Nine Network Australia Pty Ltd v Australian Broadcasting...

, [1999] FCA 1864 (1999)

48 IPR 333, 1999 WL 33124165

 Opinions

Hill J
The issues for decision
In what is copyright alleged to exist?
The proposed defences of Channel Two if copyright subsists
Balance of convenience
Discretionary matters

Nine Network Australia Pty Limited Applicant

and

Australian Broadcasting Corporation Respondent

Docket Number(s):N 1435 OF 1999

Federal Court of Australia

 
New South Wales District Registry
 
22 December 1999, 23 December 1999, 23 December 1999.
Sydney

Hill J

A Bannon SC; D Kell for the Applicant

Gilbert and Tobin for the Applicant
J M Ireland QC; R Cobden for the Respondent
Australian Broadcasting Corporation for the Applicant

Hill J
1  Around 9.00 pm on 31 December 1999, and especially around 12 midnight and half an hour thereafter into the
year 2000, an event will occur in the City of Sydney focussed particularly on Sydney Harbour and the Harbour
Bridge. There will be fireworks accompanied by music displays on the Harbour Bridge. Eighteen barges will carry
large lantern figures of sea creatures promenading around the harbour. It promises to be an event of significance
to the city, to Australia and, indeed, to the world.

2  The event is being financed by the Council of the City of Sydney which is not at least at present, a party to the
current proceedings. To obtain some contribution to the cost of this and previous New Year events the Council
entered into an agreement with Nine Network Australia Pty Limited (Channel Nine), the commercial television
broadcaster which through its network and affiliated TV stations effectively covers in its “footprint” mainland
Australia and Tasmania. That agreement takes the form of a letter written by the Council of the City of Sydney
to Channel Nine and concerned New Year celebrations in December 1997 through to December 2000. Under it
Channel Nine is required to contribute an amount to the costs in accordance with a formula in the letter. According
to the evidence before me, the estimated contribution by Channel Nine to the 2000 event is in the order of $450,000.
The total cost of the event is estimated to be approximately $3 million.

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Nine Network Australia Pty Ltd v Australian Broadcasting..., [1999] FCA 1864 (1999)

3  In consideration of this contribution the city named Channel Nine the official television broadcaster and granted
to it the exclusive right to record all performances, the fireworks spectacular and other entertainment organised
by the city and connected with the event, and televise the coverage it recorded throughout Australia and Papua
New Guinea.

4  The respondent Channel Two is the public television broadcaster in Australia. It has made arrangements with an
international consortium of television stations led by the BBC for a worldwide television coverage of some 25 hours
illustrating the events which will occur in various countries throughout the world to celebrate the arrival of what at
least most people refer to as the new millennium. It is contemplated that that coverage will include a coverage of the
happenings on Sydney Harbour. A confidential exhibit details the program as presently scheduled. The Australian
segment goes of course beyond Sydney and includes other state capitals, although Channel Two proposes to film
the entire spectacle in Sydney Harbour and parts of that will form the international coverage which Channel Two
proposes to broadcast in Australia and which will be broadcast internationally throughout a large part of the world
to what could be no doubt an audience of millions.

5  The fact that both channels propose to televise (Channel Nine the whole and Channel Two at least part thereof)
the Sydney celebrations is not something that has only become known in the past few days. It has been known by
the Council, Channel Nine and Channel Two at least since 16 August 1999 when Channel Nine sought from the
Council the international television rights for its coverage presumably to block Channel Two passing what Channel
Nine in the letter described as “stolen coverage” onto the BBC led international TV consortium of which Channel
Two was to be a member.

6  It is also clear that the shape, if I may call it that, of the event was settled by that time, though subject no doubt to
fine tuning which fine tuning may well continue until 31 December. However it took until 13 December of this year
for Channel Nine to commence proceedings in this Court. It seeks now, but a few working days before the event
is to take place, urgent interlocutory relief restraining Channel Two from broadcasting in Australia a television
broadcast featuring what are referred to as the bridge face device, the bridge word design, the Sydney Harbour
lanterns and the fireworks production at 9.00 pm and midnight, subject to a proviso that any conduct constituting
a fair dealing under s 42 of the Copyright Act 1968 (“the Copyright Act”) would not be prohibited.

7  The original threat made by Channel Nine went much further than the current proceedings do. Indeed they initially
seemed to want to restrain Channel Two filming any of these events for inclusion in an international broadcast,
although it is clear that Channel Nine's rights, such as they are, extend only to Australia and Papua New Guinea
and no further However that has now been abandoned.

8  Channel Nine base its claim for relief on copyright rights which it alleges vest in the City Council in each of these
“works” of which it claims to be the exclusive licensee for TV broadcasts in Australia.

The issues for decision

9  There is no dispute between the parties as to the way the matter of interlocutory relief is to be dealt with. The
applicant to succeed must show that there is an arguable issue to be tried. Practically that means here that Channel
Nine must show that it is arguable that it is the exclusive licensee of rights of copyright otherwise vested in the City
Council, that the broadcast by Channel Two as contemplated would be an infringement of those rights and that
any defences Channel Two may have are not good. Next, Channel Nine must show that the balance of convenience
favours the granting of an injunction restraining Channel Two as public broadcaster from broadcasting parts of the
event throughout Australia. In looking at the balance of convenience the question of the strength of the arguable

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case will be of relevance. The public interest may also be a matter of importance. Finally, it will be relevant to
consider whether any discretionary matters such as delay disentitle Channel Nine to relief.

In what is copyright alleged to exist?

10  In considering whether there is an arguable case for Channel Nine, it is necessary first, to outline what it is in
which it is claimed that copyright subsists and of which Channel Nine is said to be the exclusive licensee from the
City Council.

11    First, copyright is said to exist in a drawing as an artistic work of the Sydney Harbour Bridge on which is
superimposed a face or faces (“the bridge face device”). The idea is not unlike what has happened in previous years
although on the evidence as it presently stands the drawing has sufficient originality, so far as that arguably can exist
in the whole drawing which includes a representation of the Sydney Harbour Bridge. That drawing is ultimately to
be manifested by the erection of a scaffolding or support on the actual Sydney Harbour Bridge to which are to be
attached light tubes in the shape of the face which light up at the appropriate time, so far as I can understand, in a
sequence of lights. It is claimed that copyright exists in the combination of the scaffolding and lights as a sculpture
or work of artistic craftsmanship.

12  Next, there is said to be an original artistic work comprising a drawing again of the Sydney Harbour Bridge and
showing in copperplate writing the word “Eternity” superimposed upon the bridge (“the bridge word design”). The
copperplate version of the word emanates from a Mr Stace, who during the 1960s and 1970s as a result of a religious
conversion and recovery from alcoholism secretly wrote the word in that script on footpaths throughout the city.
That design, if I can call it that, is again, to be erected through scaffolding or supports on the bridge to which are
attached light tubes which when lit will show the word “Eternity” in its copperplate script superimposed on the
bridge. This is likewise claimed to be a sculpture or work of artistic craftsmanship in which copyright subsists.

13  The third matter covers an original drawing of 18 stylised and recognisable sea creature shapes, for example,
dolphins. Copyright is claimed to exist in these drawings as an artistic work. In the meantime, from the drawings
have been created 18 3-dimensional lanterns which, mounted on barges, are to proceed around the harbour or parts
of it. They are claimed to be sculptures or otherwise works of artistic craftsmanship in which copyright subsists.

14  Finally, copyright is claimed to subsist in what are said to be dramatic works. Underlying the claimed copyright
interests is what may be called a script or a schedule of what is to happen on the harbour at various times. The so-
called script sequentially details the particular fireworks in the order in which they are to be ignited in time or rhythm
relationship to music (non-original) which is to accompany the fireworks show. There are other combinations which
it is unnecessary to detail in which it is said copyright subsists.

15  Assuming copyright can exist in any or all of these so called works, Channel Nine has at least at the interlocutory
stage, shown that what might be called the mechanical requirements of copyright, such as, residence, employment
of the originator and assignment are satisfied so that each of the four matters could give rise to copyright rights
subsisting in the Council of the City of Sydney.

16  I should say at this stage that although I have been provided with quite extensive written submissions on various
legal matters time neither permitted all those matters to be agitated in oral argument or for that matter to form
the subject of this judgment. In part that is because Channel Two accepts that there are arguable issues involved,
although the strength of those arguable issues is a matter of some dispute between the parties.

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Nine Network Australia Pty Ltd v Australian Broadcasting..., [1999] FCA 1864 (1999)

17    For Channel Nine its strongest case of copyright is with the drawing of the sea creatures and the lanterns
which reproduce those drawings in a 3-dimensional form. The drawings are on any view of the matter original and
copyright exists, in my view, in those drawings and in the 3-dimensional form the drawings take being, at the least,
works of artistic craftsmanship.

18    In my view, the weakest copyright case for Channel Nine, on the other hand, is the claimed copyright said
to exist in the dramatic work originating from the schedule dealing with the fireworks display and what written
submissions of senior counsel for Channel Nine referred to as “the fireworks production”. As I understand it, each
type of firework produces a particular effect. Randomly set off the effect of those fireworks might be chaotic. It
takes skill and artistry, perhaps, to determine the order in which particular kinds of fireworks are set off and to
produce the spectacular effect which is hoped for to meet the occasion. The relationship between the music, its beat
or rhythm, and the exploding fireworks is no doubt also of importance.

19  Having said that I have difficulty in the conclusion that if the schedule is itself followed precisely, because that
would have to be a pre-requisite of the copyright protection, (it is certainly contemplated that that will be the case
although I suspect that fine tuning may still be possible between now and 31 December) the exploding fireworks
display is a dramatic work within the definition of that expression in s 10(1) of the Copyright Act. That section
defines dramatic work to include:
“(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.”

The expression of course has its ordinary English meaning in addition to the defined meaning to which I have
referred.

20  The question really is whether the setting off of the fireworks spectacular, ephemeral as it is, is a “dramatic work”
in the ordinary sense of those words. It is not a matter upon which I have formed a concluded view but there are
certainly difficulties it seems to me with the argument. It is or will be if the matter goes to trial the case for Channel
Nine, that because the fireworks show alone or in combination with other events such as the barge display is in the
nature of a series of composed events and has dramatic unity and interest, it is therefore a dramatic work.

21  There is also the question whether the ultimate fireworks show is really a material form of what was planned. The
requirement that it be scripted, directed and staged, assuming Sydney Harbour to be a gigantic outdoor stage for
the present purposes may more readily be accepted to the extent that it is planned, but as I have already suggested
there may be many a slip between the actual plan and the ultimate performance. It can be argued not to involve
improvisation: Karno v Pathé Frères Limited (1908) 24 TLR 588 at 590-591 affirmed on appeal (1909) 25 TLR 242
and see Australian Olympic Committee Inc v The Big Fights Inc [1999] FCA 1042 (3 August 1999) per Lindgren J
at para 42.

22  It is, one would think, common place in at least a half of the present decade that firework shows with music are
planned. It has never been suggested to my knowledge, and there is no reported case in which the matter has been
subjected to legal analysis which has suggested that copyright subsists in a fireworks show set to music just because
the sequence of events is scripted. That does not mean that copyright might not exist. It may merely be the result
either of difficulties of enforcing the non filming of such events or it may be that no one has thought deeply about
the issue. At the heart of the problem may well be that copyright is a monopolistic right existing not to protect ideas
as such but the physical manifestation of some original literary, artistic or dramatic work.

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