The ‘means’ of infringement: tracing a line through Moorhouse, Tape Manufacturers, Cooper, and Kazaa (via Sony)

The iiNet judgment traces an interesting line through authorisation liability in the context of technology cases. Cowdroy reads the technology authorisation cases (Moorhouse, Australian Tape Manufacturers, Cooper, and Kazaa) as predicating liability firstly upon whether the defendant has provided the ‘means’ of infringement; a complex factual determination that depends on the context, but seems to implicitly incorporate the Sony test of whether the technology has substantial non-infringing uses and an intention test that goes to the design of the system and the invitation to infringe.

The conclusion that Cowdrow J draws is that iiNet does not provide the ‘means’ to infringement, because (a) the internet has many ‘lawful uses’ (Tape Manufacturers) (cf Sony, ‘substantial non-infringing uses’); and (b) iiNet has not actively supported the system that is the ‘means’ of infringement (the BitTorrent system, as a whole). Crucially, one does not infringe merely by using the internet – users need to do something else (seek out BitTorrent trackers and files) in order to infringe. If iiNet had played a more active part in the infringement, then it may be seen as providing the ‘means’ (in Moorhouse, this was by providing a copier in a library and effectively extending an invitation to infringe (per Jacobs J) or where it was ‘likely’ to be used for infringement (per Gibbs J); in Kazaa this was the advertising, predominantly ‘join the revolution’; in Cooper it was the knowledge and intent that most files on the website were infringing). What makes this interesting is that ‘means’ appears to incorporate intent in some way, although it is not exactly clear how this plays out.

Only after the ‘means’ are identified do the other factors become relevant – control, power to prevent, and knowledge of infringements. It would seem that the best reading of Cooper is that the ISP in that case was that while it did not provide the ‘means’ by hosting Cooper’s website, it was drawn into his infringement by the support it gave him with knowledge and intent that the files were predominantly infringing. No such relationship of control or support existed between iiNet and anyone providing BitTorrent services.

Much of this reasoning appears to depend on a finding that the internet is much more useful for non-infringing uses (not a ‘human right’, but performs a “central role in almost all aspects of modern life”).([411]) This distinguishes general technologies that “have lawful uses” (Tape Manufacturers) from technologies like Kazaa and Cooper’s website, whose ‘predominant’ or ‘overwhelming’ uses are to infringe ([412]). This seems explicitly draw Australian authority into line with the development of US authority in Sony, that developers will not be liable for products that have “substantial non-infringing uses”, and the exception that was drawn in Grokster holding developers liable where they ‘induced’ infringement. In this way, Cowdroy neatly reads Moorhouse in line with Sony and both Cooper and Kazaa in line with Grokster.

This is actually quite a neat distinction. Rather than treating every link in the chain that makes infringement possible as the ‘means’ of infringement and then having to carefully examine factors such as control, power to prevent, and knowledge, Cowdroy J has managed to articulate a distinction between mere facilities and services that are actually either designed to aide infringement, promoted to do so, or have little other purpose than to facilitate infringement. This puts an end to the classic confusion – if iiNet are liable for the acts of its users, surely the electricity company can also be liable, because but for their power, infringements could not occur. By interpreting ‘means of infringement’to require some more active role, Cowdroy J has created some certainty for the providers of general use technologies.

The role of s 101(1A)

A potential problem on appeal may be whether this definition of ‘means’ is consistent with s 101(1A), which requires that in addressing authorisation, a court must take into account control (power to prevent), relationship, and reasonable steps taken. If the enquiry is ended by the definition of ‘means’ of infringement, these factors may not be adequately taken into account. Justice Cowdroy dealt with this by relying on Kazaa and Metro as authority that 101(1A) did not change the common law for authorisation([415]); the statutory considerations are therefore relevant, and must be considered, but they seem to be subsumed within the threshold question of whether the respondent provided the ‘means’. So, in this case, iiNet did not have a power to prevent because they had no control BitTorrent – which meant that iiNet did not provide the ‘means’.([424],[444]) Similarly, there was nothing in the relationship of iiNet with its subscribers that suggested that iiNet authorised their infringements – unlike Kazaa.([452]) Finally, the Court found that iiNet had no reasonable steps it could have taken to prevent infringement.([458]) It would seem, in Cowdroy J’s framework, that if any of these factors were different, iiNet may be taken as having provided the ‘means’ for infringement (though they are not determinative of themselves). The same goes for knowledge and encouragement, which are relevant but not statutory factors.([463], [473]). More analysis is required as to how exactly the statutory factors inform both the finding of whether a technology provides the ‘means’ of infringement and the questions that must be asked after the means have been identified, but, as a complex question of fact, Cowdroy J’s use of a distinction based upon the ‘means’ does not seem to fall into an error of law and seems to provide a useful way to distinguish active from passive actors.

More detailed analysis

Cowdroy’s reading of Moorhouse confines liability to what he identifies as providing “the true ‘means’ of infringement’.([381]) In context, Moorhouse was to be read as imposing liability when copying machines were placed in close proximity with library books; the inference to be drawn is that UNSW authorised library users to copy library books.(UNSW v Moorhouse at 14 (Gibbs J); 21 (Jacobs J, McTiernan ACJ agreeing).) Only after proper ‘means’ of infringement had been established were the quesitons of control, power to prevent, and knowledge of infringements relevant.([382]) The implication is that in an authorisation case, “it is of fundamental importance to decide, in the particular circumstances of each case, whether the person alleged to have authorised actually provided the ‘means’ of infringement. Context is all important in authorisation proceedings.” ([382])

Armed with this distinction, Cowdroy J then considers the judgments in Cooper and Kazaa. Cooper’s website was the proper ‘means’ of infringement, because “The website is clearly designed to – and does – facilitate and enable this infringing downloading”, and that Cooper “designed and organised it to achieve this result”([391]-[392], quoting Cooper [2005] FCA 972, [84]). Cooper went well beyond Moorhouse in that “Mr Cooper intended that the website be used to infringe copyright.”([392]) Cowdroy J finds support for the distinction in the FCAFC decision, where Branson J found that what was required was not just the provision of a technical capacity, but one which was “calculated to lead to the doing of [the infringing] act”([394], quoting 156 FCR 380, [41]).

Justice Cowdroy traced a similar distinction in Kazaa, it was the intention to invite infringement that made the Kazaa Media Desktop the ‘means of infringement’ (following the reasoning of Gibbs J in UNSW v Moorhouse) or the ‘explicit invitation’ (following the reasoning of Jacobs J) ([397]).

Interestingly, Cowdroy J considered that Comcen, the ISP hosting Cooper’s website, did not provide the ‘means’ of infringement, but was liable because it was “so complicit in the existence of the website (which was the ‘means’ of infringement) that it provided such facility in the same way that Mr Cooper himself did”([398]) (based upon its knowledge that the website was used predominantly infringing and the financial benefit it purposely drew up in contractual arrangements with Cooper to benefit from high levels of traffic).

Applying this reasoning to whether iiNet provided the ‘means’ of infringement, Cowdroy J continues:

It is important to distinguish between the provision of a necessary precondition to infringements occurring, and the provision of the actual ‘means’ of infringement in the reasoning of Gibbs J in Moorhouse. As discussed earlier, a photocopier can be used to infringe copyright, but on the reasoning of Gibbs J and Jacobs J, the mere provision of a photocopier was not the ‘means’ of infringement in the abstract.”([400]
[...]
In the present circumstances, it is obvious that the respondent’s provision of the internet was a necessary precondition for the infringements which occurred. However, that does not mean that the provision of the internet was the ‘means’ of infringement. [...] ([401])

The use of the BitTorrent system as a whole was not just a precondition to infringement; it was, in a very real sense, the ‘means’ by which the applicants’ copyright has been infringed. This is the inevitable conclusion one must reach when there is not a scintilla of evidence of infringement occurring other than by the use of the BitTorrent system. Such conclusion is reinforced by the critical fact that there does not appear to be any way to infringe the applicants’ copyright from mere use of the internet. There will always have to be an additional tool employed, whether that be a website linking to copyright infringing content like Mr Cooper’s website in Cooper, or a p2p system like the Kazaa system in Kazaa and the BitTorrent system in the current proceedings. Absent the BitTorrent system, the infringements could not have occurred.([402])
The infringing iiNet users must seek out a BitTorrent client and must seek out .torrent files related to infringing material themselves. In doing so, they are provided with no assistance from the respondent. The respondent cannot monitor them doing so or prevent them from doing so.([403])

Accordingly, it was the “use of the BitTorrent system as a whole which is the ‘means’” of infringement, not iiNet’s service.([404]) iiNet could accordingly not be said to authorise any infringements.

Because iiNet had no connection to the BitTorrent system (unlike the ISP in Cooper, which ‘actively supported’ the creation and upkeep of Cooper’s website), it could not be drawn into the liability of anyone who did actually provide the ‘means’ of infringemnet.([407]-[408])

MyTVR have now launched their Australian service, which allows Australians to schedule free-to-air television programmes to be recorded by the company and stream the recording to their home PCs or mobile devices.

The interesting question is whether MyTVR’s service is legal for Australians to use (and, of course, legal for MyTVR to offer) under Australian copyright law. I assume here that MyTVR is not licensing the right to provide the service from television broadcasters, but is instead relying on the protection granted to Australians to ‘time-shift’ free to air television. (This conclusion is supported by the lack of mention in the terms and conditions of any licence granted by MyTVR to its users from the Broadcasters or holders of underlying rights.)

This is an issue that has been important in Australian copyright doctrine for quite a while. In the US, a flexible fair use defence exists that allows innovators to investigate and begin to offer a service without immediately being prevented from doing so by copyright owners. This is how the VCR was developed, for example; in the US, Sony was able to argue that it was fair use for users to record television programs for their own personal use. In Australia, by contrast, there is no broad ‘fair use’ exception, which means that if the personal use does not fit into a category like ‘research and study’, ‘criticism and review’, ‘news reporting’, or, now, ‘parody or satire’, it is immediately prohibited. It took twenty years for the law to catch up and add an exception for time-shifting television broadcasts; at least ten years to allow people to make digital copies of music they own to play on their own devices; and it still isn’t legal to make a copy of a DVD you own to either backup or play on a portable device.

So, lets have a look at the clause that allows time-shifting of television, s 111:

Recording broadcasts for replaying at more convenient time
(1) This section applies if a person makes a cinematograph film or sound recording of a broadcast solely for private and domestic use by watching or listening to the material broadcast at a time more convenient than the time when the broadcast is made.

Note: Subsection 10(1) defines broadcast as a communication to the public delivered by a broadcasting service within the meaning of the Broadcasting Services Act 1992 .

Making the film or recording does not infringe copyright

(2) The making of the film or recording does not infringe copyright in the broadcast or in any work or other subject‑matter included in the broadcast.

Note: Even though the making of the film or recording does not infringe that copyright, that copyright may be infringed if a copy of the film or recording is made.

Dealing with embodiment of film or recording

(3) Subsection (2) is taken never to have applied if an article or thing embodying the film or recording is:

(a) sold; or

(b) let for hire; or

(c) by way of trade offered or exposed for sale or hire; or

(d) distributed for the purpose of trade or otherwise; or

(e) used for causing the film or recording to be seen or heard in public; or

(f) used for broadcasting the film or recording.

Note: If the article or thing embodying the film or recording is dealt with as described in subsection (3), then copyright may be infringed not only by the making of the article or thing but also by the dealing with the article or thing.

(4) To avoid doubt, paragraph (3)(d) does not apply to a loan of the article or thing by the lender to a member of the lender’s family or household for the member’s private and domestic use.

Notice what this section allows you to do: you can record a broadcast “solely for private and domestic use by watching [...] the material at a time more convenient than the time when the broadcast is made.” As long as that is done, you will not infringe any copyright in the broadcast or underlying material.

The section makes no reference to space shifting – you must watch the broadcast at a more convenient time, but it does not necessarily require that you watch it in the same place; it is at least arguable that it allows you to record television to watch at a different time on your mobile devices.

The exceptions

There are exceptions made – you cannot sell or distribute “an article [...] embodying the film or recording” – which partially explains why the MyTVR terms are so careful to prohibit you from doing anything to “reproduce, duplicate, archive, distribute, upload, publish, modify, translate, broadcast, perform, display, sell, transmit or retransmit any media recorded through the myTVR Platform” (the other reason being that if you infringe copyright, MyTVR could be held liable).

These exceptions do not seem to apply to the standard use case for MyTVR – the physical ‘article’ embodying the recording are the MyTVR hard drives, and nobody is distributing the physical copy. So far, so good.

The first problem – streaming the video

The exception in s 111 exempts the recording of television from copyright infringement. Because no copies are made when you play a video cassette in your VCR (remember those?), playing a recording has never been an infringement of copyright. When you stream a video from one place to another, however, you are potentially infringing copyright – you are ‘communicating’ the work. There are exceptions for any technical copying that happens along the way; as long as the original copy is not infringing, the caching and copying that happens on a network level or on your computer for playback will not infringe (ss 43A, 43B, 111A, 111B). So, streaming a video you legitimately own to yourself is, in most cases, non-infringing. This means, for example, that you are entitled to stream a video you record and encode on your desktop PC for playback on your HTPC.

The problem comes if the communication from the MyTVR servers is done ‘to the public’. This ties in to the second question: who’s doing these acts?

The second problem – who’s making and communicating the recording?

So far, it seems that recording and streaming video to yourself for later playback is not an infringement under Australian copyright law. The central problem here is whether, in MyTVR’s model, it is the client who ‘records’ and ‘communicates’ the free to air broadcasts, or whether it is MyTVR who does both of those. This is critically important – if MyTVR is responsible for doing both these acts, the recording copy will be an infringing copy (because MyTVR are not recording for their own ‘private and domestic use’; the communication may well be ‘to the public’ (see Telstra v APRA, where playing music on hold to subscribers was ‘to the public’); and the incidental temporary copies will also be infringing copies (thanks to a wonderful change to the definition of material form).

We know that the argument that MyTVR are doing the recording on the user’s behalf won’t work – the court in De Garis v Neville Jeffress Pidler Pty Ltd (1990) 37 FCR 99 held that a company that made copies of newspapers for a clippings service could not rely on the fact that their clients were engaged in ‘research or study’ to avoid liability.

This leaves two real arguments that MyTVR could make:

• MyTVR are merely the agents of the user, so any acts are carried out, in a legal sense, by the user;
• MyTVR only provide the facilities – the user is the one who, by pressing ‘record’, actually makes the recording and initiates the communication.

I see no evidence of the former construction in the terms of use. This leaves a relatively uncertain argument about who, really, is carrying out actions when a platform like this is used. This is a difficult question of fact: does MyTVR record programs in response to user requests, or does it merely provide the service through which users can record and transmit their own programs? This question is unanswered in Australian law.

Kylie Pappalardo has addressed a similar question in relation to the Google Book Search project in an unpublished research paper:

[I]f it can be shown that Google’s users are using the service under the fair dealing exceptions for research or study or criticism or review, then Google may be able to argue that its service is simply a part of or an extension of the user’s activities and as such Google is communicating the works for the purpose of research or study or criticism or review. In CCH Canadian Ltd v Law Society of Upper Canada, the Supreme Court of Canada had to decide whether the Law Society of Upper Canada, which maintained the Great Library at Osgoode Hall in Toronto, had infringed copyright because it provided a request-based photocopy service for Law Society members, members of the judiciary and other authorised researchers. Under this ‘custom photocopy service’, legal materials were reproduced by library staff and delivered in person, by mail or by facsimile transmission to requesters. Publishers sued the Law Society, alleging copyright infringement. The Law Society denied liability on the basis that the copies were made for the purpose of research and were therefore covered by the fair dealing defence. In finding for the Law Society, the Chief Justice (who delivered the judgment of the court) stated:

“The fair dealing exception, like other exceptions in the Copyright Act, is a user’s right. In order to maintain the proper balance between the rights of a copyright owner and users’ interests, it must not be interpreted restrictively…The fair dealing exception under s.29 is open to those who can show that their dealings with a copyrighted work were for the purpose of research or private study. “Research” must be given a large and liberal interpretation in order to ensure that users’ rights are not unduly constrained. I agree with the Court of Appeal that research is not limited to non-commercial or private contexts…Although the retrieval and photocopying of legal works are not research in and of themselves, they are necessary conditions of research and thus part of the research process.”

Relevant to the court’s finding was that the library had an access policy which stated that only single copies of materials would be provided for the purposes of research, review, private study and criticism as well as use in legal proceedings, and that any requests for copies in excess of 5% of the volume would be referred to the Reference Librarian and might be refused. Additionally, the service was provided on a not for profit basis. Also relevant was that there were no apparent alternatives to the custom photocopy service – the court considered it unreasonable to expect that patrons would always conduct their research onsite, particularly as 20% of the library’s patrons lived outside the Toronto area. The court held that the availability of a licence is not relevant to deciding whether a dealing has been fair and that it was not incumbent upon the Law Society to adduce evidence that every patron uses the material provided in a fair dealing manner – reliance on a general practice would suffice.

In this decision, the Canadian Supreme Court took a very broad interpretation of the exceptions to copyright infringement (particularly, the exception for research and study). It is unclear whether an Australian court would take such a broad interpretation, and whether it would do so for the less important right to time-shift. There are, however, similarities that can be drawn between MyTVR and the Canadian service; particularly that MyTVR apparently do their best, in their terms and conditions, to ensure that users only use the service to record free to air programs for later personal use. It would seem that MyTVR have an arguable case – strong enough for them to risk a possible infringement suit, although I would not want to take bets on its likely success. It would be likely to come down to a tough examination of the facts – MyTVR would have to be extremely careful, for instance, to create a new copy every time someone requested a particular broadcast, rather than recording everything and parcelling it out later (mp3.com lost when it tried to do that with CDs).

TL;DR: conclusion

Because Australian law is very unclear on this issue, there is no easy way to tell whether use of MyTVR is legal or not. If a court were to find that it was MyTVR who are doing the recording and not each particular client, then MyTVR will be infringing, and so will every customer. Luckily, customers are unlikely to get sued; a broadcaster or a television producer who is sufficiently annoyed will be more likely to sue MyTVR. Unluckily, however, the MyTVR terms of use explicitly say that their customers will be liable if they are sued:

YOU AGREE TO DEFEND, INDEMNIFY, AND HOLD HARMLESS THE MYTVR PARTIES FROM AND AGAINST ANY AND ALL LIABILITIES, CLAIMS, DAMAGES, EXPENSES (INCLUDING REASONABLE ATTORNEY’S FEES AND COSTS), AND OTHER LOSSES ARISING OUT OF OR IN ANY WAY RELATED TO YOUR BREACH OR ALLEGED BREACH OF THESE TERMS OR YOUR USE OF THE MYTVR PLATFORM.

This is particularly worrying. I would be extremely hesitant in signing up to MyTVR without some sort of guarantee of its legality (unsurprisingly, MyTVR provides no such guarantee). In an absolute worst case scenario, MyTVR could gobble up the houses of its users to pay for its legal defence if it is sued for secondary copyright infringement. That’s not a very probable scenario, but their terms of use really do nothing to allay my fears.

Implications for innovation in Australia

Copyright owners have a history of attempting to stifle innovation by suing the developers of new technologies that they fear. In recent times, they lost against the manufacturers of VCRs, which allowed the huge VHS sales and rental industry and opened the door to CD recorders and iPods. They won against filesharing networks – but decentralised protocols like Bittorrent are relatively legally impervious. They won against MP3.com, which would have allowed people to access their music collections anywhere in the world. They won against RealNetworks, who wanted to do the same for DVDs. They even won against Google, to an extent, who wanted to provide millions of people with access to tiny snippets of books and build a real digital library. These are the fronts in an ongoing struggle over control in new technologies.

There’s a lot of uncertainty here, and Australian law has typically not been very useful at providing the leeway that innovators need before we can decide whether their products will be socially beneficial or not. Recent decisions from our High Court, however, give just the slightest hope that that may be changing. It certainly seems to be changing in Canada, with whom we share a relatively strong legal link. The decisions in Sony v Stevens (allowing PlayStation modchips, under now-outdated law) and Channel Nine v IceTV (allowing the creation of electronic program guides) signal some hope that the interests of users and innovators will be given more respect in future Australian cases. It may just turn out that MyTVR is legal in Australia, if it is very careful.

The biggest problem is the uncertainty. It costs a lot for a startup to be able to defend copyright infringement claims; many very interesting ideas get vetoed because of the legal risk. This is a huge problem – a lot of innovation exists in the grey areas where we simply don’t know how the law should apply – at a time when we certainly don’t have the information to have a public debate (who could have told how useful VCRs would have been in 1980? Or photocopiers in 1970?) These legal decisions are extremely difficult. We have started to realise that innovators need some room to move, but we really aren’t there yet. This is one of the greatest challenges facing copyright law in the immediate future – how will we be able to innovate in areas where we can’t even conceptualise whether our actions should be permitted or not?

I will certainly be watching MyTVR with interest; if they manage to pull it off, it will certainly change the way we can access free to air; more importantly, however, their pioneering legal steps provide the incremental certainty that the next innovator needs.