iiNet: The History of “Authorization” and “sanction, approve, countenance”


iiNet: The History of “Authorization” and “sanction, approve, countenance”
– The missing mental element of the primary infringer

Update 2012:: my notes on Authorization have become a paper: Scott, B, Authorisation under copyright law and “the nature of any relationship” (2011) 22 AIPJ 172. (Although it should read AuthoriZation, but changed because of Thompson Reuter’s house style :-/

Exposure draft 1 September 2011.

In the 1987 decision of Hanimex, Gummow J commented at 285 that ‘[t]he evolution of the meaning of “authorisation” in the 1911 Act and the 1968 Act has pursued perhaps an even more tortuous course than the doctrine of contributory infringement in the United States’. The Court concurs with such statement, and it has become even more apt in the years following that decision. Despite the legislature’s attempt to simplify the relevant considerations pursuant to the Copyright Amendment (Digital Agenda) Act and s 101(1A), the law of authorisation has continued to grow more complicated and unwieldy, with a litany of competing and contrasting considerations, and with one statement of principle frequently matched with a contradictory one. The authority on authorisation has become a mire. 

Cowdroy J  at first instance para 358

Summary

The City of Adelaide case is not authority for including “permit” within the ambit of the meaning of “authorize”.

The history of the words “sanction, approve, countenance” show that there is more to an authorization than merely the acts of the person alleged to be authorizing.   In addition to those acts, the mental state of the person carrying out the primary infringement is a necessary ingredient.  In particular, the primary infringer must have some belief that the authorizer has the right or power to grant such an authorization.  Acknowledging this component of “authorization” will make the various decisions much more sensible, and less miresome.

[While not argued here, we suspect that for this reason the decision of the judge at first instance should be followed in the iiNet case.  That is, in the minds of the users there is no possibility for them to have a mental state that iiNet is authorising them.  Cowdroy J’s focus on provision of the means of infringement is identifying the basis on which such a mental state can be supported.   If this mental state in the primary infringer is conceded, Cowdroy’s approach is not inconsistent with s 101(1A). ]

Note: this draft is made available for comment.

Background

The High Court has recently granted special leave to appeal in Roadshow and others v iiNet (the iiNet case). This case is concerned with the liability of Internet service providers for authorizing infringements which occur through the use of the Internet service provider’s infrastructure. Under the law relating to authorization a second person can be liable for an infringement carried out by a first person in if that second person has “authorized” the first person’s infringement. The concept of authorization has been treated on many occasions in Australian case law. Its history is summarised by Gummow J in the Hanimex case. In particular, the High Court in the Moorhouse case held that a university library, by locating a photocopier near to racks of shelving containing books, some of which were still subject to copyright, had authorized infringements in relation to those works which occurred when people photocopied then using the photocopiers which had been so located.

In order for authorization to be made out, a “primary” infringement must be proven.  That is, simply saying to someone “go and make a copy of this” is not an infringement if they do not then go and copy.  However, if they do go and copy, then there are two infringements – the primary infringement, being the making of a copy, and the authorization of that primary infringement.  In the iiNet case this primary infringement is that of “making available online”. When a person “makes available online” a copy of a copyright work that “making available” itself constitutes an infringement.  In this case, the infringement is of the right to communicate to the public (defined in section 10 of the Act). Is in the lower courts this infringement has been established by users using peer-to-peer software and having the relevant copyright work within a particular folder for sharing by their peer to peer software.

Authorization isn’t – where is “sanction, approve, countenance”?

Unfortunately, in the Act, the word “authorize” has been interpreted to mean something other than “authorize”.   Rather, courts have read into the term “authorize” the concepts of “sanction, approve, countenance”, based on some words of Gibbs and Jacobs JJ in Moorhouse.

Moorhouse:  In that case Gibbs J says:

” The word “authorize”, in legislation of similar intendment to s. 36 of the Act, has been held judicially to have its dictionary meaning of “sanction, approve, countenance”: Falcon v. Famous Players Film Co. (1926) 2 KB 474, at p 491 ; Adelaide Corporation v. Australasian Performing Right Association Ltd. [1928] HCA 10; (1928) 40 CLR 481, at pp 489, 497 .” (Per Gibbs J at paragraph 10).

In addition Jacobs J says:

It is established that the word is not limited to the authorizing of an agent by a principal. Where there is such an authority the act of the agent is the act of the principal and thus the principal himself may be said to do the act comprised in the copyright. But authorization is wider than authority. It has, in relation to a similar use in previous copyright legislation, been given the meaning, taken from the Oxford Dictionary, of “sanction, approve, countenance”. See Falcon v. Famous Players Film Co. (1926) 2 KB 474 which was approved in Adelaide Corporation v. Australasian Performing Right Association Ltd. [1928] HCA 10; (1928) 40 CLR 481 . I have no doubt that the word is used in the same sense in s. 36 (1). It is a wide meaning which in cases of permission or invitation is apt to apply both where an express permission or invitation is extended to do the act comprised in the copyright and where such a permission or invitation may be implied. Where a general permission or invitation may be implied it is clearly unnecessary that the authorizing party have knowledge that a particular act comprised in the copyright will be done. (per Jacobs J at paragraph 9)

The third judge, McTiernan A.C.J. did not write a separate judgment, but agreed with the others. So this wording is essentially unanimous.  I note here that no dictionary I have gives “sanction, approve, countenance” as the meaning of authorize.

Adelaide Corporation: However, neither  Falcon nor Adelaide Corporation say that “authorize” has its ordinary dictionary meaning of “sanction, approve, countenance”.   In  Adelaide Corporation v  Australian Performing Right Association Limited, the  Falcon case was referred to in the dissenting judgment of Isaacs J who adopted something very similar to, but different from, the Gibbs/Jacobs  forumla:

“For the word “cause,” which had been given a restricted meaning, there was substituted the word “authorize,” and that word is now understood as importing the sense of “sanction, approve and countenance” (see Falcon v. Famous Players Film Co.).” [my emphasis – as we will see below Isaacs J is accurately quoting Falcon, whereas Gibbs/Jacobs JJ are not.]

Higgins J (part of the majority, but in a separate decision) also refers to the formula but in a contra-positive way .  Higgins J does not cite the Falcon case and does not explicitly adopt the wording as a test.  What Higgins J says is:

“This action has, by consent, been tried on the motion affidavits; and there is not the slightest evidence of any “sanction, approval or countenance” given by the Corporation to the performance of the song in question.” [my emphasis]

The other two judges in the majority in Adelaide Corporation (five judges heard the case, so even a minority so much as referred to the sanction, approve and countenance wording) base their discussion on the Performing Right Society v. Ciryl Theatrical Syndicate (1924) 1 K.B. ignoring Falcon and ignoring the “sanction, approve, countenance” wording.  Indeed, this is not altogether surprising because the focus of the judges in the City of Adelaide case was whether the Corporation had “permitted” the relevant activity.  Gibbs J in Moorhouse says Adelaide Corporation treated “authorize” and “permit” as synonymous:

“It can also mean “permit”, and in Adelaide Corporation v. Australasian Performing Right Association Ltd. [1928] HCA 10; (1928) 40 CLR 481 “authorize” and “permit” appear to have been treated as synonymous. “

However, this appears to be simply wrong.  This is discussed in the end note below.

It is hard to see that Adelaide Corporation is authority for Gibbs/Jacobs JJ’s statement.

Falcon: So, what of  Falcon?  That case references the”dictionary” wording as follows:

It has been said, and I think the comment is not an unfair one, that the use of that word “authorise” adds nothing to the definition, because, strictly speaking, the sole right of performance must necessarily include the right to authorize performance. But when the definition of “copyright” is read in connection with that of “infringement,” I think it becomes fairly apparent that the object of introducing the word “authorise” was to get rid of the effect of certain decisions, of which  Karno v. Pathé Frères  was the most recent, in which it was held upon the language of earlier statutes that a defendant who for reward gave permission to a third person to represent a play in breach of the owner’s copyright did not “cause it to be represented,” unless the person so representing it was the servant or agent of the defendant. In the present statute that language has been deliberately dropped, and for the word “cause” has been substituted the word “authorise”; and the decision of Tomlin J. in  Evans v. Hulton and the dictum of Buckley L.J. in  Monckton v. Pathé Frères  both clearly indicate that in the opinion of those learned judges the present expression is to be understood in its ordinary dictionary sense of “sanction, approve, and countenance.” If that is the true view I think McCardie J. was, upon the materials before him, amply justified in coming to the conclusion that the first three defendants had infringed the plaintiff’s sole right to authorize the performance of the play. For these reasons I am of opinion that the appeal should be dismissed. (per Bankes LJ at 490)

That is, in comments by a single judge  of the three judges that heard the case).  Note also here that the words used are “sanction, approve and countenance” (my emphasis).  These were faithfully reproduced in Adelaide Corporation, but were transformed into “sanction, approve, countenance” in Moorhouse.    The disjunctive form has survived in the  iiNet case – “The word authorise, when used in s 101, has its dictionary meaning of sanction, approve or countenance.” (per Emmett J at paragraph 24, emphasis in original).

Moreover, the Falcon case also had this to say about “authorize”:

For the purposes of this case it appears to me that to “authorize” means to grant or purport to grant to a third person the right to do the act complained of, whether the intention is that the grantee shall do the act on his own account, or only on account of the grantor; and that construction of the word “authorize” seems to have been the one adopted by Buckley L.J. in Monckton v. Pathé Frères , where he held that the seller of a gramophone record authorizes the use of the record, and by Tomlin J., who in  Evans v. Hulton held that a person who sold to a publisher serial rights in stories written by the plaintiff authorized the printing and publication of them. (per Atkin LJ at 499)

Evans: The reference to Evans v Hulton [1924] All E.R. Rep 224 appears to be the ultimate origin of the “sanction, approve, countenance” wording.  In Evans v Houlton the plaintiff, Evans, ghost wrote an autobiography of a fellow, Zeitun, based on an agreement that Zeitun would find a buyer for the story and would share the proceeds of any sale.  Zeitun told the plaintiff that he couldn’t find any buyers, then found a buyer, Hulton.  Hulton started publishing the story and Evans sued Hulton and Zeitun, claiming, in part, that Zeitun had authorised the publication.  The court found that, by providing the manuscript to the publisher Zeitun had authorised its publication.  In that case Tomlin J didn’t say that authorisation should have its meaning in the dictionary.  What he said was:

“It has been ingeniously argued that in the subsection “to authorise any such acts” means to sanction their being done by the servant or agent of the person affecting to give the authority on his behalf, and that there is no infringement of a copyright when that person to whom authority is given is not the servant or agent of the person affecting to give it.  In my judgment, this is to put too narrow a meaning on the word, which is defined in the Oxford Dictionary as meaning, in connection with the authorisation of acts, “to give formal approval to, to sanction, approve, countenance.” In my opinion, where a man sells the right in relation to a manuscript to another with the view to its production, and it is in fact produced, both the English language and common sense requires it to be held that that man “authorised” the printing and publication.” (per Tomlin J, Evans v Hulton [1924] All E.R. Rep 224 at 225)

I note here that Tomlin includes “give formal approval to”.  It is also important to note that Tomlin J gives the dictionary “meaning”.  in Falcon, Bankes LJ left out the first component, relating to the giving of formal approval to.  However, in Falcon Bank LJ doesn’t say this is the meaning.  Rather, he says that it has it’s dictionary sense of “sanction, approval and countenance”.   This might be considered a reasonable interpolation of the actual meaning given by Tomlin J.   Presumably, Bankes LJ felt the addition of “and” was sufficient to read out “give formal approval to” when proposing the formula he did.   Isaacs’ wording in Adelaide Corporation is consistent with this, referring to the dictionary “sense”.

The whole of the court in Moorhouse has purported to give “authorize” its dictionary meaning and then failed to do so.  The Moorhouse court adopted not even the dictionary “sense” averted to in the authorities cited, but  rather, have substituted a new formula entirely – that of “sanction, approval, countenance” (into which later judges have read “or”).  This almost completely upends the earlier authorities cited in support.

Monckton:  Falcon refers to the dictum of Buckley J in this case.  The judgment of Buckley J does not use any of the Moorhouse words at all, let alone in explaining the meaning of authorization.  Nor does it refer to ordinary or dictionary meaning.  In the case, the defendants legally manufactured a quantity of records and imported them into England.  Before they sold the records the Copyright Act 1911 came into force vesting in the composer of the works recorded on the records a right to perform the works recorded.  The court held that the sale of the records was an infringement of the right to authorize the performance of the works.  This seems to be the passage that Falcon is referring to:

“…it seems to me that the Act has given to the owner of the new and extended copyright as defined by the Act the sole right to authorize any one to produce the musical work (e.g., by the user of the record: s. 1, sub-s. 2), and has made it an infringement of his rights that a person should sell a record which to the knowledge of the seller infringes the sole right of the composer to produce the work by the use of the record: s. 2, sub-s. 2.. (per Buckley LJ, Monckton v. Pathé Frères [1914] 1 K.B. 395 at 405, Vaughan Williams L.J. “entirely agree[ing]”)

That is to say that what Bankes LJ is stressing in Falcon is the mental state of the primary infringer.  However, the Moorhouse decision has only taken part of the Falcon meaning.  Indeed, while the Moorhouse case does identify the need of a mental element, it is placed wholly on the authorizer.

Conclusion – The Primary Infringer’s State of Mind as the Missing Mental Element

What all of these cases establish is that the absence of service or agency is not intended to defeat a claim of authorization or rather, the purpose of the inclusion of authorization under the 1911 Act was to overcome a particular limitation found in the case law.  However, for all of them, the background of the discussion is one in which the primary infringement is a natural, if not necessary, consequence of the action of the authorizer and that this is known or understood by the primary infringer.   In Monckton, it was the expectation of both the seller and the purchaser that the record would be played after it was purchased.  In Hulton, it was the expectation of both the seller and the purchaser  that the manuscript would be published.  In Falcon,  it was the expectation of both the seller and the purchaser  that  the films would be shown in the theatre.  Further, in each case it was reasonable for the purchaser to believe that the seller had the power to allow the purchaser to do the relevant act.  [As an aside, it is likely that Moorhouse can be fit within this requirement, Cooper possibly, but iiNet unlikely]  Consider a thought experiment in which each of these cases was re-run, except that the seller was selling to a purchaser under a common understanding that they would be broken into its elements for recycling (to recover the paper in the manuscript, the shellac of the records and so forth).  Had the purchaser turned around after the sale and then published, played and so forth it is hard to imagine an authorization by the seller would be found in these cases, despite the seller having done the same acts.

In each of these cases there is not only a relationship between the authorizer and the primary infringer, there is a common understanding.   This is consistent with the explanation of the purpose of the wording being to catch third parties who are not servants or agents.  The summary of the plaintiff/respondent’s argument (not part of the judgment) preceding Falcon casts this into relief, as it explains:

“…[in  Evans v. Hulton], a person, who sold to a firm of publishers the serial rights in certain stories written by the plaintiff, was held to have infringed the copyright by authorizing the printing and publication. Tomlin J. there adopted the definition of the word “authorise” given in the Oxford Dictionary, “To give formal approval to, to sanction, approve, countenance.” That word is not, like the word “cause,” limited to the giving of directions to a servant. A man who has no legal right to do an act himself may authorize another to do it, if that other believes that he is in a position to give him the legal right to do it, which was the case here.” (at 486) [my emphasis]

The highlighted wording is significantWhile this wording does not form part of the judgment, it demonstrates the assumption of the copyright owner in pursuing the case.  Therefore, if the court is to give to “authorize” it’s ordinary, contemporaneous meaning, these submissions, coming as they are from the copyright holder, are relevant as evidence of that meaning.

This wording also identifies the common, but unstated thread running through all of these cases on which the meaning of “authorization” is based.    That is, to say, whether  a person A “authorizes” another person B to do an act is not purely a matter of the conduct of A.  In addition to the conduct of A, B must have a particular state of mind.  B must have some perception not only of authority flowing from A, but also of A’s right or ability to grant such an authority.   This is consistent with the “ordinary” meaning of authorization.

[ It is this mental element which is the reason Cowdroy J’s approach is likely the right one.]

End Note: Did Adelaide Corporation treat “authorize” and “permit” as synonymous?

The Adelaide Corporation case was concerned with section 2(3) of the Imperial Copyright Act (which had been adopted as law in Australia by our 1912 Act).   The subsection (3) reads:

“Copyright in a work shall also be deemed to be infringed by any person who for his private profit permits a theatre or other place of entertainment to be used for the performance in public of the work without the consent of the owner of the copyright, unless he was not aware, and had no reasonable ground for suspecting, that the performance would be an infringement of copyright.”

The Act uses the word “permits”, not authorizes.  The question put to the court was whether section 2(3) had been breached, so the court was not asked to form an opinion on the meaning of “authorizes”.   Now, reviewing each of the judges’ references to “authorize” in turn:

Knox CJ does not refer to authorize.

Gavan Duffy and Starke JJ observe:

Inactivity or “indifference, exhibited by acts of commission or omission, may reach a degree from which an authorization or permission may be inferred. It is a question of fact in each case what is the true inference to be drawn from the conduct of the person who is said to have authorized the performance or permitted the use of a place of entertainment for the performance complained of” (Performing Right Society v. Ciryl Theatrical Syndicate).

However, this is not to treat them as synonymous.  Rather, they are quoting a decision of Bankes LJ in Ciryl.  In that case:

The two questions to be considered were whether there was any evidence that the appellant (1.) authorized the performance of these musical works by the band of the theatre on the particular days or (2.) permitted the use of the theatre for his own private profit for the performance of the works on those occasions. (per Bankes LJ Performing Right Society v. Ciryl Theatrical Syndicate at 8)

So, it was appropriate for Bankes LJ to phrase things in this way because both issues were put before the court in that case.  Gavan Duffy and Starke JJ are simply quoting the wording of Bankes LJ (the quoted section appears in the judgment of Bankes LJ).

The only other reference to “authorizes” in the judgment of Gavan Duffy and Starke JJ is about the effect of a clause:

“Now, the clause does not give the Corporation any control over J. C. Williamson Ltd. or Hislop or over concerts given by them in the Town Hall: all it authorizes is a termination of the contractual relationship constituted by the letting agreement.”

Here authorization is not being used in its Copyright Act sense.

Issacs J refers to authorize (see quote above), but only for the purpose of illustrating the meaning of permits (and thereby distinguishing them):

“For the word “cause,” which had been given a restricted meaning, there was substituted the word “authorize,” and that word is now understood as importing the sense of “sanction, approve and countenance” (see Falcon v. Famous Players Film Co.[3]). Along with that significant change, there was inserted the sub-section now under consideration, which is a necessary complement in the scheme of protection. It extends the previous limited responsibility of proprietors of halls who merely hire them out for remuneration without being directly connected with the performance itself. The gist of the sub-section is that such a person who “permits” the performance of a copyright piece is to all intents and purposes as much an infringer of the copyright by providing for gain to himself the necessary means of infringement as if he directly produced the performance, unless he proves that “he was not aware, and had no reasonable ground for suspecting” that the performance would be an infringement.

Like the new word “authorize,” the word “permits” is of very extensive connotation. Having international effect, it should not be restricted to narrow limits. Going to the dictionary, as did Buckley L.J. (as he then was), for the former word, we find that in the Oxford Dictionary the primary meaning of “permit” is: “to allow, suffer, give leave; not to prevent.”

Neither of these references treats “authorize” and “permit” as synonymous.  Indeed, it assumes them to have distinct meanings.

Higgins J refers to “authorize” as follows:

“As Bankes L.J. said in the Ciryl Case, the indifference was “not of a kind to warrant the inference of authorization or permission. It was the indifference of one who did not consider it his business to interfere, who had no desire to see another person’s copyright infringed, but whose view was that copyright and infringement were matters for” others (here J. C. Williamson Ltd.) “to consider.” The essence of the position is that J. C. Williamson Ltd., had, on the existing facts, control of the performers as to what they should sing, whereas the Corporation had none.”

Again, this is merely a quote of Bankes LJ in Ciryl.  Higgins J also says:

“As the Supreme Court have also pointed out, to prove permission it is not enough to show that the Corporation gave a mere general authority for the performance of musical works, a “vocal concert”: it must be proved that permission was given to perform the particular works in question (and see per Atkin L.J. in Performing Right Society v. Ciryl Theatrical Syndicate). Where is there even a semblance of proof of such permission?”

But again, this is not a reference to authorization in the Copyright Act sense.  Indeed, it distinguishes the “giving of authority” and permission.  A review of Cyril, the case cited, also reveals a repeated reference by their Lordships to both “authorize” and “permit” as separate concepts, with no attempt to identify them as a single concept.  One can concede that “indifference, exhibited by acts of commission or omission, may reach a degree from which an authorization may be inferred.” and that “indifference, exhibited by acts of commission or omission, may reach a degree from which a permission may be inferred” but this does not justify a conclusion that “authorize” and “permit” are synonymous – just as tables and dogs both have four legs, but this does not make tables dogs.

Adelaide Corporation is not authority for identifying “authorize” and “permit”.  Indeed, both it, and Cyril, the case it primarily cites, are authority for distinguishing them, especially given that the legislature chose to use “permit” in section 2(3), and “authorize” in section 1(2).

Second End Note Cyril and iiNet

As an aside here, the Cyril case was concerned with whether the manager of a corporation had authorized the infringement by the corporation’s players of a particular work.  At first instance both the corporation and its manager were found to have authorized.  However, the manager brought an appeal against the decision, and it was his appeal which their Lordships were considering in Cyril.  In many respects Cyril is very similar to the iiNet decision in that the manager may have had the relevant elements set out in section 101(1A) (or at least to a similar level as iiNet has of making available infringements), yet he was still found not to have authorized the performance based on principles of whether, as an officer, he had made the tort his own.

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