge of the institution.

(d)  Replacement

Where the institution wishes to replace rather than preserve published material (such as posters or post cards) that has been destroyed, reference should be made to the previous section: ‘Works in published form’. The only original works that can by reproduced for the purpose of replacement are those that have been published. This would include material such as posters and postcards but would not give the institution the right to make a facsimile of a painting stolen from the collection (because the work held in the collection was an original and not in published form.)

(xxxvi)                  Sound recordings or films

(e)  For preservation purposes

Where a sound recording or a film (‘material’) is held in and forms part of the collection, it will not be a breach of copyright in either the material or any works included in the material, if the officer in charge of the institution makes a copy:

  • of original materials for the purpose of research that is being, or is to be, carried out at the library or archives in which the material is held or at another library or archives; or
  • of original materials for the purpose of preserving the material against loss or deterioration,

provided that the copying is done for preservation purposes.

(f)   For replacement purposes

Where a sound recording or a film (‘material’) is held in the collection in a published form but has deteriorated or been damaged or stolen, it will not be a breach of copyright in either the material or any works included in the material, if the officer in charge of the institution makes a copy for the purpose of replacing the material.[185]

The important proviso to this is that where you seek to replace a published copy (in contrast to original material), a replacement copy can only be made if an authorised officer, after reasonable investigation, makes a declaration that he or she is satisfied that a copy (not being a second-hand copy) of the material, cannot be obtained within a reasonable time at an ordinary commercial price.

Where that copy has been made for the purposes of preservation or replacement it can be made available on-line provided it is only accessible on computers within the premises of the organisation. However, where that copy has been made for the purposes of research – and that research involves another collecting institution – on-line availability may also be given to that other institution. Extraordinarily, the Act requires that in either case, the act of putting such material on-line requires the approval of the board of the institution.[186]

        1. 16.    Preservation Copies of Significant Collection Material in Key Cultural Institutions

Key Commonwealth, State and Territory collecting institutions have additional powers to those set out above.[187] These powers are in addition to the general preservation and replacement powers already discussed.

If an authorised officer of such an institution is satisfied that a work is of historical or cultural significance to Australia, copyright will not be infringed if the institution makes up to three copies of the work for the purpose of preserving it against loss or deterioration.

There are different controls on this right, depending on the type of material:

(a)          Manuscript: the copy may be made so long as the work is held in the collection and the reproduction is to preserve it from loss or deterioration.

(b)          Original artistic work: if the work is held in the collection, the institution may make ‘up to 3 comprehensive photographic reproductions of the work from the original artistic work for the purpose of preserving it against loss or deterioration, provided that the officer is satisfied that a photographic reproduction (not being a second-hand reproduction) of the work cannot be obtained within a reasonable time at an ordinary commercial price.’[188]

(c)          Published work: ‘If the work is held in published form, the copyright in the work is not infringed by an authorized officer of the library or archives making up to 3 reproductions of the work from the copy held in the collection, for the purpose of preserving the work against loss or deterioration, if the officer is satisfied that’ a new copy (not being a second-hand copy) of the work, or of the edition in which the work is held in the collection, cannot be obtained within a reasonable time at an ordinary commercial price’.[189]
In determining … whether a reproduction or copy (not being a second-hand reproduction or copy) of the work, or of a particular edition of the work, cannot be obtained within a reasonable time at an ordinary commercial price, the authorized officer must take into account whether an electronic copy of the work or edition can be obtained within a reasonable time at an ordinary commercial price.’[190]

(d)         Published edition: The institution may make ‘up to 3 … copies’ of a published edition ‘for the purpose of preserving the edition against loss or deterioration, if the officer is satisfied that a copy or facsimile copy of the edition (not being a second-hand copy) cannot be obtained within a reasonable time at an ordinary commercial price.’ The ‘officer must take into account whether an electronic copy of the edition can be obtained within a reasonable time at an ordinary commercial price.’[191] Where ‘a facsimile copy of the edition’ of the published edition is made under this power, ‘the making of that copy does not infringe copyright in any of the works in the published edition.’[192]

(e)         Recordings and Films:  Whether the material is published or unpublished, the institution may make ‘up to 3 copies … for the purpose of preserving’ the material ‘against loss or deterioration’.[193] However, where the recording or film has been published an authorised officer must make a declaration that he or she is satisfied that a copy of the material (not being a second-hand copy) cannot be obtained within a reasonable time at an ordinary commercial price. In doing so, the authorised officer must take into account the availability of electronic copies.[194] Where a copy of the recording or film is made under this power, the making of that copy does not infringe copyright in any of the works in that material.[195]

   1. 17.    Copying By THE PUBLIC

If the collecting institution has a photocopying machine or other copying equipment available for the public to use, it will not be responsible for any infringements of copyright committed by users merely for providing the copying equipment – so long as it displays near the machine, the prescribed warning sign.[196]

Similarly, while an institution that merely provides Internet facilities for its visitors is unlikely to be liable if their use constitutes a breach of copyright[197] it is prudent to display a copyright-use notice next to the machine.

       1. 18.    Copying For the Public

A member of the public may request the institution[198] to make and supply a copy of an article or some other published work so long as the following conditions are met:

(a)         The request must be in writing;[199]

(b)         The request must accompany the piece to be copied;

(c)          It must contain a declaration stating that the person

  • requires the copy for the purposes of research or study and will not use it for any other purpose;
  • has not previously been supplied with a copy of the same material by an authorised officer of the institution.

Where this request and declaration is made, the officer in charge may make and supply the requested copy.[200] There are only a few restrictions on this:

(a)          The charge made must not exceed the cost of making and supplying the copy.[201]

(b)          A copy may not be made of two or more articles (or parts of articles) for the same periodical publication unless the articles are requested for the same research or course of study.

(c)          If the request is for a copy of the whole (or more than a ‘reasonable portion’) of a literary, dramatic or literary work (other than an article in a periodical) the authorised officer must sign a declaration that:

(i)            ‘the work forms part of the library or archives collection; and’

(ii)          a reproduction (not being second-hand) cannot be purchased ‘within a reasonable time at an ordinary commercial price’.[202] The declaration should specify that in making this determination the officer has taken into account:

  • ‘the time by which the person requesting the reproduction requires it’;
  • ‘the time within which a reproduction (not being a second-hand reproduction) of the work at an ordinary commercial price could be delivered to the person’; and
  • ‘whether an electronic reproduction of the work can be obtained within a reasonable time at an ordinary commercial price’.[203]

(d)          The copy of an article or other published work should usually only be supplied to the person who made the request.[204]

(e)          The copy should then be marked by the institution with a ‘notation stating that the reproduction was made on behalf of that institution and specifying the date on which the reproduction was made’.[205] This is essential if copyright infringement proceedings are commenced and the institution wishes to gain the protection of the statutory exception.

Where the institution is authorised to supply a copy under this power, it is also authorised to electronically communicate it.[206] Note that where a copy is faxed or emailed to the person who requested it, the institution must use a particular form of wording to notify the person that the reproduction has been made under s 49 of the Act and that the article or work may be subject to copyright protection under the Act.[207] Once sent, the copy must be destroyed.[208]

(xxxvii)                 Electronic access

Where the institution acquires an article or other published work in electronic form as part of its collection, the officer in charge of the organisation may make it available on-line within the premises of the organisation – but only in such a way that users can neither communicate nor make an electronic copy of the work.[209]

1. 19.    Copying For Other Collecting Organisations

This Part provides the ability of certain collections to copy for other collections. It only applies to

(a)   a library all or part of whose collection is accessible to members of the public directly or through interlibrary loans; or

(b)   a library whose principal purpose is to provide library services for members of a Parliament; or

(c)   an archive all or part of whose collection is accessible to members of the public.[210]

Note the restrictions inherent in this exception: the main theme is that the collection must provide public access. For example, most collections associated with companies (such as corporate libraries or art collections) will not come within the exception because they do not permit public access.

A complying institution can request another such institution to supply it with copies of works (or parts of works) where it wants the copy either:

  • to include the copy in its collection or
  • to supply the copy to a person who has made a request for a copy for the purpose of research or study.[211]

Such requests must be made by, or with the authorisation of, the officer in charge of one institution to the officer in charge of the other.[212]

If the institution has previously asked for a copy of the same material for the purpose of including the work or article in the collection, upon making the request, the authorized officer must make a declaration setting out the purposes of the relevant reproduction was sought and stating that the copy so supplied ‘has been lost, destroyed or damaged’.[213]

An institution is not permitted to provide a reproduction of all or part of two or more articles that are contained in the same periodical publication and requested for the same purpose, unless the purpose is:

(i)         to assist a member of a Parliament perform his or her duties; or

(ii)       to supply a request under section 49 for the same research or course of study.

The requested copy must be made by an authorised officer and the charge must not exceed the cost of making and supplying the copy.[214] If the copy is being supplied electronically, as soon as practicable after the reproduction is supplied to the other institution, any reproduction made for the purpose of the supply and held by the supplying institution must be destroyed.[215]

If the institution complies with these requirements, the copying will not be a breach of the reproduction right and sending it to the requesting institution electronically will not be a breach of the communication right.[216]

So far, so good. However, if the copying sought is of the whole or an unreasonable portion of the work, you must comply with the following sections.

(g)  Copying of all, or more than a ‘reasonable portion’, of a work that is in hardcopy form

If the request is for a copy of the whole (or more than a ‘reasonable portion’) of a work in hardcopy form (other than an article in a periodical), the authorised officer must make a declaration:

(a)          setting out the particulars and purposes of the request; and

(b)          stating that the work cannot be purchased new within a reasonable time at an ordinary commercial price.[217]

This declaration must be made as soon as possible after making the request.[218]

(h)  Copying of all, or more than a ‘reasonable portion’, of an electronic work

Where the work is in electronic form, the procedure is similar. If the request is for a copy of the whole of a work in electronic form (including an article in a periodical), the authorised officer must make a declaration:

(a)          setting out the particulars and purposes of the request; and

(b)          stating that, after reasonable investigations, the work cannot be purchased in electronic form, either separately or together with a reasonable amount of other material, within a reasonable time at an ordinary commercial price.[219]

1. 20.    Unpublished Works

The Act provides for two situations in which the authorised officer can copy unpublished works without breaching copyright.

(xxxviii)               Theses and manuscripts

Where a collecting institution has an unpublished thesis or similar work in its collection, the work may be copied if the officer is satisfied that the person requesting it is doing so for the purpose of research or study.[220]

(xxxix)                  Other unpublished material

With other unpublished literary, dramatic, or musical works, or unpublished photographs and engravings, copies may be made (and electronically communicated) if:

  • the author has been dead more than fifty years;
  • the work is available for public inspection in the collection (subject to the governing regulations);
  • the copy is sought only for the purposes of research or study or with a view to publication.

This copying may be made by the person undertaking the research, study or the like, [221] or may be made by an authorised officer of the institution provided that he or she is satisfied that the copyright and communication is for the purposes of research or study or with a view to publication and that the person will not use it for any other purpose.[222]

G: Copying works for administrative purposes

A work held in the collection may be copied by an authorised officer for ‘administrative purposes’.[223] That phrase is defined as ‘purposes directly related to the care or control of the collection’.[224] This certainly covers all registration-related uses (for example accessioning and deaccessioning, loans, insurances ant the like) but, despite the breadth of the definition, is unlikely to include preservation as this is specifically dealt with elsewhere in the section.

Moreover, copyright in the work is not infringed where an authorised officer, with the approval of the body administering the library or archive, makes the copy available on-line to employees of the institution through the use of a computer terminal installed within the premises.[225] Note that the section requires the approval of ‘the body administering the library or archive’, which is presumably the governing board. It is certainly more than ‘an authorised officer’. Further, on-line accessibility is restricted to employees of the organisation – not its public.

H:   Reproducing and communicating works in care of National Archives of Australia

Where a work that kept in the collection of the National Archives of Australia[226] is open to public inspection, copyright is not infringed by the making or communication by, or on behalf of, the officer in charge of the archives:

(a)          of a single working copy of the work; or

(b)         of a single reference copy of the work for supply to the central office of the National Archives of Australia; or

(c)         on the written request for a reference copy of the work by an officer of the National Archives of Australia in a regional office of the Archives, where the officer in charge is satisfied that a reference copy of the work has not been previously supplied to that regional office – of a single reference copy of the work for supply to that regional office; or

(d)         where the officer in charge is satisfied that a reference copy of the work supplied to a regional office of the National Archives of Australia is lost, damaged or destroyed and an officer of the Archives in that regional office makes a written request for a replacement copy of the work – of a single replacement copy of the work for supply to that regional office; or

(e)         where the officer in charge is satisfied that a reference copy of the work supplied to the central office of the National Archives of Australia is lost, damaged or destroyed – of a single replacement copy of the work for supply to that central office.[227]

When interpreting this section it is essential to apply the particular definitions provided by the Act:[228]

reference copy, in relation to a work, means a reproduction of the work made from a working copy for supply to the central office, or to a regional office, of the National Archives of Australia for use by that office in providing access to the work to members of the public.

replacement copy, in relation to a work, means a reproduction of the work made from a working copy for the purpose of replacing a reference copy of the work that is lost, damaged or destroyed.

working copy, in relation to a work, means a reproduction of the work made for the purpose of enabling the National Archives of Australia to retain the copy and use it for making reference copies and replacement copies of the work.

I:      Use of copyright material for the services of the Crown

The copyright in a literary, dramatic, musical or artistic work or a published edition of such a work, or in a sound recording, cinematograph film, television broadcast or sound broadcast, is not infringed by the Commonwealth or a State, or by a person authorised[229] in writing by the Commonwealth or a State, doing any acts comprised in the copyright if the acts are done for the services of the Commonwealth or State.[230]

It is no easy matter to determine whether a collecting institution is properly described as the Commonwealth or State, or what constitutes doing something for the services of the Commonwealth or State. These are complex issues that must be determined on a case-by-case basis. It depends on the structure and constitution of the organisation and the purposes of the services.[231]

Where this Crown power is used, the Act requires that the government shall as soon as possible inform the owner of the copyright[232] and shall furnish the owner with such information as to the doing of the act as they reasonably require.[233] The terms of the copying will be as agreed between the government and the owner (or in default of agreement, as determined by the Copyright Tribunal).[234]

In practice this is not a power relied on by collecting institutions in the performance of its usual functions such as exhibitions, education and conservation.

J:      Section 200 AB

Statement of Principles on Section 200AB of the Copyright Act 1968 (Cth)

Preamble

1. Purpose of these Principles

The purpose of these Principles is to provide a guide for the cultural sector in relation to the use of section 200AB in accordance with the Australian Government’s intent that s. 200AB provide a ‘flexible exception to enable copyright material to be used for certain socially useful purposes while remaining consistent with Australia’s obligations under international copyright treaties.’[235]

This guide also facilitates institutions’ effective management of their IP in accordance with the Statement of IP Principles for Australian Government Agencies.[236]

These Principles are a guide only and have been developed to assist institutions to interpret section 200AB in accordance with their institutional risk management, relationship management and other policies. As there have not been any judicial decisions in relation to s. 200AB, this guide cannot and does not remove all risks associated with use of the provision. However, institutions will be able to use these Principles in conjunction with their risk management policies and procedures in order to manage and mitigate those risks.

While these Principles have been drafted for the cultural sector and in particular, the members of the Copyright In Cultural Institutions (CICI) Group (the Cultural Institutions); section 200AB applies more broadly to all ‘libraries and archives’ (as defined in the Copyright Act 1968 (Cth) (the Act)). It may therefore also be useful for other libraries, archives, galleries and museums falling within the statutory definition (see Part 3 below).

2. Background

2.1 The provision

The Copyright Amendment Act 2006 introduced an important new exception which allows Cultural Institutions to use copyright materials for free in certain circumstances for the purposes of maintaining or operating the library or archive or providing library or archival services.

Section 200AB is different to other exceptions in the Act because it does not specify exactly which copyright uses are permitted by the provision. Instead it sets out a number of steps to be followed in order to determine whether a particular use of copyright material will be allowed, and requires a case-by-case assessment of each particular use.

These Principles provide guidance in relation to how Cultural Institutions can decide whether or not a particular use of copyright material may be permitted by section 200AB, rather than prescribing the particular uses in which the exception will apply.

2.2 Importance for the Sector

The Cultural Institutions are government agencies charged with statutory functions and powers of preserving, managing and providing access to their collections.[237]

The Cultural Institutions face similar copyright issues which directly impact upon their ability to fulfil their statutory functions. Namely, large components of their collections are protected by copyright and, in many instances, the Cultural Institutions do not own copyright in those collection materials or have the necessary rights in relation to their collections, required to fulfil their statutory functions. For example, many collection items are ‘orphan works’ where it is impossible to trace or locate the copyright owner – whether due to uncertain provenance; the fact that the works are unpublished or published anonymously;  or that ownership of the copyright is uncertain due to multiple transfers in title to the work.

This has resulted in a situation where Cultural Institutions are required to comply with conflicting legal requirements:

  • their mandates in accordance with their enabling legislation which require them to preserve and provide public access to their collections for the benefit of the public; and
  • copyright laws, which often function to inhibit this.

Section 200AB has been introduced, in part, to address these conflicting requirements by giving Cultural Institutions more scope to fulfil their mandates and by broadening the ways in which copyright material can be used for purposes that benefit the wider public interest.[238]

PART 2 – Application of section 200AB

For a particular use of copyright material to fall under section 200AB, the use must comply with the following requirements:

  1. The use must not fall within another specific exception or statutory licence under the Act;
  2. You must not circumvent a TPM in order to make the use;
  3. You must be making the use on behalf of a library or archive for the purpose of maintaining the library or archive;
  4. The use must not be for commercial advantage or profit;
  5. The use must not ‘conflict with the normal exploitation of the work’;
  6. The use must not ‘unreasonably prejudice the legitimate interests of the owner of copyright’; and
  7. The use must be a ‘special case’.

This part sets out the nature of these requirements and provides flow charts to help you to apply these requirements to a particular use.

1. The use must not fall within another specific exception or statutory licence in the Act

Section 200AB will not apply if:

  • your use can be made under another exception; or
  • if another exception would apply to your use if you met the conditions or requirements of that exception[239].

Therefore, if the use falls within the scope of the preservation provisions or other library or archive provisions, section 200AB will not apply.

Additionally, you cannot rely on section 200AB to circumvent the conditions or requirements of other exceptions that are applicable to your use. For example, where your use would fall within the preservation provisions if you adhered to the notice requirements or the limitations in relation to copying, then section 200AB will not be available. However, if the type of preservation that you wish to make is not covered by these provisions, then 200AB will not be excluded.

Example 1: Scenario: The National Museum wishes to preserve a published collection item. The use would potentially fall within sections 51B (4)(a) and 51A (1)(b), however, the item is commercially available.The museum cannot copy the material under s 200AB in order to avoid the ‘commercial availability’ test, a ‘condition or requirement’ under both section 51B and 51A.

 

Section 183

If a use is exempted from infringement because it is undertaken under s. 183, then section 200AB will not apply.

Section 183 provides that Commonwealth and State bodies do not infringe copyright by making copyright uses ‘for the services of the Crown’. However, the copyright owner is entitled to payment for any uses made under s. 183.

Cultural Institutions which are not legally considered to be ‘the Crown’ will not have access to section 183 and will therefore be able to rely on section 200AB. It is a matter for each agency to determine whether they are legally considered to be the Crown for the purposes of the Act[240].

Additionally, where uses are not ‘for the services of the Crown’, section 183 will not be available. The words ‘for the services of the Commonwealth or a State’ are not defined. Not every act of using copyright material will necessarily be covered by section 183.[241] For example, the Australian Copyright Council is of the view that only those dealings with copyright material which are ‘governmental’ in nature and where there is some element of public interest involved are likely to be covered by section 183.[242] The High Court has suggested that section 183 provides a comprehensive licence scheme for government use of copyright material.[243]

To work out whether another exception applies, follow the following flow chart:

2. The use must not require you to circumvent any TPMs

You cannot make a use under section 200AB if that use requires you to circumvent an access control technological protection measure (TPM). This is in contrast with the ‘old’ library and archive provisions (sections 49, 50, 51A, 110A, 110B)[244] for which specific TPM exceptions allow you to circumvent TPMs in order for you to use those exceptions.

An access-control TPM is a device, product, technology or component (including a computer program) that is used by, with the permission of, or on behalf of the copyright owner, in connection with the exercise of the copyright; and in the normal course of its operation, controls access to copyright content.[245]

Examples of TPMs are password protection, time access controls and encryption measures applied to formats that only allow access to copyright content by authorised persons.  For example, copyright content on commercial DVDs and CDs is commonly protected by TPMs such as the Content Scrambling System (CSS).

Regional coding is not a TPM.

This means that, when you want to make a use of a work in digital form, you need to first consider whether or not that use will require you to circumvent an access TPM. If it does, s 200AB will be excluded.

3. The use must be made by or on behalf of a body administering a library or archive

‘Library’ is not defined for the purposes of s 200AB. ‘Archive’, however, is defined in the Copyright Act 1968 (Cth) and includes:

‘a collection of documents or other material which:

  • are of historical significance or public interest that
  • are being maintained by the body for the purpose of conserving and preserving those documents or other material; and
  • are not being maintained or operated for profit’.[246]

The Copyright Act 1968 (Cth) specifically states that museums and galleries are examples of bodies that could have collections covered by the definition of archive. For the purposes of these Principles, the Cultural Institutions fall within this definition.

4. The use must be made for the purpose of maintaining or operating the library or archive

Section 200AB is available for the purpose of maintaining or operating the library or archive.

The Explanatory Memorandum provides that this includes providing a service of a kind usually provided by a library or archive and would encompass the internal administration of the library or archive as well as providing services to users[247].

This appears to cover all reasonable activities undertaken by Cultural Institutions in accordance with their functions and powers and could therefore apply to uses in relation to materials other than collection items.

 

Example: Scenario: Institution Z seeks to make a use in relation to an item that it has borrowed from Collection D for the purposes of including it in an exhibition.Institution Z may be able to rely on s 200AB to make the use. The fact that the item is from an external collection does not of itself preclude reliance on s 200AB.

 

5. The use must not be for commercial advantage or profit

This step requires that the specific use you seek to make under s. 200AB, not be for a commercial advantage or profit. Whether the institution performs functions that are for profit or commercial advantage is not directly relevant and will not prohibit the application of s 200AB. Section 200AB will only be excluded where there is a direct nexus between the profit or commercial advantage and the use. In other words, the use itself must be for profit or commercial advantage.[248]

The charging of a fee does not necessarily exclude s 200AB. The charging of a fee will not be ‘for commercial advantage or profit’ where it does not exceed the costs of the use.[249]

 

Example 1: Scenario: Institution X wishes to make a use for purposes of a not-for-profit exhibition. The exhibition is expected to attract more patrons, potentially more donations, and to bolster the image of the institution.The use would not be precluded from the operation of s 200AB at this step because it is not ‘for commercial advantage or profit’.Example 2:  Scenario: Institution Y wishes to make a use for the purpose of including a copy of the work as a centrepiece in tender documentation in order to procure ‘best value’ services for the institution.The use is likely to be seen as being made for the purpose of gaining a commercial advantage and s 200AB is therefore likely to be excluded.Example 3: Scenario: Institution Z wishes to use of a work for the purpose displaying a copy of the work in its café.

The use is likely to be seen as a use which is ‘for commercial advantage or profit’ and section 200AB is likely to be excluded.

 

6. The use must not conflict with a normal exploitation of the work or subject-matter.

This step is directed towards whether either:

(a)    there is a market that the law should protect from the particular use; or

(b)    there is a potential market that ‘with a certain degree of likelihood, could acquire considerable economic or practical importance’.[250]

It requires a consideration of what constitutes ‘normal exploitation’ and at what point or in what circumstances, there is a definable market that the law should protect. It also requires ‘normative’ considerations or in other words, considerations of the objectives of copyright law.[251] The term ‘normal’ may require a consideration of a wide range of factors including:

  • market displacement;[252]
  • technological developments;[253] and
  • the social benefits of the use more generally.[254]

What is required is a weighing up of all of the circumstances surrounding the use, in order to determine whether the particular use is one that the copyright owner should control.[255]

In order to help Cultural Institutions to balance the competing interests of this test, a balancing of the following factors in each case will assist:

 

Factors weighing against Factors weighing in favour
There is a readily available licence for the use, which indicates the existence of a market for that use There is no readily available licence for the use
The use is a way that the copyright owners usually make money from their work The use is not a way that the copyright owners usually make money from their work
The use will deprive the copyright owner of significant revenue now or in the foreseeable future. The use will not deprive the copyright owner of significant revenue now or in the foreseeable future.
The use is not separate or distinct from the way that the copyright owner usually exploits the work. The use is separate or distinct from the way that the copyright owner usually exploits the work.
The use does not enhance the copyright owner’s work in any way. The use enhances the copyright owner’s work in some way (For example; by promoting the work or facilitating the copyright owner’s normal exploitation of the work).
There are no public interest reasons why the use should be allowed under s 200AB. There are public interest reasons why the use should be allowed under s 200AB.

 

7. The use must not unreasonably prejudice the legitimate interests of the owner of copyright. 

The Explanatory Memorandum states that this step requires ‘an assessment of the legitimate economic and non-economic interests of the copyright owner’.[256]

The WTO panel in the ‘Homestyle’ decision[257] noted that this requires a four-step analysis of:

  • what are the interests of the right holders;
  • which attributes make them ‘legitimate‘;
  • what the term ‘prejudice’ means; and
  • when does the prejudice become ‘unreasonable‘.

Again the WTO panel emphasised the importance of ‘normative’ definitions of these words, noting that exceptions will always prejudice the copyright holder. What this test requires is a consideration of the point at which this prejudice becomes unreasonable.[258]

In order to help Cultural Institutions to balance the competing interests of this test, a balancing of the below factors in each case will assist:

 

Factors weighing favour Factors weighing in against
The use is for a specific and limited purpose The use is not defined
The amount and nature of the material taken is appropriate in light of the nature of the copyrighted work and of the use. An excessive or unnecessary amount of material has been taken.
The use takes into account and respects any cultural sensitivities that may exist in relation to the nature of the material (For example: indigenous communal intellectual property rights or cultural restrictions). Cultural sensitivities and restrictions have not been considered where it is appropriate to do so.
In making the use, you have complied with the moral rights requirements of the Copyright Act 1968 (Cth). (For example: The use properly attributes the author where it is reasonable to do so.) The moral rights of the creator have not been considered.
The use doesn’t breach any contractual or legal restrictions on the material (For example, donor/depositor restrictions or obligations under relevant privacy laws). The use breaches contractual or other legal restrictions on the material.
The use does not give rise to an unreasonable risk of misuse or has been appropriately constrained so that any risks are minimised. The use exposes the material to an unreasonable risk of misuse (such as unauthorised use by others).

 

8. The use must be a special case

The explanatory memorandum to the Copyright Amendment Bill 2006 (Cth) states that ‘this condition is intended to ensure that the use is narrow in a quantitative as well as qualitative sense’.

While this step does not require that a use be unique or extraordinary, it does require that the use be for a defined purpose[259].

PART 3 – Examples

Example 1:  A Cultural Institution wishes to copy a collection item for the purposes of including that copy in an educational program and/or exhibition.

Step 1: The use must not fall within another specific exception or statutory licence under the Act

If there are no other exceptions applicable, s 200AB will not be excluded.

Institutions should consider, in relation to the particular use, whether the library and archive provisions may apply. This may be the case if the access copy is made for preservation purposes or administrative purposes and meets the other requirements of those provisions. Institutions should also consider (if their institution is a ‘Crown body’) whether their use is ‘for the services of the Crown’ under section 183.

Step 2: You must not circumvent a TPM in order to make the use

Where the use is in relation to a digital work, you should consider whether making that use will require you to circumvent a technological protection measure (TPM) that protects access to the copyright material by limiting it to authorised persons.

Where no such measure exists, s 200AB will not be excluded.

Step 3: You must be making the use on behalf of a library or archive for the purpose of maintaining the library or archive

The making of access copies for exhibitions and educational programs would clearly fall within the reasonable services or activities of the library.

Therefore, s 200AB will not be excluded.

Step 4: The use must not be for commercial advantage or profit

If the use is made for the purpose of an exhibition which is commercial in nature, s 200AB will be excluded.

An entry fee which is for cost-recovery purposes only, or the attraction of unexpected donations, will not exclude the operation of s 200AB.

Step 5: The use must not ‘conflict with the normal exploitation of the work’

An assessment of the following factors will assist Cultural Institutions to determine whether s 200AB may be available or whether s 200AB will be excluded:

  • Whether there is a readily available licence for making the use (which indicates the existence of a market for that use)[260]
  • The use (making an access copy for the purposes of a Cultural Institution exhibition) is unlikely to be a way that the copyright owners usually make money from their work;
  • The use (being for the purposes of a limited or one-off exhibition) is unlikely to deprive the copyright owner of significant revenue now or in the foreseeable future, this weighs in favour of allowing the use;
  • The use is likely to be separate and distinct from the way that the copyright owner usually exploits the work;
  • The use is likely to enhance the copyright owner’s use by promoting the copyright owner’s work.

In the absence of other circumstances (which may arise on a case-by-case basis) which would weigh against the use, uses for the purposes of non-commercial, not-for-profit public exhibitions are unlikely to be excluded from s. 200AB by this step. However, so far as certain uses are covered by licences (such as an APRA collective licence), s. 200AB will be excluded.

Step 6: The use must not ‘unreasonably prejudice the legitimate interests of the owner of copyright’

An assessment of the following factors will assist Cultural Institutions to determine whether s 200AB may be available or whether s 200AB will be excluded:

  • The use is for a specific and limited purpose (an exhibition);
  • The amount and nature of the material taken is appropriate in light of the nature of the copyrighted work and of the use (the amount reflects what will be shown at the exhibition);
  • The use takes into account and respects any cultural sensitivities that may exist in relation to the nature of the material;
  • In making the use, you have complied with the moral rights requirements of the Copyright Act 1968;
  • The Institution has taken any reasonable steps to ensure the item is not exposed to unreasonable risk of misuse.

In the absence of other circumstances (which may arise on a case-by-case basis) which would weigh against the use, uses for the purposes of public exhibitions are unlikely to be excluded from s 200AB by this step as long as the Institution has taken steps to ensure that the use is confined to the purpose and that the moral rights of the author and any cultural sensitivities related to the work have been taken into account.

Step 7: The use must be a ‘special case’

If the use has not been excluded by the above steps, it is unlikely to be excluded by this step.

This step requires the use to be for a defined purpose.

Conclusion: While each use should be assessed on a case-by-case basis, s 200AB is likely to be available for these kinds of uses.

Example 2:  An institution wishes to reproduce a collection item in a low resolution format (as a thumbnail) and display it on the institution’s collection database.

 

Step 1: The use must not fall within another specific exception or statutory licence under the Act

If there are no other exceptions applicable, s. 200AB will not be excluded.

If the use is made for preservation purposes or administrative purposes, the library and archive provisions may apply.

Institutions should also consider (if their institution is a ‘Crown body’) whether their use is ‘for the services of the Crown’ under section 183.

Step 2: You must not circumvent a TPM in order to make the use

Where the use is in relation to a digital work, you should consider whether making that use will require you to circumvent a technological protection measure (TPM) that protects access to the copyright material by limiting it to authorised persons.

Where no such measure exists, s 200AB will not be excluded.

Step 3: You must be making the use on behalf of a library or archive for the purpose of maintaining the library or archive

The making of copies for inclusion on an institution’s collection database would fall within the reasonable services or activities of the library or archive.

Therefore, s 200AB will not be excluded.

Step 4: The use must not be for commercial advantage or profit

Uses for purposes of inclusion on an institution’s collection database are unlikely to be for commercial advantage or profit.

Step 5: The use must not ‘conflict with the normal exploitation of the work’

A weighing-up and assessment of the following factors on a case-by-case basis will assist Cultural Institutions to determine whether s 200AB may be available or whether s 200AB will be excluded:

  • Whether there is a readily available licence for making the use (which indicates the existence of a market for that use);
  • The use (making a low resolution thumbnail copy for the purposes of a Collection database) is unlikely to be a way that the copyright owner usually makes money from their work;
  • The use is unlikely to deprive the copyright owner of significant revenue now or in the foreseeable future;
  • The use is likely to be separate and distinct from the way that the copyright owner usually exploits the work;
  • The use is likely to enhance the copyright owner’s use by promoting the copyright owner’s work.

In the absence of other circumstances (which may arise on a case-by-case basis) which would weigh against the use, uses of low resolution thumbnail images of items for the purposes of inclusion in a collection database are unlikely to be excluded from s 200AB by this step.

Step 6: The use must not ‘unreasonably prejudice the legitimate interests of the owner of copyright’

An assessment of the following factors will assist Cultural Institutions to determine whether s 200AB may be available or whether s 200AB will be excluded:

  • The use is for a specific and limited purpose (use on a collection database);
  • The amount and nature of the material taken is appropriate in light of the nature of the copyrighted work and of the use (the amount reflects what will be required for the database.);
  • The use takes into account and respects any cultural sensitivities that may exist in relation to the nature of the material;
  • In making the use, you have complied with the moral rights requirements of the Copyright Act 1968 (Cth);
  • The Institution has taken any reasonable steps to ensure the item is not exposed to unreasonable risk of misuse. (For example,the fact that the copy will be in a low resolution format is a step which mitigates any risk of misuse.)

In the absence of other circumstances (which may arise on a case-by-case basis) which would weigh against the use, uses for the purposes of inclusion of low resolution images on collection databases are unlikely to be excluded from s 200AB by this step as long as the Institution has taken steps to ensure that the use is confined to the purpose and that the moral rights of the author and any cultural sensitivities related to the work have been taken into account.

Step 7: The use must be a ‘special case’

If the use has not been excluded by the above steps, it is unlikely to be excluded by this step.

This step requires the use to be for a defined purpose.

Conclusion: While each use should be assessed on a case-by-case basis, s 200AB is likely to be available for these kinds of uses.


Example 3A:  An institution wishes to make an orphaned work available on its website.

 

Step 1: The use must not fall within another specific exception or statutory licence under the Act

If there are no other exception applicable, s 200AB will not be excluded.

If the use is made for preservation purposes or administrative purposes the library and archive provisions may apply. However, this will be unlikely if the use is to promote access to the public at large via the institutional website.

Institutions should also consider (if their institution is a ‘Crown body’) whether their use is ‘for the services of the Crown’ under section 183.

Step 2: You must not circumvent a TPM in order to make the use

Where the use is in relation to a digital work, you should consider whether making that use will require you to circumvent a technological protection measure (TPM) that protects access to the copyright material by limiting it to authorised persons.

Where no such measure exists, s 200AB will not be excluded.

Step 3: You must be making the use on behalf of a library or archive for the purpose of maintaining the library or archive

The making of orphan works within the institution’s collection would fall within the reasonable services or activities of the library or archive.

Therefore, s 200AB will not be excluded.

Step 4: The use must not be for commercial advantage or profit

Uses for the purposes of making orphan works available to the public are unlikely to be for commercial advantage or profit.

Step 5: The use must not ‘conflict with the normal exploitation of the work’

A weighing-up and assessment of the following factors on a case-by-case basis will assist Cultural Institutions to determine whether s 200AB may be available or whether s 200AB will be excluded:

  • Whether there is a readily available licence for making the use (which indicates the existence of a market for that use);
  • The use (making the orphan work available to the public on the Internet) would ordinarily be a way that the copyright owner would make money from their work. However, in the case of an orphaned or abandoned work, this will not be the case (so long as the work remains orphaned or abandoned). However, institutions should note that this may change if the owner subsequently comes forward and indicate that they wish to exploit the work;
  • The use is unlikely to deprive the copyright owner of significant revenue now. The use may deprive the copyright owner of revenue in the future if the copyright owner comes forward;
  • The use is likely to be separate and distinct from the way that the copyright owner usually exploits the work;
  • The use is likely to enhance the copyright owner’s use by promoting the copyright owner’s work.

In the absence of other circumstances (which may arise on a case-by-case basis) which would weigh against the use, uses of orphaned works are unlikely to be excluded from s. 200AB by this step.

Step 6: The use must not ‘unreasonably prejudice the legitimate interests of the owner of copyright’

An assessment of the following factors will assist Cultural Institutions to determine whether s. 200AB may be available or whether s 200AB will be excluded:

  • The use is for a specific purpose. Whether the use can be said to be for a ‘limited purpose’ may depend on whether appropriate measures have been taken to ensure that the work is not exposed to an unreasonable risk of misuse (see below);
  • The amount and nature of the material taken is appropriate in light of the nature of the copyrighted work and of the use (the amount reflects what will be required for the purpose of the use);
  • The use takes into account and respects any cultural sensitivities that may exist in relation to the nature of the material (so far as is possible in the context of the work being orphaned);
  • In making the use, you have complied with the moral rights requirements of the Copyright Act 1968 (so far as you are able to do in the context of the work being orphaned);
  • The Institution has taken reasonable steps to ensure the item is not exposed to unreasonable risk of misuse? This will be a key factor under this step where institutions are seeking to make works available on the Internet. While the risk in relation to ‘unreasonably prejudicing the legitimate interests of the copyright owner’ are less in relation to orphaned work than other works, Institutions should still consider any steps appropriate to minimise risk of misuse. The nature of those steps will depend on the nature of the work that is being made available. Examples of ways that may minimise misuse may include; making the item available in a low resolution format; making only a part of the item available; making the item available with legal or technological restrictions; or making the item available with an accompanying notice to potential copyright owners in relation to the institution’s take-down procedures.

In the absence of other circumstances (which may arise on a case-by-case basis) which would weigh against the use, uses for the purposes of making orphaned works available to the public are unlikely to be excluded from s 200AB by this step.

Step 7: The use must be a ‘special case’

If the use has not been excluded by the above steps, it is unlikely to be excluded by this step.

This step requires the use to be for a defined purpose.

Conclusion:  While each use should be assessed on a case-by-case basis, s 200AB is likely to be available for these kinds of uses.[261]

 

Example 3B:  An institution wishes to make a work (other than an orphaned work) available on its website (for example, as part of an on-line exhibition).

 

Step 1: The use must not fall within another specific exception or statutory licence under the Act

Analysis same as 3A, above.

Step 2: You must not circumvent a TPM in order to make the use

Analysis same as 3A, above.

Step 3: You must be making the use on behalf of a library or archive for the purpose of maintaining the library or archive

Making access copies for the purposes of an exhibition would fall within the reasonable services or activities of the library or archive.

Therefore, s 200AB will not be excluded.

Step 4: The use must not be for commercial advantage or profit;

Uses for the purposes of making orphan works available to the public are unlikely to be for commercial advantage or profit.

Step 5: The use must not ‘conflict with the normal exploitation of the work’

A weighing-up and assessment of the following factors on a case-by-case basis will assist Cultural Institutions to determine whether s 200AB may be available or whether s 200AB will be excluded:

  • Whether there is a readily available licence for making the use (which indicates the existence of a market for that use);
  • Depending on the nature of the work, the use (making the work available to the public on the Internet) may be a way that the copyright owners make money from their work. For example, if the work is a letter from a digger held by the Australian War Museum (AWM), the use is unlikely to be a way the copyright owner makes money from their work. On the other hand, if the work is an Australian feature film, the use is likely to be a way the copyright owner usually makes money from their work.
  • The use may deprive the copyright owner of significant revenue if there is a readily available licence for the use or if the copyright owner ordinarily licences such uses;
  • The use is likely to be separate and distinct from the way that the copyright owner usually exploits the work;
  • The use is likely to enhance the copyright owner’s use by promoting the copyright owner’s work?

In the absence of other circumstances (which may arise on a case-by-case basis) which would weigh in favour of the use, uses of works are likely to be excluded from s 200AB by this step if a licence from the copyright owner is readily available. In some circumstances this may be outweighed by the nature and circumstances of the use. However, Institutions should bear in mind that use of s 200AB in these circumstances would involve a higher degree of risk than use of s 200AB in the circumstances outlined in Example 3A above. The exact level of that risk will depend on the nature of the work.

Step 6: The use must not ‘unreasonably prejudice the legitimate interests of the owner of copyright’

An assessment of the following factors will assist Cultural Institutions to determine whether s. 200AB may be available or whether s. 200AB will be excluded:

  • The use is for a specific purpose. Whether the use can be said to be for a ‘limited purpose’ may depend on whether appropriate measures have been taken to ensure that the work is not exposed to an unreasonable risk of misuse (see below);
  • The amount and nature of the material taken is appropriate in light of the nature of the copyrighted work and of the use (the amount reflects what will be required for the purpose of the use);
  • The use takes into account and respects any cultural sensitivities that may exist in relation to the nature of the material;
  • In making the use, you have complied with the moral rights requirements of the Copyright Act 1968;
  • The Institution has taken reasonable steps to ensure the item is not exposed to unreasonable risk of misuse. This will be a key factor under this step where institution’s are seeking to make works available on the Internet. The nature of those steps will depend on the nature of the work that is being made available. Examples of ways that may minimise misuse may include; making the item available in a low-resolution format; making only a part of the item available; making the item available with legal or technological restrictions; or making the item available with an accompanying notice to potential copyright owners in relation to the institution’s take-down procedures.

Whether such a use would be available under s. 200AB would need to be assessed on a case-by-case basis and would depend heavily on the nature of the work, whether a licence is available for the use and whether appropriate steps have been taken to minimise risk of misuse of the work.

Step 7: The use must be a ‘special case’

If the use has not been excluded by the above steps, it is unlikely to be excluded by this step.

This step requires the use to be for a defined purpose.

Conclusion: S.200AB may be available for these kinds of uses, depending on the factors outlined above.

Example 4:  An archive wishes to preserve a collection of posters from the film and sound industries selected from across the collection. In addition to making high resolution digital preservation copies, the archive also seeks to make low resolution digital browsing copies for access purposes and to reduce the risk of corruption of the high resolution digital preservation.

 

Step 1: The use must not fall within another specific exception or statutory licence under the Act

If there are no other exceptions applicable, s. 200AB will not be excluded.

In relation to the high resolution digital preservation copies, these will be able to be made under the preservation provisions as long as the relevant works are not able to be obtained ‘within a reasonable time at an ordinary commercial price’ (s 51B). The copies may also be able to be made under section 51A(2) for administrative purposes. On this basis, there would be other provisions which would allow the preservation of the collection and s.200AB would be excluded.

However, in relation to the low resolution digital browsing copies for access purposes, s.200AB will not be excluded.

Institutions should also consider (if their institution is a ‘Crown body’) whether their use is ‘for the services of the Crown’ under section 183.

Step 2: You must not circumvent a TPM in order to make the use

Technological protection measures (TPMs) don’t apply to hard copy posters so s. 200AB will not be excluded.

Step 3: You must be making the use on behalf of a library or archive for the purpose of maintaining the library or archive

The uses (making access copies) would fall within the reasonable services or activities of the library or archive. Therefore, s 200AB will not be excluded.

Step 4: The use must not be for commercial advantage or profit;

Uses for the purposes of making access copies are unlikely to be for commercial advantage or profit.

Step 5: The use must not ‘conflict with the normal exploitation of the work’

A weighing-up and assessment of the following factors in relation to each use will assist Cultural Institutions to determine whether s.200AB may be available or whether s.200AB will be excluded:

  • Whether there is a readily available licence for making each use (which indicates the existence of a market for that use);
  • In relation to each use, (making a work available to the public on the internet) whether that use would ordinarily be a way that the copyright owner would make money from their work. This may depend on the nature of the work in each instance;
  • The use may deprive the copyright owner of significant revenue if there is a readily available licence for the use or if the copyright owner ordinarily licences such uses;
  • The use is likely to be separate and distinct from the way that the copyright owner usually exploits the work;
  • The use is likely to enhance the copyright owner’s use by promoting the copyright owner’s work;

Whether s.200AB will be excluded or not under this step will depend upon a balancing of the above factors in relation to each use. If a licence is readily available from the copyright owner, a use may be excluded from s. 200AB by this step. On the other hand, if there is no readily available licence, it is unlikely that s.200AB will be excluded.  The risk of using s.200AB in relation to these uses may differ depending on the nature of the particular works in question.

Step 6: The use must not ‘unreasonably prejudice the legitimate interests of the owner of copyright’

An assessment of the following factors will assist Cultural Institutions to determine whether s.200AB may be available in relation to each use or whether s.200AB will be excluded:

  • Each use is for a specific purpose.  Whether a use can be said to be for a ‘limited purpose’ may depend on whether appropriate measures have been taken to ensure that the work in question is not exposed to an unreasonable risk of misuse (see below);
  • The amount and nature of the material taken in relation to each use is appropriate in light of the nature of the copyright work and of the use (the amount reflects what will be required for the purpose of the use);
  • Each use takes into account and respects any cultural sensitivities that may exist in relation to the nature of the material;
  • In making each use, you have complied with the moral rights requirements of the Copyright Act 1968;
  • The Institution has taken reasonable steps to ensure each item is not exposed to unreasonable risk of misuse.  This will be a key factor under this step where institution’s are seeking to make works available on the Internet. The nature of those steps will depend on the nature of each work that is being made available. Examples of ways that may minimise misuse may include; making items available in a low resolution format; making only a part of an item available; making an item available with legal or technological restrictions; or making an item (or the collection) available with an accompanying notice to potential copyright owners in relation to the institution’s take-down procedures.

Whether such uses would be available under s. 200AB would need to be assessed on a case-by-case basis and would depend on the nature of the work, whether a licence is available for the use and whether appropriate steps have been taken to minimise risk of misuse of the work.

Step 7: The use must be a ‘special case’

If the uses in relation to the collection have not been excluded by the above steps, they are unlikely to be excluded by this step.

This step requires the use to be for a defined purpose.

Conclusion: While each use should be assessed on a case-by-case basis, s 200AB is likely to be available for these kinds of uses. However, institutions should note that, where they are making a number of uses under s. 200AB (for example, because they are making access copies of several works, or because they would like to make several copyright uses in relation to those works), they will need to consider the application of s 200AB on a case-by-case basis, in accordance with their Institution’s risk mitigation strategy.

K:    Inspection of records and declarations retained by libraries, archives or institutions

Some of the copying powers given to collecting institutions in the Act, require an authorised officer or some other person to make a declaration as to belief or purpose or some other matter required by the legislation. Clearly there is a public interest to ensure that these exceptional incursions into private property rights are not treated lightly. For this reason, the copyright owner may demand to inspect all of the declarations that relate to the making of copies in reliance on section 49, 50, 51A or 110B[262] and in some cases may even have the right to inspect the collection.[263]

These declarations are important matters and there are a number of potential offences attached to misbehaviour in this regard. For example, it is an offence:

  • if the declaration is not kept in the records of the institution;
  • if the officer in charge of the institution does not take all reasonable precautions, and exercise due diligence, to ensure that the person inspecting the records is provided with all reasonable facilities and assistance for the effective exercise of the inspection powers;[264]
  • if the declarations are not kept in chronological order;[265]
  • if the declarations are destroyed or disposed of before the date prescribed by the Regulations;[266]
  • if the copy required to be made contains a notation that is false or misleading in a material particular.[267]

L:      Some concluding comments

The way that the Act deals with the needs of collecting institutions cannot make any lawyer proud. There is no apparent overarching scheme to the rights given to the institutions and little apparent effort to organise or draft the legislation in a manner that promotes access and understanding. The language of the drafting is obtuse; the structure of the provisions and their interrelationship is medieval. The mechanisms provided do not take sufficient account of the real copying needs within collecting institutions,[268] mechanisms that would respect the balancing of public interests that attaches to any exception to the exclusive rights of copyright.

It is likely that only the largest and best-resourced collecting institutions can comply with any degree of reliability on the ‘libraries and archives’ exceptions. While it is readily acknowledged that any incursion into the exclusive rights of copyright owners should be carefully considered, the administrative requirements are complex, slow and resource heavy. (For ten points, can anyone answer the following question: Which procedures require authorisation by an ‘authorized officer’, the ‘officer in charge’ and ‘the body administering library or archives’? As a supplementary question, ‘Can the officer in charge or the body administering the library or archives’ delegate that responsibility to an authorised officer?)

The new s 200AB, the great hope of the collections community, is no exception. The paper developed by Minters and reproduced above, demonstrates that even fine legal minds cannot simplify the supposed panacea provided by that provision. Its operation was apparently designed as part of The Glass Bead Game; its wording is compliant with all international treaty obligations but unhelpful to those who must apply it. Nevertheless, it is what we’ve got. It may be a dog with only three legs – but it is OUR dog. So, until it is mercifully put to sleep, we must learn to love it.

 26.10 DEALING WITH Copyright

Introduction

Copyright is personal property. It can be sold, licensed, or even left in one’s will. Almost all of the statutory provisions as to the ownership of copyright are all subject to variation by contract. The most common methods are discussed in this section.

It is basic to the whole understanding of dealing with copyright that copyright is distinct from the material in which it subsists. The material and the copyright in it are distinct assets. Many amateur collectors believe that when they acquire a thing, they also acquire the copyright in it. The trap in this for collecting institutions is that when they acquire material they are often told wrong information about the copyright status of the material being acquired. Honestly mistaken vendors and donors purport to pass copyright to the institution when they are not owners of those rights. The consequent dangers for the institution are obvious.

There are two basic kinds of copyright transaction: licences and assignments.

Assignments

When you assign a right, the whole legal ownership and control of that right passes to the other party. It is like selling that right.

To be legally effective, an assignment must be in writing. You cannot assign copyright unless it is in writing. That writing must be signed by the copyright owner or the copyright owner’s representative. Nothing less will do.[269]

It is not necessary to assign the whole copyright. Think of an onion. You can sell the whole onion or you can peel off various layers and treat them separately. For example, assignments are frequently limited to:

  • one or more of the exclusive rights of copyright or part of them;
  • a specified territory; or
  • a specific length of time.

Until only couple of decades ago, public galleries acquiring work tended to adopt a rather heavy hand and often used their considerable power to acquire assignments of copyright when acquiring the work itself. For many years it was common gallery practice for all acquisition contracts with artists to contain a clause by which the artist was required to assign the copyright at the same time as the work itself was purchased.

Three changes have meant that collecting organisations are quite capable of fulfilling their needs by means of licences:

  • Copyright owners have become more aware of their rights and in particular the value of their copyrights. In this the age of merchandising, the subsidiary rights have become often more valuable than the traditional property rights.
  • The skill and professionalism of collection managers has grown.
  • Computer technology allows the creation of readily accessible systems that readily provide the copyright status of any particular material in the collection.

Licensing the rights

When you give a licence, you give the other person permission to use the right in a particular way but always retain ownership and potentially, a certain control over the right.

Licensing is huge business. Almost every sector of commerce is reliant on it. Art and design is a fundamental component of all advertising, merchandising, marketing, corporate image making and communication media. Now that the commercial value of these rights is an everyday part of business, both licensors and licensees have become more commercially sophisticated in their copyright dealings. In particular, owners are recognising that licences should be limited to those rights that are really necessary for the licensee’s commercial or other purposes.

There are several advantages to licensing:

  • It has nothing to do with the ownership of the work itself. You can license its reproduction and publication long without having to own (or sell) the original.
  • It provides an on-going source of income for the copyright owner – irrespective of ownership of the material to which it relates.
  • You remain the owner of the copyright. When you grant a licence you are permitting someone else to use the right but you retain ownership and thus control over that right. Because of this tighter control, licences are a much safer way to deal with your copyright.
  • You can sculpt the ambit of the licence to suit your needs and those of the licensee. As you will see from the checklists that follow, a licence allows you to articulate the rights that you grant in a very precise way.

The layers of rights that can be granted by licence are extraordinarily divisible. Think onion again. Accordingly, if you are the rights owner good business demands that you ensure that any licence you grant is limited to the real needs of the licensee. As for licensees, good practice requires that they seek only the rights that are needed for their purpose: it is generally easy to obtain a licence when the uses are spelled out and the rights owner can see that the intended use is reasonable.

Formalities

No particular form is required for a non-exclusive licence. Non-exclusive licences can be verbal, in writing, or partly verbal and partly in writing. In contrast, exclusive licences must be in writing, signed by the ‘licensor’ (the one granting the licence) or their agent.

If a licence that purports to be exclusive does not fulfil the above formal requirements, it does not mean that no licence has been granted: it will simply be treated as a non-excusive licence.

That said, when dealing with copyright, either as an owner or a licensee, it is not sensible or prudent practice to deal with such valuable property except by formal documentation.

Licensing Checklist

The following checklist will be of assistance in determining whether the licence being sought is appropriate for the circumstances.

 

Parties involved Who is the contract between? Who is the grantor and who is the grantee? Although it may seem obvious, in an era of complex legal structures, it is sometimes not as easy as it seems.[270]
Works involved What work(s) are included in the transaction? Include an attachment or schedule showing what works are part of the deal.
Rights What rights are being granted? What parts of the ‘bundle of rights’ are included in the agreement? Is it to include all of the rights of copyright or only some of them?
Duration
For how long are the rights to be granted? You can license copyright for a set number of years or by other criteria such as a set number of copies.

 

Uses
What uses does the party using the rights need? What uses will the owner permit?

 

Exclusivity The grant of rights may be exclusive or non-exclusive. Even where they are ‘exclusive’, the extent of that exclusivity can be limited. The owner can grant exclusive rights to different people for different uses in the same territory.
Territory
You can license someone the right to use your rights in a particular territory, but retain the rights in other territories. If you are licensing rights to make merchandise for an exhibition or for inclusion of a work in an exhibition catalogue, you may only need them for your State or Territory. However if the exhibition is going to tour inter-state, the territory of the agreement will need to take that into account.

 

Creative control What changes to your work are you going to permit? What degree of control will the owner retain? Who may approve changes? Who will own the changes?
Quality control These provisions are particularly important. A prudent owner will include extensive quality approval and maintenance procedures to ensure that the value of the rights is not diminished by inferior quality reproductions.
Payment How will the copyright owner be paid: With an up-front fee or by royalties or a mixture of both? This will be largely determined by the type of deal and the relative bargaining power of the parties. Also, will the validity of the licence be dependent on actual payment.
Obligations and guarantees What obligations and guarantees are the parties offering each other?
Accounting and inspection How can the copyright owner check that they are being paid the right amount? Where royalties are involved, agreed audit powers and procedures are essential.
Sub-licences Can the grantee sub-license the rights to anyone else? How is the owner protected in respect of sub-licensee behaviour that might damage the value of the rights?
Enforcement The owner will require provisions to protect their rights from infringement. Some exclusive licensees will also require such rights to ensure that they are getting the benefit of their promised exclusivity. Who will pay the legal costs? Who may ‘settle’ a dispute if it goes to court? How will damages and costs be split?
Termination What are there circumstances in which the contact can be terminated? If these circumstances arise, will termination be automatic or will there be a notice procedure to provide the opportunity to remedy the default.
Disputes
How will you settle disputes? Is there a mechanism in the contract that makes the parties undergo mediation or arbitration of a dispute that cannot be resolved by negotiation? This is a standard provision in modern licence agreements.

 

 

Remuneration

Copyright is a valuable thing. It should be paid for. There are three basic ways to structure the remuneration: an outright fee; a royalty; a fee and a royalty.

1. 21.    Fee

The outright fee is the easiest but has its drawbacks. The biggest disadvantage of the straight fee is that no one can really know at the outset of a transaction how much the rights are worth. For example, the value of the right to reproduce photographs in a book will vary wildly depending on the likely sales of the book. On the other hand, when dealing with licensees who are perhaps unknown quantities or whose intended use will be hard to audit, it may be better to adopt an outright fee rather than take the risk of getting a percentage of nothing.

1. 22.    Royalty

A royalty is a common method of profit participation. If one makes money, both make money. However it works only so long as the person doing the arithmetic can be trusted and the arithmetic can be checked. Thus, t-shirt distributors are notorious for their rubbery sums whereas most large publishing companies have accountants who can add up and have methods of accounting that are easily subjected to audit.

It need hardly be said that when dealing with royalties one should always be suspicious of royalties based on the net income. In such deals the definition of ‘net’ is always highly negotiated. It is much easier to calculate royalties on the gross income. The point is commercial rather than legal but many people have gone broke on fifty per cent of net when they would have made a fortune out of twelve per cent of gross.

1. 23.    Advance

Often a licensor will demand an advance. An advance differs from a fee in that it is a pre-payment of royalties. The amount of the advance is paid up-front and then recouped from the royalties that would otherwise be payable. An advance may be either ‘repayable’ or ‘recoupable but not repayable’. With the former, if the advance is greater than the royalty income payable during the term of the deal, the difference has to be repaid. With the latter, the advance is only repaid through royalty income. Most advances are not repayable but are fully recoupable.

1. 24.    Fee Plus Royalty

Increasingly common is the payment of a fee plus a royalty. In this way the copyright owner gets an upfront fee for the usage and a royalty on the proceeds. Here, the questions are two-fold:

  • Is the fee repayable in any circumstances?
  • Is the fee recoupable? (In other words, is it really merely an advance against future royalties?) There is nothing wrong with this, but the answer is important for the purpose of working out whether or not the deal is a fair one.

On-line licensing and creative commons

As the Internet developed into a major communication and business medium it became clear that new contractual approaches needed to be explored. There was no longer any real opportunity to negotiate individual contracts. The one with something to sell was dealing with the many – global, not local; largely anonymous; often unknown, except by an email or internet protocol (IP) address. On-line, the relationship between vendors and purchasers was hugely different from that in the atom-based world.

This meant that new ways of entering contracts had to be developed so that on-line commerce could develop and mature within the boundaries of the legal system – for without that, no vendor and no purchaser could trade with equanimity, let alone make the enormous investments that were required by this new market-place. Although it is almost unbelievable for those who were born in the compact disc (CD) generation, the Internet was an interesting but nerdy place until the development of easy to use search engines in the mid-1990s stimulated and permitted the role of the Internet to change from a military and academic communication network to the modern equivalent of the Roman forum: the meeting place; a centre for commerce, news, discussion, politics, sex, deceit and truth.

Lawyers had to develop new ways of contracting. It was no longer reasonable to expect the contracting parties to meet or even personally communicate. A whole new way of entering formal agreements had to be found.

The most ubiquitous and dominant of these is the click-through contract. The law presumes that one has read and understood the contents of any agreement to which one agrees to be bound. Given this, the question became, as we don’t have handwritten signatures on-line, how can one party establish that the other has read and agreed to the terms of the deal offered? Nowadays, we are all used to the ‘agree’ and ‘decline’ buttons and press them without a moment’s thought. When did you last read the terms before pressing the ‘agree’ button? If you do venture into that lonely land you will discover a long document, full of legal terms that protect only the interests of the offeror. Would Facebook have become so successful if people had actually read and understood the contractual terms of membership before pressing the ‘agree’ button?

For some years there was legal discussion as to the validity of the ‘click button’ form of entering an agreement but it is now quite settled that pressing the ‘agree’ button is legally akin to signing your consent with a pen. It is acceptance by conduct and that acceptance is communicated to the offeror. Provided that the offeror can prove the identity of the contracting party, it can enforce the agreement.

All of this may seem tangential to copyright licensing but it is not. When you put a digital asset on-line (whether it is a photograph, video, music, article, book or blog) you are making it possible for an indeterminable number of unidentified people to make unrestricted numbers and types of uses, of the asset. This is fabulous if you are old enough to have once argued the toss between the Maoists and the Trotskyists, or young enough to remember The Spice Girls fondly. The two demographics (with little else in common) share a belief in the socialisation of private digital assets. Groups such as the Electronic Frontier may have argued for a new world in which the laws of the old world did not apply to the new on-line world but the younger demographic didn’t care about the philosophy – they just did it. File sharing and unauthorised appropriation became a part of everyday life.

This created a challenge for the owners of copyright material: How could they protect their investment in the creation and promotion of digital assets? Further, how could owners permit the distribution of their assets in accordance with the purposes for which they had been created? This is where the interests of, say a record company, diverge from those of a collecting institution. For one, the primary purpose is commercial; for the other, the primary purpose is public access. One is measured in corporate profit and the other, by the effectiveness of the public educational initiative. They are both valid and defensible. It is a question of what use the owner wishes to make of its asset.

The Creative Commons approach is one that recognises that some owners wish to make their content available to as many people as possible while at the same time imposing simple restrictions on subsequent use.

Creative Commons and collecting institutions

Many institutions use some form of Creative Commons licensing in respect of their on-line collections. There are many advocates of Creative Commons who see it as a way of avoiding the complexities of copyright. This is a false hope. Put at its simplest, Creative Commons is a ‘low-doc’ system of copyright notification and licensing. It works within the copyright system rather than being an alternative to it. It provides those who own rights to grant licences and those who wish to use those rights, the ability to enter licences without the need to enter individual negotiations. The copyright position of the material stated, the permitted uses and contractual terms are spelled out and the user can either take it or leave it.

In a standard copyright licence, one of the most important sections will be as to enforcement and sanction. What happens if the licensor breaches the terms of the licence? With a Creative Commons licence what must be remembered is that once granted, the use granted is without supervision and can include only minimal sanction. An institution that adopts this approach should make sure that it reviews very carefully the standard agreements that it adopts when implementing the Creative Commons approach. All of the standard agreements currently available need considerable amendment before use by collecting institutions. No institution would be prudent if it left the control of the asset to such a basic agreement.

Although no institution will offer unlimited use of the on-line asset, it should reinforce the agreement by using technological protections that will inhibit unauthorised uses. The most common protections are to ensure that images be put on-line only if they are in a resolution that is too low for commercial re-use and to convert literary material into a PDF format. These are somewhat primitive precautions and do not prevent copyright infringement – they merely reduce them.

Creative Commons is really only relevant to collecting institutions in respect of their pubic access programs. When it comes to the commercial or inter-institutional licensing, an institution cannot prudently rely on such a simplistic approach. Where it is important to control the period, nature and quality of the use, to protect important features of the material and to safeguard the reputation of the institution, it is essential that the institution use a formal, fully articulated licence. Creative Commons licensing has no place in the granting of licences for merchandising, reproduction of catalogue images and text, and all of those other uses where the owner wishes to control the value of their copyright asset.

  1. 25.    The Opening Australian Archives Project

Opening Australian Archives: Open Access Principles for Australian Collecting Institutions is a project of the Australian Research Council (ARC) Centre of Excellence for Creative Industries and at Queensland University of Technology.[271] Although the website states that its content is only in draft form, it is essential reading for any collecting institution that is undertaking any on-line copyright licensing regime. It provides advice that is both prudent and practical. It also provides an interesting selection of brief case studies from local, national and international institutions.

Thanks to this project – and its availability on-line – there is no need to reinvent the wheel here.

Intellectual property (IP) licence checklist

The following checklist sets out the issues that you might need to consider when entering a licence agreement involving copyright. The contract itself will not contain all of these issues – it is an aide de memoire for drafting or examining a licence agreement.

(i)            INTELLECTUAL PROPERTY LICENCE CHECKLIST

  a.             Issues                 i.           Comments
1. b.            Licensor

  • Name of entity granting the licence
  • ACN
  • Address of registered office
Who is the contract between? Who is the grantor and who is the grantee? Although it may seem obvious, in an era of complex legal structures, it is sometimes not as easy as it seems.

Is the licensor actually the rights owner? Or is it acting as an agent or other kind of representative?2.

c.             Rights owner

3.

d.            Licensee

  • Name of entity taking the licence
  • ACN
  • Address of registered office

4.

e.            Material to be licensed

  • Artistic work, literary work, song, recording, film/video/program; data, software, etc.
  • Describe the characteristics of the licensed subject matter: [title, description, dimensions, bytes, pages, words, minutes, application].

What material is the subject of the licence? Include an attachment or schedule describing each work or object and specify any limitations as to how much of it can be used.5.Rights licensed?

 

  • Purpose for which rights are granted
  • Which rights are granted?
  • Which rights are reserved?
  • Can the licensee grant sub-licences?
  • Quality control and approval procedures (restrictions on alteration/modification)?

What uses does the party using the rights need? What uses will the owner permit?

What rights are being granted? What parts of the ‘bundle of rights’ are included in the agreement? Is it to include all of the rights of copyright or only some of them?

6.Manufacture and distribution

  • Specified or approved manufacturer?
  • Specified or approved distributor?

In commercialisation agreements it can be an important part of quality control and audit control to agree on a specified manufacturer and/or distributor. They must be proven to be reliable both as to quality and accounting.

7.Permitted uses

  • What specific uses can be made of the subject matter?
  • Facsimile reproduction or digitisation?
  • Adaptation, manipulation, enhancement?
  • Merger with other materials or data (producing derivative material)?
    • Who owns rights in merged/derivative material?

Limiting the use to specified purposes is basic. No licensee should grant the right to use IP without clearly defining the authorised purpose. Some are clearly more dangerous to the IP than others, particularly where they include facsimile reproduction or digitisation.

If the owner’s material is to be merged with other material, who will own the compilation? What control will the owner retain?

8.Type of licence:

  • Exclusive?
  • Sole?
  • Right to sub-license?

 

The grant of rights may be exclusive or non-exclusive. Even where rights are ‘exclusive’, the extent of that exclusivity can be limited. The owner can grant exclusive rights to different people for different uses in the same territory.9.

1. Is the licence limited in application?

  • Particular class of users/consumers?
  • Time?
  • Industry?
  • Materials?

10.

2. Territory

You can license someone the right to use your rights in a particular territory, but retain the rights in other territories. If you are licensing rights to make merchandise for an exhibition or for inclusion of a work in an exhibition catalogue, you may only need them for your state or territory. However if the exhibition is going to tour interstate, the territory of the agreement will need to take that into account.

 

11.

a.      Term
  • Commencement date?
  • Period?

For how long are the rights to be granted? You can license copyright for a set number of years or it can be controlled by other triggers, for example, a specified number of uses.12.Option to renew

  • Performance triggers?
  • Consent?
  • Notice?
  • Period?
  • Number of options?
b.

Given that most licences are for a limited period, what is the mechanism for extending that period Is there an automatic roll-over if certain success criteria are met? Will it be extended if roll-over unless notice of termination is given? Does it just drop dead at the end of the licence period? There are any number of possibilities that may be negotiated.13.Registration

  • Design registration [where artistic work being industrially applied]:
  • Trademark registration?
  • Who pays for lodgement?
  • Who prepares forms?

This one to worry about if you are involved in brand commercialisation or merchandising. Registration of designs and trademarks is an important and overlooked aspect of IP administration in collecting organisations.

14. Changes, improvements and developments

  • Is any change permitted and, if so, are any approvals required?
  • Ownership of improvements to licensed material by licensee?
  • Obligation of licensor to provide updates?

What changes to your work are you going to permit? What degree of control will the owner retain? Who may approve changes? Who will own the changes? If the licensor improves the subject matter, will it provide the improvements to the licensee?15.

c.      Quality control
  • Samples and approval mechanisms?
  • Number of samples?
  • Date of delivery to licensor – pre-production?
  • Communications?

These provisions are particularly important. A prudent owner will include extensive quality approval and maintenance procedures to ensure that that the value of the rights is not diminished by inferior quality reproduction.16.

d.      Training
  • Is the licensor to provide training?

Perhaps most important where any kind of ‘know-how’ or software is being licensed but also relevant more generally.17.

e.      Accreditation
  • Wording?
  • When (each use, advertising etc)?

Not common but important where the licensee is being permitted to use the name of the institution in training or consultancies.18.

f.       Delivery of materials by licensor
  • What must be supplied?
  • By what date?

19.

                                                       i.           Money
  • Royalties?
    • Fee upon receipt of each design?
    • Fee per article sold/manufactured for ______ number?
    • Fee per article sold/manufactured for more than _______ number?
    • Outside Australia?
    • Basis of calculation?
      • Licensee’s net/gross income?
      • Exclusions?
      • Flat fee?
        • Amount?
        • Other? (For example, flat fee per hour of use)
        • Commission?
        • Percentage of anticipated earnings?
        • Increase if option to renew exercised?
        • Payment schedule (dates)?
          • Flat fee:
            • $…………. upon …………. (delivery, draft or final)?
            • number to be produced?
            • fee for further produced?
            • number to be further produced?
            • Advance and royalty?

 

How will the copyright owner be paid: With an up-front fee or by royalties or a mixture of both? This will be largely determined by the type of deal and the relative bargaining power of the parties.

20.

Accounting

  • Period of accounting
  • Details to be provided:
    • number manufactured
    • number sold
    • price per article
    • territory sold to
    • amount owing to artist
    • money (and like matters)
    • Statement to include cheque
    • Licensor to have access to records and books
      • Frequency of statements
      • Review upon sales performance
      • Interest upon arrears
      • Audit rights

How can the copyright owner check that they are being paid the right amount? Where royalties are involved, agreed audit powers and procedures are essential.21.

                    ii.           Enforcement and termination
  • Unilateral/bilateral?
  • Written notice
  • Failure to perform
    • Non-payment
    • Late payment after sufficient notice
    • Bankruptcy, winding up, scheme of arrangement, judgment debt, criminal conviction
    • Quality of product
    • Cessation of production
    • Return of materials, original, copies, records
    • Removal of accreditation
    • Reversion of rights to licensor
    • Breach: limitation of remedies

What are there circumstances in which the contact can be terminated?

The owner will require provisions to protect their rights from infringement. Some exclusive licensees will also require such rights to ensure that they are getting the benefit of their promised exclusivity. Who will pay the legal costs? Who may ‘settle’ a dispute if it goes to court? How will damages and costs be split?

22.

g.      Alternatives to termination
  • Alter to non-exclusive licence
  • Alter agreement

23.

Actions to occur upon termination

  • Time to dispose of stock
  • Time to account to licensor
  • Time to return licensor’s materials

24.

h.      Dispute resolution
  • Mediation
  • Arbitration
  • Appointment of arbitrator(s)

How will you settle disputes? Is there a mechanism in the contract that makes the parties undergo mediation or arbitration of a dispute that cannot be resolved by negotiation? This is a standard provision in modern licence agreements25.Governing law or jurisdictionThe law of the contract is usually the law of the licensor – but reality also plays its part. The biggest gorilla has the most power.26.

i.       Warranties
  • Ownership of rights
  • Quality
  • Return of materials
  • Originality of work

These set out basic obligations, without which the parties would not proceed.27.Licensee’s right to sub-license?

  • Consent required?
  • Limits to the length of term of any sub-licence?

Is the licensee allowed to grant rights to others? If so, who and what for? How is the owner protected against sub-licensee behaviour that might damage the value of the rights?28.IndemnityDoes each party indemnify the other in the event that any of the promises it makes are broken? These are as complex as they are important.29.Third party infringement

  • Licensee right to initiate proceedings
    • Who pays costs?
    • Who retains solicitors?
    • Warranty to assist in infringement proceedings

Where the licensor is granting exclusive rights and this exclusivity is breached by a third party,[272] what is the procedure? Does the owner have to act to shore up its promise of exclusivity? Can the licensee sue in the owner’s name? Who pays?30.Confidential Information / PrivacyIs any part of the deal commercial in confidence? Is it subject to FOI?31.Taxation considerations:

  • Is the licence a taxable supply for GST?
  • Other tax considerations?

 

 

26.11  REMEDIES

The rights conferred by the Act are exclusive. They can be enforced by their owner, or where appropriate, the owner’s assignee or the exclusive licensee. Determining which remedies are available and the legal and strategic reasons for adopting one over another, is a complex matter that requires experienced legal advice in each individual case. The following brief outline is to give you some basic information before meeting with your organisation’s litigators.

Remedies for breach of copyright

    1. 26.    Injunction

This is an order of the court forbidding the threatened infringement or the continued infringement of a copyright. For example, the court may issue an injunction preventing the sale of items such as printed t-shirts that the copyright owner alleges reproduce their work without permission. An injunction can be issued even where there has not been a final decision by the court as to whether copyright has been infringed, though in this situation the copyright owner may have to give an undertaking to compensate the defendant if their case is unsuccessful. It can be obtained quickly and should be sought as soon as an ongoing infringement or threatened infringement is discovered.[273]

    1. 27.    Damages

In addition to an injunction, the court may award damages to compensate the copyright owner for the loss suffered because of the defendant’s infringement.[274] The court may also award additional damages when it sees fit; for example, when the infringement is flagrant, vexatious, or perhaps causes severe mental or emotional stress.[275]

        1. 28.    Account of Profits

This remedy does not seek to compensate the copyright owner for loss suffered, but rather, requires the defendant to reveal how much money was derived from the breach and, where appropriate, pay those profits to the rightful copyright owner. (Note that you can either seek damages or an account of profits – but not both. The decision is of vital strategic significance in copyright cases.)

1. 29.    Conversion or Detinue

While the remedy of damages is designed compensate the owner for the infringement of an exclusive right, conversion and detinue are old procedures by which the owner receives damages for the loss of the infringing copies already disposed of and, more importantly, delivery up of the remaining copies.[276] For example, if the artistic work has been reproduced on a range of clothing (as had happened in Bronwyn Bancroft’s Federal Court case against Dolina Fashions) the law says that the infringing copies (such as the dresses) are the property of the copyright owner whose rights have been breached. In that case, the company had to pay the artist an account of profits and hand over all garments that bore the artist’s designs.

        1. 30.    Anton Pillar Orders

Anton Pillar orders provide the copyright owner with a power to enter the premises of a person who is suspected of being a copyright pirate, to search for, and take possession of infringing material. It can even extend to forcing the subject to reveal other relevant information such as the whereabouts of stock or printing plates or the names and addresses of other people who have been involved.

These orders are granted only in limited circumstances, usually when there is a real fear that evidence will be disposed of or destroyed.[277] These are not just Rambo-like raids; the Courts put very firm restrictions on the parties’ behaviour during the raid and require that the lawyers provide written reports after the event. Because they amount to a non-police raid of private property, these orders are not easy to get but they are often the only way of nailing copyright pirates who are working on a large scale.

Another version of the Anton Pillar order is referred to as the John Doe Order. In this case, the plaintiff doesn’t know the exact names of the pirates and hence the reference to the legal fictional person, John Doe). This is used mainly in situations where you can be sure that there will be copyright bootleggers but cannot reasonably be expected to know who they are.[278] This is often the case, for example, at popular music concerts where pirate merchandisers are hugely organised and follow the stars on tour, from date to date and country to country. In such cases the court is may grant an order permitting the seizure of contraband merchandise such as t-shirts, caps, posters and badges from unspecified vendors, and requiring these vendors to give details about how the illegal merchandise had been acquired. These are strong remedies but are difficult to obtain. They are expensive and are only suitable where the dollar value of the piracy is high.

Remedies for breaches of moral rights

Given the respect that almost all collecting institutions have for the moral rights, these remedies require only brief mention.

The breach of moral rights is not a criminal offence but it gives the owner of the moral rights the power to bring an action against the wrongdoer. In a case for an infringement of any of an author’s moral rights in a work, the applicant may seek any or all the following remedies:

(a)    an injunction;

(b)    damages for loss resulting from the infringement;

(c)     a declaration that a moral right of the author has been infringed;

(d)    an order that the defendant make a public apology for the infringement;

(e)    an order that any false attribution of authorship, or derogatory treatment, of the work be removed or reversed.[279]

It is worth noting that in exercising its discretion as to the appropriate relief to be granted, the court may take into account any of the following:

(a)    whether the defendant was aware, or ought reasonably to have been aware, of the author’s moral rights;

(b)    the effect on the author’s honour or reputation resulting from any damage to the work;

(c)     the number, and categories, of people who have seen or heard the work;

(d)    anything done by the defendant to mitigate the effects of the infringement;

(e)    if the moral right that was infringed was a right of attribution of authorship – any cost or difficulty that would have been associated with identifying the author;

(f)     any cost or difficulty in removing or reversing any false attribution of authorship, or derogatory treatment, of the work.[280]

It is easy to recognise how each of these matters can have special significance in the contest of collecting institutions.

Remedies for infringements of performer’s moral rights

A performer has moral rights in respect of a live performance or recorded performance. Where those rights are breached they may seek any one or more of the following remedies from the court:

(a)   an injunction (subject to any terms that the court thinks fit);

(b)   damages for loss resulting from the infringement;

(c)   a declaration that a moral right of the performer has been infringed;

(d)   an order that the defendant make a public apology for the infringement;

(e)   an order that any false attribution of performership, or derogatory treatment, of the performance be removed or reversed.[281]

In exercising its discretion as to what relief would be appropriate, the court may take into account any of the following:

(a)   whether the defendant was aware, or ought reasonably to have been aware, of the performer’s moral rights;

(b)   the effect on the performer’s reputation resulting from any damage to the performance;

(c)   the number, and categories, of people who have heard the performance;

(d)   anything done by the defendant to mitigate the effects of the infringement;

(e)   if the moral right that was infringed was a right of attribution of performership—any cost or difficulty that would have been associated with identifying the performer;

(f)    any cost or difficulty in removing or reversing any false attribution of performership, or derogatory treatment, of the performance.[282]

 

ENDNOTES


[1] The development of freedom of information legislation certainly promoted this change in philosophy.

[2] In 1999, the Copyright Law Review Committee published Part 2 of its report Simplification of the Copyright Act 1968 (Categorisation of Subject Matter and Exclusive Rights and Other Issues). Part 1 (Exceptions to the Exclusive Rights of Copyright Owners) was published in September 1998. The recommendations of the Committee are unlikely to be implemented. For a discussion of the report, see Andrew Christie, ‘Simplifying Australian Copyright Law’ (2000) 11(1) AIPJ 40–62.

[3] References to specific sections in this chapter are from the Copyright Act 1968 (Cth), unless otherwise stated.

[4] In the law of copyright, all creators, not just writers, are referred to as ‘authors’.

[5] The lyrics for a song are protected as a literary work. Computer programs are deemed ‘literary works’.

[6] Copyright Act 1905 (Cth).

[7] Copyright Act 1911 (UK).

[8] This was the effect of s.4 of the Statute of Westminster; Copyright Owners Reproduction Society Ltd v EMI (Australia) Pty Ltd (1958) 100 CLR 597.

[9] Copyright Act 1968 (Cth).

[10] That is an Australian citizen, resident or company.

[11] For example, © Simpson 2007.

[12] For this reason it is often difficult, time consuming and expensive to work out the copyright status of US material. It is important to note that where a work is out of copyright in its country of origin (say, it was not registered or registration has expired in the US), it may still be protected in Australia. Under our treaty obligations we are obliged to treat works as though they were our own – notwithstanding that their home country does not protect them.

[13] In sections 126-130 of the Copyright Act 1968 (Cth) there are a number of presumptions as to subsistence, ownership and authorship that may be relevant in the event on civil proceedings.

[14] Section 32.

[15] The word ‘work’ is used in its technical sense and refers to an artistic, musical, literary or dramatic work.

[16] This is almost a truism in the copyright world. It is a leitmotif in many cases. Many readers will be familiar with the Telstra’s advertisement for Yellow Pages in which a man is trying to locate parts for his 1954 Goggomobile. In his Scottish brogue he has to spell out ‘G-O-G-G-O …’ It became an advertising icon. When Shannons used the same actor using the same famous phrase: ‘G-O-G-G-O …’ to advertise car insurance, Telstra sued. There was no liability for taking the idea and the phrase was not sufficiently substantial to amount to a literary work. It was not a reproduction – merely an evocation of the original script. Telstra lost on the copyright claim but won on its claim under the Trade Practices Act 1974 (Cth): Telstra Corp v Royal & Sun Alliance Insurance Australia [2003] FCA 786; see also Nathan Archibald, Case Note: Telstra Corp v Royal & Sun Alliance Insurance Australia (2004) 9 Media & Arts Law Review 83.

[17] This requirement presents conceptual artists with unusual difficulties. By the very nature of their art form, many conceptual works are not reduced to a material form and therefore do not enjoy copyright protection. Such works should be carefully documented by words and diagrams. Copyright would then at least be able to subsist in the documentation.

[18] But note the exception relating to public sculptures, discussed later.

[19] In the case of Metix (UK) Ltd v Croner Trading Pty Ltd [1997] Fleet Street Reports Vol 24(10) 718 at 721, the court used the example of an ice sculpture to indicate that protection can be granted to such impermanent works. Logically, it follows from this that kinetic artistic works (where the form or colour of the work may change continuously) are nevertheless capable of protection.

[20] See Creation Records Ltd v News Group Newspapers (1997) 39 IPR 1 (UK), involving the English pop group Oasis, where the plaintiff was unable to prevent others from taking photos of an elaborate tableau that the plaintiff had staged by claiming that the tableau was subject to copyright. See also Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529.

[21] The court did not grant an injunction restraining the ABC from broadcasting the event and did not make a final determination as to whether the display could have been protected. See Nine Network Australia Pty Ltd v Australia Broadcasting Corporation, Hill J, 23 December 1999, [1999] FCA 1864, No 1435 of 1999.

[22] Section 10.

[23] For example, Arthur Stace’s famous chalk inscriptions of the word ‘Eternity’ around Sydney could not be copyright works.

[24] Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984.

[25] Consider Four Minutes Thirty-Three Seconds by the composer John Cage. In this, the orchestra is on stage but does not play. The musicians sit quietly for 4 minutes 33 seconds. There is no music. Does a musical work need music? Can we assume that it is a musical work because it is the creation of a professional composer who intended it to be considered a work? If it is not a musical work, is it still capable of attracting copyright protection as a ‘dramatic work’ given that it is capable of performance before an audience? Interestingly, if protection is based on it being a dramatic work then it does not qualify for the various licence schemes (which are administered by collecting societies such as APRA and AMCOS) that control the performance and recording of musical works.

[26] Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd (1999) 48 IPR 333 at 336–8; and see Lahore, Copyright and Designs [6045]. This is why Cage’s Four Minutes Thirty-Three Seconds might be protected as a dramatic work.

[27] Section 10.

[28] See Harold Joseph Thomas v David George Brown & James Morrison Vallely Tennant (1997) 37 IPR 207 (concerning the design of the Aboriginal flag).

[29] See for example Sydney Organising Committee for the Olympic Games v Pam Clarke (1998) 41 IPR 403 (concerning Sydney 2000 Olympic Games logo).

[30] There is even a lively debate as to whether ‘engraving’ includes a mould or a die. In the NZ case, Wham-O Manufacturing Co v Lincoln Industries Ltd [1987] RPC 127, the mould for making Frisbees was held to be an ‘engraving’. The correctness of this was doubted in Interlego AG v Tyco Industries Inc [1987] FSR 409 at 453.

[31] See Breville Europe v Thorne EMI Domestic Appliances Ltd [1995] FSR 77 (UK). However, it does not seem to extend to functional components of a larger apparatus or machine; see Greenfield Products Pty Ltd v Rover-Scott Bonnar Pty Ltd (1990) 17 IPR 417.

[32] Coogi Australia Pty Ltd v Hysport International Pty Ltd & Ors. In that case protection was accorded to distinctive knitted fabric and the garments because, although they were produced by machine, the machine was operated by a skilled programmer in accordance with the manufacturer’s designs. Note that Coogi’s success in this case was limited; for example, copyright protection was granted to the ‘first-run’ of the fabric only.

[33] [2007] HCA 17

[34] From this it followed that the plug and the resin moulds for the deck and hull were not works of artistic craftsmanship either.

[35] Those who are neither citizens nor residents will nevertheless often come within the scheme of protection: see s 184 Copyright Act 1968 (Cth).

[36] Section 32(1).

[37] See Sands & McDougall Pty Ltd v Robinson (1917) 23 C.L.R. 49; Mander v O’Brien [1934] S.A.S.R. 87 at 91.

[38] See Krisarts SA v Briarfine Ltd (1977) 3 F.S.R. 557 at 562.

[39] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 287. See also Kalamazoo (Australia) Ltd v Compact Business Systems (1985) 5 IPR 213 at 233.

[40] See George Milpurrurru & Others v Indofurn Pty Ltd & Others (1994) 130 ALR 659, which discusses the question as to the ‘originality’ of designs that express a group story, in the context of works by Indigenous artists.

[41] Such as ‘just change a line here and a colour there’, ‘up to ten per cent is okay’, and so on.

[42] See Bauman v Fussell [1978] RPC 485 (UK); A-One Accessory Imports Pty Ltd v Offroad Imports Pty Ltd (1996) 34 IPR 306.

[43] IceTV Pty Limited v Nine Network Australia Pty Ltd [2009] HCA 14. It is also interesting to consider the Shepard Fairey situation: an artist (creator of the Obama ‘HOPE’ poster) who uses the work of others without attribution but seeks to protect copyright in his own work: http://en.wikipedia.org/wiki/Shepard_Fairey. Note that although Fairey claims to be able to use the material under US ‘fair use’ law, he would certainly not be able to under Australian ‘fair dealing’ exceptions.

[44] A US case challenged this low threshold, when it held that an exact photographic reproduction of a painting in the public domain was not sufficiently ‘original’ to warrant copyright protection. See Bridgeman Art Library v Corel Corporation 36 F. Supp 2d 191 (1999) (SD NY (US)). Discussed in Kevin Garnett, ‘Copyright in Photographs’ (2000) 22(5) European Intellectual Property Review 229 and Simon Stokes, ‘Graves’ case revisited in the USA: The Bridgeman Art Gallery v The Corel Corporation’ [2000] Entertainment Law Review 104.

[45] For a critical look at this aspect of copyright, see Kathleen Connolly Butler, ‘Keeping the World Safe from Naked-Chicks-in-Art Refrigerator Magnets: The Plot to Control Art Images in the Public Domain through Copyright in Photographic and Digital Reproduction’ (1998) 21 Hastings Communications and Entertainment Law Journal 55.

[46] Section 31 (1)(a).

[47] This includes the right to communicate a work by making it available on-line.

[48] It also includes the exclusive right to do these things in respect of an adaptation of the work: s 31 (1)(a)(vii).

[49] Section 21 (1A).

[50] Other items such as books may be rented without the permission of the copyright owner.

[51] Section 21 (1).

[52] Including to reproduce a two-dimensional work in a three-dimensional form; or to reproduce a three-dimensional work in a two-dimensional form: s 21 (3)(a)(b).

[53] This includes the right to communicate a work by making it available on-line. ‘Communicate means make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject‑matter’: s 10

 

[54] Section 85.

[55] Section 21 (6).

[56] Section 86.

[57] Section 21 (6).

[58] Section 87.

[59] Section 88.

[60] For example, the photograph of a painting or a film based on a book.

[61] For example, a photograph of a musical instrument or a maquette made from plans.

[62] For example, the book digitised and made available on a website.

[63] Conversion from hard copy to digital form and vice versa constitutes reproduction: s 21, Copyright Amendment (Digital Agenda) Act 2000 (Cth).

[64] Section 21 (3).

[65] As to the complexities of working out the meaning of the right to ‘publish’, see Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58; (1990) 171 CLR 88.

[66] Section 29 (1).

[67] Section 29(3). This may seem rather extraordinary for the selling of photographs or engravings of a drawing, painting or craftwork would constitute publication.

[68] Section 29 (1)(b).

[69] Section 29 (1)(c).

[70] In the former, you are sending, in the latter you are allowing someone else to come and collect.

[71] Section 35(2).

[72] Kenrick v Lawrence & Co [1890] QBD 99.

[73] The rights in material published by employees of newspapers, magazines and periodicals are as described in the next section.

[74] For example, with this book, the rights in the content are retained by the author of the material and licensed to the publisher. Still, the easiest way of contacting the author (and perhaps the most polite) is to contact the author through the publisher.

[75] This information is may be next to the work (in the case of maps, diagrams and photographs), often in the Acknowledgements section and occasionally in the footnotes.

[76] Section 208.

[77] Section 10. See also Pacific Film Laboratories Pty Ltd v. Commissioner of Taxation (Cth) (1970) 121 C.L.R. 154.

[78] Where works are commissioned and the commissioner owns the copyright, there are certain situations where the commission may be restrained from granting further rights – for example where it agreed in the commissioning agreement that its rights were constrained or that it would only use them for particular purposes. You cannot guess this. You limit this risk by stating in the permission document that the party granting the rights has the right to do so.

[79] Section 35 (5); s. 213 (5).

[80] The plate maker is making a reproduction of the artist’s original work and does not thereby acquire rights in the original work. Sometimes printers of fine art have a contract with their artist clients by which they acquire the copyright in the plates but this is unusual.

[81] Note that if at the time of entering the commission agreement the commissioner tells the artist that the work is required for a particular purpose, the artist can restrain the commissioner from doing any act covered by copyright that is beyond the declared purpose.

For example, if a manufacturer commissions an artist to paint a portrait of Julia Gillard for the express purpose of putting it on a biscuit tin lid, the company may be restrained from reproducing the image on postcards. This is on the basis that the artist has agreed to create a work for a specific purpose. This ‘purpose’ exception applies only to works created pursuant to agreements made after 1 May 1969.

[82] James Lahore, Copyright and Designs, 3rd Edition (Butterworths: Sydney 1996) at para 20 065.

[83] [1951] 1 Ch 393 at 398-399.

[84] (1945) 62 WN (NSW) 212.

[85] (1945) 62 WN (NSW) 212 at 215.

[86] Section 35(6).

[87] Section 35(6).

[88] EdSonic Pty Ltd v Cassidy, Fed Ct, (September 2010).

[89] See Sun Newspapers Ltd v Whippie (1928) 28 SR (NSW) 473, a ‘Ginger Meggs’ case.

[90] Section 35 (4). This was a deal done at a time when the economic value of the digital rights was uncertain and pessimistic and the CAL income from photocopying was seen as important source of income for journalists that the union sought to protect. It was a trade-off.

[91] Section 22 (3A).

[92] Section 22 (7).

[93] Section 22 (7). If there is a conductor, it is deemed to be a ‘performer’ even though their performance is not actually heard.

[94] As employer of the author.

[95] As the publisher of the edition.

[96] Section 10.

[97] See John Bulun Bulun & Another v R & T Textiles Pty Ltd [1998] 1082 FCA (3 September 1998). In this case the court held that the Copyright Act 1968 (Cth) could not recognise communal ownership of designs or paintings, but that there was scope for recognition of a fiduciary duty owed by the artist to their community that could give the community rights to enforce copyright in a work if the artist did not do so.

[98] ‘Material’ here includes works and subject matter other than works such as recordings, editions and films.

[99] The Commonwealth Authorities and Companies Act 1997 (Cth) also makes it clear that a company incorporated under the Corporations Act 2001 (Cth) is distinct from the Crown (s 7). For example, the Bundanon Trust that (among other things) maintains the Arthur Boyd collection is constituted as a company limited by guarantee. Although funded by the Commonwealth and its board appointed by the Minister, it does not come within the definition of ‘the Crown’.

[100] Note that in calculating copyright periods, the time period is calculated from the end of the relevant calendar year; for example, for works, the end of the year in which the author died.

[101] Such as fiction, non-fiction, stories, lyrics, poems.

[102] For example, material such as diaries, work notes, letters.

[103] For example, unpublished manuscripts of compositions.

[104] See discussion of Literary Works above.

[105] For example, unpublished and unperformed scripts and other directions.

[106] The effect of these exceptions creates an illogical anomaly. It is possible for the copyright in a photograph or an etching to last indefinitely if it remains unpublished. By contrast, the copyright in other kinds of artistic works can only ever run for the life of the author plus fifty years. Given that recent copyright reforms have sought to make the protections more technology neutral, there seems to be little logic in treating photographs and etchings differently from other art works.

[107] Section 212.

[108] Photographs taken after 1 January 1955 were still in copyright when the AUSFTA came into force and therefore were subject to the copyright period extension. Before the Copyright Act 1968 (Cth) came into force on 1 May 1969, the copyright in photographs lasted for fifty years from the end of the calendar year in which the photo was taken. The 1968 Act changed the basis of calculating the copyright period.

[109] Section 33 (5).

[110] There are no decided decisions on whether a re-engineered, digitised etc recording is treated as a new recording for these purposes.

[111] In such cases, ‘published’ means that ‘records embodying the recording or a part of the recording have been supplied (whether by sale or otherwise) to the public’: s 29(1)(c). Thus, if a master recording is made but, for whatever reason, a decision is made not to release the record, copyright will remain indefinitely. The seventy-year period will never start to run.

[112] The expression ‘film’ includes any format including video and all digital formats. Note that this discussion relates only to the copyright in the film itself. It does not cover the rights in the underlying rights – the works that are included in the film.

[113] There are also provisions protecting films made before that date which were ‘dramatic works’.

[114] Section 204 and s 222.

[115] If the making of the film started before 1 May 1969 but was not completed until after that date, it is considered having been made after 1 May 1969: s 205.

[116] As to who the creator is in such a case, s 222(1) unhelpfully states that, ‘the person who was the author of the work for the purposes of the Copyright Act, 1911 shall be deemed to be the author of the work for the purposes of this Act’.

[117] Section 204.

[118] This was extended from 50 years by the AUSFTA in 2005. ‘Published’ means that ‘copies of the film have been sold, let on hire, or offered or exposed for sale or hire, to the public’: s 29(1)(b).

[119] Section 223. A ‘broadcast’ means a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992 (Cth) (s 10). It does not include a service that provides only data or only text (with or without associated images) or a service that makes programs available on demand on a point to point basis, including a dial-up service.

[120] Section 244.

[121] This was unchanged by the AUSFTA.

[122] Remember that this refers only to the ‘published edition’. It does not include any copyright in the artistic or literary works that may be contained within the edition.

[123] Section 34 (1).

[124] Section 34 (2). Despite the use of the pseudonym Stendhal, it was ‘generally known or could be ascertained by reasonable enquiry’’ that the author’s name was Henri Beyle. These days, the same issues commonly arise with graffiti artists or say, Lady Gaga: www.ladygaga.com.

[125] Sections 80, 33 (3).

[126] Section 81.

[127] Section 180(1).

[128] Section 180(2).

[129] Section 180(3).

[130] Section 233.

[131] Section 180(3).

[132] Section 234.

[133] Section 181.

[134] Section 235(1).

[135] As defined by s 204: ‘a cinematograph production where the arrangement, the acting form or the combination of incidents represented gives the work an original character’.

[136] Section 176.

[137] Section 177.

[138] Section 235(2).

[139] Section 181.

[140] Caution: this does not include the contents of the edition.

[141] Sections 180 and 181.

[142] Section 195AM.

[143] Section 195ANA(1)(2).

[144] Section 195ANA(3).

[145] Section 195ANB(1).

[146] Section 248CA.

[147] Section 248CA(2)(3).

[148] Some material (such as natural history specimens) is not subject to copyright; with other material, the copyright has expired.

[149] The collecting institution is itself the maker and owner of an enormous amount of copyright material.

[150] See earlier discussion as to what is a ‘substantial’ portion of a work. If it is not substantial, it can be used.

[151] When acquiring material from the copyright owner, it is prudent to include in the acquisition documentation a licence that permits you to do standard things such as reproduction in the catalogue; making available through the website; reproduction in the exhibition catalogue; reproduction in slides for public education programs; publication in books, pamphlets and reports; making copies for scientific experimentation and so on.

[152] So-called ‘orphan works’. If the owner cannot be identified it is even difficult to calculate whether a work is still in copyright because if you can’t identify the owner, you can’t know when he or she died. The pre-s 200AB legal position is set out in I McDonald, ‘Some Thoughts on Orphan Works’, (2006) 24 (3) Copyright Reporter: Journal of the Copyright Society of Australia, 152–96.

[153] One of the most important discussions of this issue may be found in M Warren, ‘Getting the orphans out of the orphanage: risk management and orphan works at the State Library of Queensland’, (2009)Information Online <http://www.information-online.com.au/sb_clients/iog/data/content_item_files/000001/PresentationC3.pdf>.

[154] See s 43.

[155] There is no ‘fairness’ requirement for subject matter other than works (films, recordings, published editions): s 104.

[156] Section 65.

[157] An example of this difference arose in relation to murals painted by John Lendis in the town of Sheffield, Tasmania, depicting the history of the town. Concerned about unauthorised reproductions of the murals, he attempted to claim full copyright in the murals, which was resited by the other members of the town community. Bruce Montgomery, ‘Mural artists runs into town’s wall of resistance’, The Weekend Australian, February 19–20, 2000 at 13.

[158] It is unclear whether such copy is permitted to be electronically communicated (such as by Internet).

[159] This is often the most important risk as, even if no-one sues for the copyright breach, the lender of the work may well require the return of the loaned work – or refuse to lend other works in the future. This risk can be even more damaging than litigation.

[160] Rule one in copyright litigation is to sue the party with the money.

[161] Section 67.

[162] Nevertheless, it is prudent to include in your permission documentation with the TV/film company that the company indemnifies the institution for any breach of copyright that occurs as a result of the filming.

[163] Section 40(2).

[164] Section 10(2) and s.10(2).

[165] Section 40. For subject matter other than works, see: s 103C.

[166] Section 40(3).

[167] Ibid. Even though the person making the copy has complied with the reasonable portion test provided in this section, it does not give another person the right to make a subsequent copy of that copy: s 40(6).

[168] Section 10(2)(a)(b).

[169] Other than a computer program or an electronic compilation, such as a database: s 10(2A)(a).

[170] Section 40(5).

[171] Section 41. For subject matter other than works, see: s 103A.

[172] Section 41.A. For subject matter other than works, see: s 103AA.

[173] Section 42. For subject matter other than works, see: s 103B.

[174] Note that where the newsletter is being delivered on-line, the exception does not permit you to include accompanying music. (You would need to get a licence to use the music.)

[175] Section 43; for subject matter other than works, see: s 104.

[176] Section 45.

[177] Section 10(4).

[178] Section 51A(1)(a). Where a copy made for research being carried out at another institution, is sent to that institution, that supply does not constitute a ‘publication’ of the work: s 51A(5).

[179] Section 51A(1).

[180] Where the term ‘officers of the library or archives’ is used in this section it includes volunteers assisting with the care or control of the collection: s 51A(6).

[181] Section 51A(4).

[182] Section 51A(1)(a).

[183] Section 51A(1)(a).

[184] ‘Preservation reproduction’ means ‘a reproduction of the work made under subsection (1) for the purpose of preserving the work against loss or deterioration’: s 51A(6).

[185] Sound recordings: s 110B(1); film: s 110B(2); copying for these purposes does not constitute ‘publication’ for the purposes of the Act: s 110B(4).

[186] Section 110B2A. Perhaps this is just part of a ‘keeping the bastards honest’ approach.

[187] Key collecting institutions are defined as those where the governing body (the board, council etc) of the organisation has the statutory ‘function of developing and maintaining the collection’ or is ‘prescribed by the regulations for the purposes of this subparagraph’: s 51B (1)(a).

[188] Section 51B(3).

[189] Section 51B(4).

[190] Section 51B(5).

[191] Section 112AA(2).

[192] Section 112AA(4).

[193] Section 110BA.

[194] Section 110BA(6).

[195] Section 110BA(7).

[196] Section 39A; for subject matter other than works, see: s 104B.

[197] Section 39B.

[198] This covers a collecting institution whose collection is accessible to members of the public directly or, in the case of libraries, indirectly through interlibrary loans: s 49(9).

[199] Although less important in these days of fax and email, an exception to the requirement for written request is provided for users who, by reason of the remoteness of their location, cannot conveniently furnish the request and declaration soon enough to enable the reproduction to be supplied in the time required: s 49(2A)&(B).

[200] Section 49(2). Note that it is also permissible to make a copy of a copy already made under the preservation and replacement powers discussed earlier.

[201] One assumes that this is to prevent the commercialisation of what is essentially a public interest service.

[202] Section 49(5). See earlier discussion as to the meaning of ‘reasonable portion’.

[203] Section 49(5AB).

[204] Sections 49(6), 49(7).

[205] Section  203 H.

[206] Section 49(9) & s 49(7B).

[207] Section 49(7A)(c).

[208] Section 49(7A)(d).

[209] Section 49(5A).

[210] Section 50(10). For example, libraries within law firms or mining companies would not fall within this definition.

[211] That is, a request by a user where the prerequisites of s 49 have been satisfied. See heading 3 above.

[212] Section 50(1).

[213] Section 50(7)(d).

[214] Section 50(6).

[215] Section 50(7C).

[216] Section 50(3)(4).

[217] Section 50(7A).

[218] Where the principal purpose of the library is to provide library services for members of a Parliament and the reproduction is supplied to assist a member of that Parliament in the performance of his or her duties, this declaration is not necessary. This also applies to requests for electronic works.

[219] Section 50(7B).

[220] This copy can be provided to the researcher in either hard copy or electronic form.

[221] Section 51(c).

[222] Section 51 (c)(d). The copy can be provided to the researcher in hard copy or electronic form.

[223] Section 51A(2).

[224] Section 51A(6).

[225] Section 51A(3) There is no guidance as to the limits or extent of ‘administrative’ purposes.

[226] Or archival material in the custody of a person (other than the National Archives of Australia) in accordance with an arrangement referred to in s 64 of the Archives Act 1983 (Cth): s 10(aa).

[227] Section 51AA(1).

[228] Section 51AA(2).

[229] This authorisation may be given either before or after the acts in respect of which the authority is given have been done, and may be given to a person notwithstanding that he or she already has a licence granted by, or binding on, the owner of the copyright to do the acts: s 183(2).

[230] Section 183(1). Note that an act done under this subsection does not constitute publication of a work or other subject matter and shall not be taken into account in the application of any provision of this Act relating to the duration of any copyright: s 183(8).

[231] Section 183(2) provides a deeming provision (which is unlikely to be relevant to most collecting institutions) whereby if the Commonwealth government has made a deal with the government of another country for the supply of goods required for the defence of that country, the doing of any act in connexion with the supply of those goods (and the sale of leftovers) is deemed to be ‘for the services of the Commonwealth’.

[232] Notification is not necessary if it is not in the public interest to do so: s 183(2).

[233] Section 183(3).

[234] Section 183(5).

[235] Explanatory Memorandum to the Copyright Amendment Bill 2006 (Cth).

[236] The Statement of IP Principles for Australian Government Agencies can be found on the Attorney-General’s Department’s website at:  <http://www.ag.gov.au/www/agd/agd.nsf/Page/Copyright_CommonwealthCopyrightAdministration_StatementofIPPrinciplesforAustralianGovernmentAgencies>.

[237] See for example, National Gallery Act 1975 (Cth) (ss 6–7), National Library Act 1960 (Cth) (s 6), National Museum of Australia Act 1980 (Cth) (ss 6–7), The National Film and Sound Archive Act 2008 (Cth) (ss 6–7).

[238] See for example; AGD e-news on Copyright, Issue 9, May 2006; the Explanatory Memorandum to the Copyright Amendment Bill 2006 (Cth); the Supplementary Explanatory Memorandum to the Copyright Amendment Bill 2006 (Cth).

[239] Section 200AB(6), Copyright Act 1968 (Cth).

[240] This is a complex question of law and will depend on the purpose and constitution of the body in question. Institutions may need to get independent legal advice on this point.

[241] See for example, Report of the Committee Appointed by the Attorney-General of the Commonwealth to Consider What Alterations are Desirable in the Copyright Law of the Commonwealth, 1959, at para 404.

[242] Australian Copyright Council, Information Sheet: Governments (Commonwealth and State) G062, October 2009; <http://www.copyright.org/au/publications/infosheets.htm>.

[243] Copyright Agency Limited v State of New South Wales [2008] HCA 35 (see for example para 67, 70).

[244] These are specified in the Copyright Regulations 1969 (Cth), Schedule 10A. The ‘old’ library provisions is a reference to those provisions that were in existence prior to the implementation of the Copyright Amendment Act 2006 (Cth).

[245] Section 10.

[246] Section 10(1) and 10(4).

[247] Explanatory Memorandum to the Copyright Amendment Bill 2006 (Cth).

[248] Section  200AB; Explanatory Memorandum to the Copyright Amendment Bill 2006 (Cth); Evidence of Ms Helen Daniels to the Senate Standing Committee on Legal and Constitutional Affairs in relation to the Copyright Amendment Bill 2006 (Cth), for example, see: <http://www.aph.gov.au/SENATE/committee/legcon_ctte/completed_inquiries/2004-07/copyright06/submissions/sub69A.pdf>.

[249] Section 200AB(6A).

[250] Ibid at para 6.180.

[251] See Report of the Panel (the Homestyle Case) WT/DS160/R, 15 June 2000WT/DS160/R, 15 June 2000, para 6.163–6.189.

[252] Ibid at para 6.183.

[253] Ibid at para 6.187.

[254] Ibid at para 6.187. See also, the US Ninth Circuit Court of Appeals interpretation of the three step test embodied in s 107 of the US Copyright Act 1976 in cases such as:  Kelly v Arriba Soft Corp (2003) at 9073; Perfect 10 Inc v Amazon (& Google) (2007) at 5779.

[255] Ibid, for example at para 6.167. See also Ginsberg, J, ‘Toward Supranational Copyright Law? The WTO Panel Decision and the “Three-Step Test” for Copyright Exceptions’ at 14; cf Campbell v. Acuff-Rose Music Inc, 510 US 569 (1994) (‘no market’ for parodies, even if copyright owner could license them).

[256] Explanatory Memorandum to the Copyright Amendment Bill 2006 (Cth).

[257] See Report of the Panel (the ‘Homestyle Case’) WT/DS160/R, 15 June 2000WT/DS160/R, 15 June 2000, para 6.222.

[258] Ibid at 6.222-6.229.

[259] See Report of the Panel (the Homestyle Case) WT/DS160/R, 15 June 2000WT/DS160/R, 15 June 2000, for example at para 6.112.

[260] For example, if the collection item is an audiovisual item, a licence for use of the music and/or sound recording may be available from APRA.

[261] However, institutions should note that, the nature of the uses made by the Institution may be relevant to negotiating payment in relation to those uses should a copyright owner come forward in the future and seek payment. Therefore, containing the nature of the uses and taking reasonable steps not to expose the material to unreasonable risk of misuse will be an important part of an Institution’s general risk mitigation strategy.

[262] These include the reproduction of materials for users, other collecting organisations and for preservation purposes. The person may demand to inspect all such records or just those between certain nominated dates: s 203E (1)(a)(i)(ii).

[263] Section 203A(1)(b) & (4).

[264] Section 203E (6).

[265] Section 203D.

[266] Section 203G.

[267] Section 203H.

[268] For example, see M Warren, above at n 2.

[269] Section 196(3).

[270] For example, what is the actual legal persona of a particular government department; where a trustor a partnership is involved, who is the correct contracting party?

[272] For example, say the Metropolitan Museum granted a licensee the exclusive right to distribute and sell the museum’s merchandise in Australia, and a third party set up in competition selling unauthorised reproductions of Metropolitan collection material.

[273] Section 115(2); see Fraser v Evans [1969] 1 Q.B. 349; Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 C.L.R. 618 at 622; Shercliff v Engadine Acceptance Corporation Pty Ltd [1978] 1 NSWLR 729.

[274] Interfirm Comparison (Australia) Pty Ltd v Law Society of New South Wales (1974-1975) 6 A.L.R. 445

[275] Section 115(4); see George Milpurrurru & Others v Indofurn Pty Ltd & Others (1994) 130 ALR 659; Williams v Settle [1960] 1 WLR 1072; Ravenscroft v Herbert and New English Library Ltd [1980] RPC 193; Concrete Systems Pty Ltd v Devon Symonds Holdings Ltd (1978) 20 ALR 677. (As to pleading, see P J Holdings Australia Pty Ltd v Hughes (1979) 25 ALR 538.)

[276] Section 116; see further, Ricketson and Creswell, The Law of Intellectual Property: copyright, designs & confidential information, Sydney: LBC Information Services, 1999- , at paras 13.55 to13.105. Lahore, Copyright and Designs, 3rd ed, Sydney, Butterworths, 1996, at paras 36,285ff & 86,200.

[277] See further, Simpson, Bailey and Evans, Discovery and Interrogatories, Butterworths, Sydney, 1984.

[278] Tony Bain Pty Ltd v Jamison (1993) 41 FCR 414.

[279] Section 195 AZA (1); In deciding whether or not to grant an injunction under subsection (1), the court must consider whether the parties have made any attempt to negotiate a settlement of the action and whether it should adjourn the hearing or further hearing of the action for the purpose of giving the parties an appropriate opportunity to negotiate a settlement, whether through a process of mediation or otherwise: (3). In other words, negotiation is seen by the court as a positive step – not one to be resisted. Many of these problems are overcome through open-handed communication but never, by passive resistance.

[280] Section 195 AZA (1).

[281] Section 195AZGC(1). In deciding whether or not to grant an injunction under s 195AZG(1), the court must consider whether the parties have made any attempt to negotiate a settlement of the action and whether it should adjourn the hearing or further hearing of the action for the purpose of giving the parties an appropriate opportunity to negotiate a settlement, whether through a process of mediation or otherwise: s 195AZGC(3).

[282] Section 195 AZC (2).




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