FEDERAL COURT OF AUSTRALIA

 

Audio-Visual Copyright Society Limited v Foxtel Management Pty Ltd

(No 2) [2003] ACopyT 3



COPYRIGHT – Copyright Tribunal – application to Tribunal for issue of summonses to corporations to produce documents – form of summons – whether a summons addressed to corporation by its ‘proper officer’ to give evidence and to produce documents would conform to subs 167(2) of Copyright Act 1968 (Cth).



Copyright Act 1968 (Cth)  s 167(2)

Copyright Regulations 1969 (Cth) reg 44, Sch 1, Form 2



Penn-Texas Corporation v Murat Anstalt (No 1) [1964] 1 QB 40 cited

Re Lindsay Toole & Co (Wool) Pty Ltd (in liq) (1966) 84 WN (Pt I) (NSW) 318 cited

Smorgon v Australia & New Zealand Banking Group Ltd (1976) 134 CLR 475 cited

Re Rothwells Ltd (No 2) (1989) 7 ACLC 576 cited

Fieldhouse v Commissioner of Taxation (1989) 25 FCR 187 cited

Re BPTC Ltd (in liq) (1992) 8 ACSR 533 approved

McDonald v Australian Securities Commission (No 2) (1994) 120 ALR 515 cited

Deveson v Australian Broadcasting Tribunal (1991) 32 FCR 124 discussed

Penn‑Texas Corporation v Murat Anstalt (No 2) [1964] 2 QB 647 followed

Rochfort v Trade Practices Commission (1982) 153 CLR 134 followed

Concrete Constructions Pty Ltd v Plumbers and Gasfitters Employees’ Union (1987) 15 FCR 31 cited

Air Pacific Ltd v Transport Workers Union of Australia (1993) 40 FCR 1 cited


AUDIO-VISUAL COPYRIGHT SOCIETY LIMITED v

FOXTEL MANAGEMENT PTY LIMITED & Ors


CT 3 of 2002

 

LINDGREN P

5 DECEMBER 2003

SYDNEY

IN THE COPYRIGHT TRIBUNAL

CT 3 OF 2002

 

BETWEEN:

AUDIO-VISUAL COPYRIGHT SOCIETY LIMITED

APPLICANT

 

AND:

FOXTEL MANAGEMENT PTY LIMITED

FIRST RESPONDENT

 

OPTUS VISION MEDIA PTY LIMITED

SECOND RESPONDENT

 

AUSTAR ENTERTAINMENT PTY LIMITED

THIRD RESPONDENT

 

TRIBUNAL:

LINDGREN P

DATE OF ORDER:

1 DECEMBER 2003

WHERE MADE:

SYDNEY

 

 

THE TRIBUNAL ORDERS THAT:

 


1.         The applicant’s motion be adjourned part-heard to 16 December 2003 at 10:15 am.

IN THE COPYRIGHT TRIBUNAL

CT 3 OF 2002

 

BETWEEN:

AUDIO-VISUAL COPYRIGHT SOCIETY LIMITED

APPLICANT

 

AND:

FOXTEL MANAGEMENT PTY LIMITED

FIRST RESPONDENT

 

OPTUS VISION MEDIA PTY LIMITED

SECOND RESPONDENT

 

AUSTAR ENTERTAINMENT PTY LIMITED

THIRD RESPONDENT

 

 

TRIBUNAL:

LINDGREN P

DATE:

5 DECEMBER 2003

PLACE:

SYDNEY

REASONS FOR DECISION (No 2)

(Motion for issue of summonses for production)

1                     By notice of motion filed on 20 November 2003, the applicant, which is commonly referred to as ‘Screenrights’ and to which I will refer by that name, sought an order directing that summonses be issued to each of the respondents (‘the Retransmitters’) in the three forms annexed to the notice of motion or in such other forms as the Tribunal may direct.  These reasons for judgment give one reason why I refused to grant leave to Screenrights to issue summonses in the forms annexed to the notice of motion.  Other issues raised by the motion have been debated, I adjourned the motion part-heard to 16 December 2003.  On that date it may be dismissed by consent and ‘replaced’ by a fresh motion seeking the issue of different summonses to the Retransmitters.

2                     The general nature of the substantive proceeding has been explained in reasons for judgment (No 1) ([2003] ACopyT 2).  I will not repeat that explanation here.

3                     The Retransmitters are bodies corporate.  Each proposed form of summons is therefore addressed to a body corporate.  Each commences as follows:

‘1.        You are summoned to attend before the Copyright Tribunal (Tribunal) at the Law Courts Building, Queens Square, Sydney on [                        ] and on any other days as required until the hearing of proceedings in relation to the above reference [sic – application] is completed or you are released from further attendance.

2.         You are required to attend before the Tribunal to give evidence in the proceedings.

3.         You are required to bring with you and produce the following documents or articles or documents and articles:  ...’ (emphasis in original)

4                     This form follows Form 2 in Schedule 1 to the Copyright Tribunal (Procedure) Regulations 1969 (‘the Regulations’).  Subregulation 44(1) requires that a summons to a witness under subs 167(2) of the Copyright Act 1968 (Cth) (‘the Act’) be substantially in accordance with Form 2.

5                     Subsection 167(2) of the Act provides:

‘A member or the Secretary to the Tribunal [sic – A member of or the Secretary to the Tribunal] may summon a person to appear before the Tribunal to give evidence and to produce such documents and articles (if any) as are referred to in the summons.’

6                     It is well established that a body corporate itself cannot be required to ‘give evidence’ or ‘be examined’, because a body corporate is an abstract legal entity: Penn-Texas Corporation v Murat Anstalt (No 1) [1964] 1 QB 40 (‘Penn-Texas No 1)’) at 56 per Wilmer LJ, 67-69 per Harman LJ, 73-74 per Davies LJ;  Re Lindsay Toole & Co (Wool) Pty Ltd (in liq) (1966) 84 WN (Pt I) (NSW) 318;  Smorgon v Australia & New Zealand Banking Group Ltd (1976) 134 CLR 475 at 484-485 per Stephen J;  Re Rothwells Ltd (No 2) (1989) 7 ACLC 576 at 592-3;  Fieldhouse v Commissioner of Taxation (1989) 25 FCR 187 at 218;  Re BPTC Ltd (in liq) (1992) 8 ACSR 533 (‘BPTC’)at 539;  McDonald v Australian Securities Commission (No 2) (1994) 120 ALR 515 at 519).

7                     For this reason, in so far as the present motion seeks the issue of summonses in the precise forms annexed to the notice of motion, it cannot succeed.  I understood senior counsel for the applicant to accept that this is so.

8                     The Retransmitters also submit, however, that subs 167(2) does not permit the issue of a summons to a corporation requiring it to give evidence and to produce documents by its ‘proper officer’.  They cite in support Deveson v Australian Broadcasting Tribunal (1991) 32 FCR 124 (‘Deveson’).  That case concerned s 21 of the Broadcasting Act 1942 (Cth) which provided for the summoning of ‘a person to appear before the [Australian Broadcasting] Tribunal at the proceedings to give evidence and to produce such documents (if any) as are referred to in the summons’.  This provision was therefore in substance identical to subs 167(2) of the Act.  Summonses were served on company directors requiring them to ‘appear’ before the Australian Broadcasting Tribunal and to ‘produce’ documents: the summonses did not require them to give evidence.  Davies J stated (at 127) in relation to s 21:

‘This section refers to a summons “to appear before the Tribunal at the proceedings to give evidence and to produce such documents …”.  Although it may seem strange that the section authorises only the summonsing of a person to give evidence and to produce any documents specified, there appears to be no ambiguity.’

Later his Honour said (also at 127):

‘It therefore seems clear that s 21 deals solely with the situation where a person is summonsed to appear before the Tribunal at the inquiry to give evidence.  Section 21 does not authorise the giving of a summons to a person required merely to produce documents.

9                     With respect, his Honour was clearly correct: unlike the proposed summonses in the present case, those before his Honour, by their omission of any requirement to give evidence, did not conform to the empowering statute.  Deveson is not authority against the validity of a summons issued pursuant to a statutory power of the kind in contemplation, requiring a corporation, by its proper officer, to give evidence and produce documents. 

10                  A course of historical development illuminates the present issue.  It was explained by Lord Denning MR in Penn‑Texas Corporation v Murat Anstalt (No 2) [1964] 2 QB 647 (‘Penn-Texas (No 2)’) at 662-663.  His Lordship’s discussion of the matter merits quoting in full:

‘… I would first consider the procedure under a subpoena duces tecum, when it is issued to an individual, not a company.  This subpoena was first introduced in the reign of Charles II and has remained unchanged to this day.  It is a command addressed by the Sovereign to a named person requiring him to attend at a stated time and place to give evidence and also to produce the documents which are specified.  Note, it is both to give evidence and to produce documents.  For over 150 years the named person was always required to go into the witness‑box and be sworn on oath, even though he was only called to produce documents.  His evidence was usually quite formal.  He produced the documents and said that he has the custody of the documents and how he came by them.  In cross examination he could be asked any questions concerning their custody: see Rex v The Inhabitants of Netherthong [(1814) 2 M & S 337, 338].  In 1819, however, Abbott CJ allowed a roving cross‑examination.  He ruled that, when a witness under subpoena duces tecum had been sworn as a witness, he could be cross‑examined not only on the custody of documents but also on the case at large: see Rex v Brooke [(1819) 2 Starkie 472)].  This led to serious abuses: so much so that, a few years alter, the judges at nisi prius held that a witness who was called only to produce documents need not be sworn; and thus could not be cross‑examined at large (see Davis v Dale [(1830) 1 M & M 514]): and this was confirmed by the Court of Exchequer: see Summers v Moseley [(1834) 2 C & M 477] and Perry v Gibson [(1834) 1 Ad & E 48].  If any question arose, however, as to the custody of the documents, he could be sworn for the limited purpose “true answer to make to such questions” as the court should demand of him touching the possession “or custody of the documents”: see Summers v Moseley [2C & M 478, 480].  In these circumstances it seems to me that, when a subpoena duces tecum is issued, the person named in it may truly be described as a witness called to produce documents and give evidence as to their possession or custody; but, as a matter of practice, when no question arises as to possession or custody, he is not required to be sworn.

The question arises, what is to be done when the documents are in the possession of a company?  How is the court to compel production of them?  One thing is quite clear.  It is no good serving a subpoena duces tecum on any of the officers or servants of the company: for each of them can say that he has no authority from the company to produce them, and that would be an end of any proceedings against him: see Crowther v Appleby [(1873) LR 9 CP 23] and Eccles & Co v Louisville and Nashville Railroad Co [[1912] 1 KB 135; 28 TLR 67, CA].  The only thing to do is to serve a subpoena duces tecum on the company itself, requiring it, by its proper officer, to give evidence and produce the documents.  That is what was done in Rex v Daye [[1908] 2 KB 333, DC].  And it seems to me to be the only way in which a company can be compelled to produce documents which are in its possession or custody.  The command or requirement on the company is comparable to an order on a company, by its proper officer, to file an affidavit of documents or to answer interrogatories.  The officer answering must make inquiries of the other officers as to the documents and must then produce them on behalf of the company: see Bank of Russian Trade Ltd v British Screen Productions Ltd [[1930] 2 KB 90, CA] ....’  (my emphasis)

Pearson LJ made clear (at 664-665) the limited scope of their Lordships’ decision that a company can be required, through its proper officer, to give evidence:

‘The English company can be required to give evidence as a witness in proceedings under the Act of 1856 to the extent of attending by its proper officer and producing documents to the examiner; and the production of the documents involves identification of them, if that is found to be necessary.  We are not at this stage concerned with the question whether the English company could be required to give evidence to any greater extent, for example, to attend by its proper officer and give through him written or prepared answers to written interrogatories, the answers having been specifically authorised by the English company.  A suggestion of that kind, though prima facie it might have had attractions, is ruled out by the decision of this court at the earlier stage  [a reference to Penn-Texas (No 1)] and has not been the subject of argument at this stage.’  (my emphasis)

11                  What is important for present purposes is that an individual, or the proper officer of a corporation, can appropriately be described as a ‘witness’, and as a person called upon to ‘give evidence’, even though he or she is required to give evidence only in relation only to the possession or custody of documents produced to the court.

12                  Lord Denning’s judgment in Penn-Texas (No 2) was referred to with approval in Australia in Rochfort v Trade Practices Commission (1982) 153 CLR 134 (‘Rochfort’) at 146 by Mason J, with whom Wilson J agreed (at 151), and in Concrete Constructions Pty Ltd v Plumbers and Gasfitters Employees’ Union (1987) 15 FCR 31 (‘Concrete Constructions’) at 46 by Wilcox J.  In Rochfort, Mason J said (at 146):

‘The production of documents by a corporation stands in a special position.  In the past it seems to have been thought that a problem arose by reason of the corporation’s inability to give evidence. This problem can be avoided by serving a subpoena on the corporation itself, requiring it, by its proper officer, to give evidence and produce the documents. As Lord Denning MR pointed out in  Penn-Texas (No 2)[[1964] 2 QB at 633] this is what was done in R v Daye[[1908] 2 KB 333]. The view which I have expressed is that stated by Lord Denning MR in  Penn-Texas (No 2) and subsequently in Senior v Holdsworth; Ex parte Independent Television News Ltd[[1976] 1 QB 23 at 32]. It is to be preferred to the contrary view of Harman LJ in Penn-Texas Corporation v Murat Anstalt (No 1)[[1964] 1 QB 40 at 69]’  (my emphasis)

 

13                  In my opinion subs 167(2) of the Act, reg 44 and Form 2 permit the summoning of a corporation to appear, by its proper officer, before the Tribunal to give evidence of the limited kind mentioned and to produce documents and articles.

14                  There is a practice according to which a person producing documents in response to a subpoena is commonly permitted, rather than being sworn, to make an unsworn statement in the court-room, but he or she has nonetheless been effectively required to ‘appear before the Tribunal to give evidence [of the limited kind referred to by Lord Denning MR]’.

15                  A summons or subpoena addressed to a corporation to do something by its proper officer is an order addressed to the corporation itself: BPTC at 539; Air Pacific Ltd v Transport Workers Union of Australia (1993) 40 FCR 1 at 4.

16                  In some cases, the form of order has been addressed to ‘The Proper Officer of [a corporation]’.  There is an obvious difficulty with an order expressed in this way: the order leaves uncertain and indeterminate the identity of the individual (or individuals) to whom it is addressed and against whom sanctions for disobedience (see s 172 of the Act) can be applied: cf Re Rothwells Ltd (No 2) (1989) 7 ACLC 576 at 593; Re BPTC Ltd (in liq) (1992) 8 ACSR 533 at 539.  In Concrete Constructions, subpoenas for production were addressed, in some cases to ‘The Secretary’, and in other cases to ‘The Proper Officer’, of an industrial organisation.  Wilcox J treated them, correctly in my respectful view, as addressed to individuals, rather than to the organisation.  But the question of the validity of subpoenas does not appear to have been raised.

17                  I respectfully agree with the observation of McLelland J in BPTC (at 539) that it is impermissible to address a summons, subpoena or order to ‘The Proper Officer of’ a corporation, rather than to a corporation which the summons, subpoena or order required to do the things specified ‘by its proper officer’.

18                  It is unfortunate that, instead of insisting on production to the Tribunal in association with an appearance before the Tribunal to give evidence, the Act and Regulations do not allow for the issue of a summons which can be complied with by production at the office of the Secretary to the Tribunal:  cf Federal Court Rules O 27 r 4, which permits production to the Registrar at the office of the Registry of the Court, and Administrative Appeals Tribunal Act 1975 (Cth) subs 40(1E), which permits production at the Registry of the Administrative Appeals Tribunal.

19                  I note that subs 105(2) of the Trade Practices Act 1974 (Cth), subregs 28N(1) and 25(2) of the Trade Practices Regulations 1974 (Cth) and Form K in Schedule 1 to those regulations, relating to the Competition Tribunal, are in terms relevantly identical to subs 167(2) of the Act, subreg 44(1) of the Regulations and Form 2 in Schedule 1 to the Regulations, respectively.

20                  Those responsible might well consider the desirability of amending these provisions  (and perhaps provisions like them relating to other Commonwealth administrative tribunals).  The Secretary to the Tribunal and the Registrar of the Competition Tribunal are both Deputy Registrars of the Federal Court of Australia; their offices are located within the office of the New South Wales District Registry of that Court; and they are familiar with the procedure of production of documents under subpoenas issued by that Court.



I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Decision herein of the Copyright Tribunal constituted by Lindgren P.



Associate:


Dated:                          5 December 2003



Counsel for the Applicant:

Mr DK Catterns QC and Mr C Dimitriadis


Solicitor for the Applicant:

Banki Haddock Fiora


Counsel for the Respondents:

Mr R Cobden


Solicitor for the Respondent:

Minter Ellison


Date of Hearing:

24 November 2003


Date of Reasons for Decision:

5 December 2003