COPYRIGHT TRIBUNAL OF AUSTRALIA

Application by Fueltrac Pty Ltd [2018] ACopyT 2

COMMONWEALTH OF AUSTRALIA

Copyright Act 1968

THE TRIBUNAL DIRECTS THAT:

1.    The present proceedings be stayed pending the determination of all questions in issue the subject of proceedings to be commenced in the Federal Court of Australia by the present applicant.

2.    These directions and the reasons in support of these directions are published from the Chambers of the President.

REASONS FOR DETERMINATION

GREENWOOD J (PRESIDENT):

1    Section 183(1) of the Copyright Act 1968 (Cth) (the “Act”) provides, relevantly, that the copyright in a literary, dramatic, musical or artistic work or a published edition of such a work, is not infringed by a State, or by a person authorised in writing by a State, doing any acts comprised in the copyright if the acts are done for the services of the State. Authority may be given under s 183(1) 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 has a licence granted by, or binding on, the owner of the copyright to do the acts: s 183(3).

2    Section 183(4) provides that where an act comprised in a copyright has been done under s 183(1), the State shall, as soon as possible, unless it appears to the State that it would be contrary to the public interest to do so, inform the owner of the copyright of the doing of the act and furnish that person with such information as to the doing of the act as he or she from time to time reasonably requires.

3    Section 183(5)(1) provides that where an act comprised in a copyright has been done in reliance upon s 183(1), the terms for the doing of the act are such terms as are, whether before or after the act is done, agreed between the State and the owner of the copyright or, in default of agreement, as are fixed by the Copyright Tribunal (the “Tribunal”).

4    Section 153E of the Act provides, relevantly, that the parties to an application to the Tribunal under s 183(5) for the fixing of the terms for the doing of an act comprised in a copyright where the act is done for the services of a State, are the State and the owner of the copyright. Section 153E(2) provides that if an application is made to the Tribunal under s 183(5), the Tribunal “is to consider the application and, after giving the parties to the application an opportunity of presenting their cases, is to make an order fixing the terms for the doing of the act”.

5    Section 153E(2) seems to cast a mandatory obligation on the Tribunal “to consider” an application made under s 183(5) and after affording the parties procedural fairness, a mandatory obligation “to make” an order fixing the terms for the doing of the relevant act.

6    A question which has arisen in this preliminary application is whether the jurisdiction of the Tribunal has been engaged at all.

7    The proposition on behalf of the State of Queensland is that the jurisdiction of the Tribunal to determine the terms for the doing of an act comprised in the copyright in the relevant subject matter, is only engaged where an act comprised in a copyright has been done or exercised in reliance upon s 183(1) of the Act. The State says that if there is a question in issue as to whether copyright subsists in a work, or whether the applicant before the Tribunal is the owner of the copyright in the relevant work or whether the State has exercised a right comprised in the copyright in question in reliance upon s 183(1) of the Act, it would be necessary to first determine one or all of those questions because the jurisdiction of the Tribunal is only engaged “where an act comprised in a copyright has been done under subsection (1)”: s 183(5).

8    Section 161 of the Act provides that the Tribunal may, of its own motion or at the request of a party, refer a question of law arising in a proceeding before the Tribunal, for determination by the Federal Court of Australia. Section 161(2) regulates the time when such a question might be raised. The question is properly raised at this stage of the proceeding.

9    As to the proceeding itself, the application is made to the Tribunal by Fueltrac Pty Ltd (“Fueltrac”). The respondent is the State of Queensland. The application is made under s 183(5) to fix the terms for the doing, by the State of Queensland, of acts comprised in the copyright, being acts said to have been undertaken by or on behalf of the State in reliance upon s 183(1).

10    Briefly, the factual background is this. Each of the following matters reflect the factual contentions of the applicant.

11    Fueltrac provides a wide range of services within the fuel and lubricants industry ranging from consulting services to price monitoring of terminal gate, wholesale and retail prices. Fueltrac has been providing retail pricing reports to a body described as the Australian Automobile Association (“AAA”) for approximately 20 years. It continues to do so. It provides AAA with a monthly unleaded retail (pump price) report for all States and Territories in Australia, otherwise described as the “Fueltrac Report”. Each report provides the maximum, minimum and average price for specified locations by reference to identified postcodes within the relevant location. The locations and postcode references were “precisely selected” by Fueltrac in order to provide statistically relevant information to AAA without the necessity of reporting upon all locations and all postcodes throughout Australia. In order to prepare the Fueltrac Report, Fueltrac collects retail unleaded pricing information within the relevant locations. Fueltrac has developed software that aggregates and summarises the data by reference to each location and postcode. The software produces a computer file that records the number of observations and the maximum, minimum and average retail unleaded price for each location. The computer file is then reviewed by particular identified persons within Fueltrac who “validate the entries” produced by the software. A lengthy process of data validation is undertaken by senior staff who use their Australian fuel market knowledge to assess the accuracy of the entries recorded in the computer file for each location. As necessary, the staff members use their skill and experience to review and amend what may appear to be inaccurate entries. Upon completion of the validation exercise and any necessary “cleansing of the data”, Fueltrac staff export and format the data into the form of the Fueltrac Report required by AAA. The Fueltrac Report, for unleaded petrol in each location, provides the maximum price, minimum price, average price and an “observation count”. Fueltrac granted AAA a non-exclusive licence to reproduce monthly average unleaded retail pricing only by means of AAA’s website. For all other products, Fueltrac granted AAA a non-exclusive licence to reproduce information in graphical format, provided that actual pricing was not disclosed. Using the Fueltrac Report and with Fueltrac’s licence, AAA produced a document entitled Queensland AAA Pricing Summary Unleaded Petrol (Cents per Litre) (the “AAA Report”). That document is said to reproduce the monthly pricing data including the minimum, maximum and average price for unleaded petrol recorded in the Fueltrac Report. The AAA Report provides pricing for the current calendar month and historical pricing reaching back to April 1998. The AAA Report contains a copyright notice in these terms:

12    Versions of the AAA Report were capable of being downloaded from the AAA website until 2017, although subject to the assertions in the copyright notice. In 2017, Fueltrac and AAA agreed that AAA would no longer make its report available on its website and would replace it with pricing information set out in the format of graphs.

13    As to the State of Queensland and the role of the Queensland Treasury (“Treasury”), Fueltrac says that by two agreements (one in 2004 and one in 2007), the State of Queensland, through Treasury, contracted with Fueltrac for Fueltrac to provide the services of supplying fuel price data. The contractual arrangements came to an end in 2010. At that time, the monthly charge for the service was $2,275.00. On 30 May 2018, Fueltrac received an email from Mr Domrow of Treasury in which Mr Domrow said that Treasury maintains a “web table” with monthly average fuel prices for regional centres. Mr Domrow said that these data were sourced from a spreadsheet on the AAA website which Mr Domrow understood was provided to AAA by Fueltrac. Fueltrac says that the Treasury website has contained a “web table” listing the average unleaded retail price per litre in selected Queensland centres in the period from June 2016 to June 2017. Additionally, the website has permitted the downloading of an “historical table” of average unleaded retail prices per litre for selected centres for the period April 2006 to June 2017. Fueltrac says that the average price is the most sought after and commercially valuable statistical data it reports and thus the average pricing for the centres reproduced in Treasury’s web table and its historical table represents a substantial part of the AAA Report and thus a reproduction of a substantial part of the Fueltrac Report. Fueltrac says that although Treasury’s web table and historical table note that its source is Fueltrac and AAA, the copyright notice of Fueltrac has been removed by Treasury. On 30 May 2018, Mr Kable of Fueltrac sought the immediate removal of the web table and the historical table from Treasury’s website. Both were removed the same day without any dispute or objection.

14    Treasury says that it removed both tables as a matter of goodwill. It says that its failure to object to the contentions asserted by Fueltrac do not amount to an admission. The State of Queensland says that notwithstanding the contentions of Fueltrac, the State contests the question of whether copyright subsists in any relevant work and, in particular, the Fueltrac Reports. It contests whether Fueltrac is the owner of the copyright in any relevant work. It contests whether any copyright subsisting in the Fueltrac Reports has been infringed by the State. As to the last issue, it contests whether any reproduction of any information constitutes a reproduction of a substantial part of either the AAA Reports or the Fueltrac Reports. It generally contests whether the State has reproduced, communicated or authorised the reproduction and/or communication of a substantial part of the Fueltrac Reports.

15    The State says that unless and until it is satisfied that an act comprised in a copyright has been done under s 183(1) of the Act, it is not in a position to reach any agreement with Fueltrac about the terms for doing or having done the relevant act.

16    Moreover, it says that the terms for the doing of a relevant act are such terms as are fixed by the Copyright Tribunal but the jurisdiction to fix such terms can only arise where an act comprised in a copyright “has been done” under s 183(1).

17    Fueltrac recognises and accepts that there are “questions of law” which need to be determined going to subsistence, ownership and the contended exercise under s 183(1) of the Act of rights comprised in the copyright. The method proposed by Fueltrac for resolving those questions is that the Tribunal ought to recognise that an application has been made under s 183(5) for the fixing by the Tribunal of the terms for the doing of an act comprised in the copyright, which, in turn, engages a question of whether there is a work in which copyright subsists; whether the copyright is owned by Fueltrac; and whether a right comprised in the copyright has been exercised by the State under s 183(1) of the Act. Fueltrac says that those questions ought to be referred to the Federal Court but, in the meantime, the Tribunal ought to hear and determine all of the factual questions (which may involve mixed questions of fact and law) going to the legal issue of subsistence, ownership and the contended exercise of rights. Fueltrac says that once the underlying factual matters have been canvassed and findings of fact have been made by the Tribunal, the legal questions can then be referred to the Federal Court for determination against the background of the Tribunal’s fact-finding.

18    I am satisfied that this may well be undesirable for two reasons.

19    First, the boundaries between fact-finding and the isolation of legal questions might be difficult to draw and there seems to be sense in a forum engaging with the totality of the questions in issue and deciding once and for all the totality of the factual and legal questions in issue. The previous payment of service fees to Fueltrac and the recognition of a copyright notice on relevant material is said by Fueltrac to suggest that the State seemed to proceed on the basis that Fueltrac enjoyed certain rights in the Fueltrac Reports, exercised or exercisable by the State. Fueltrac says that the State “cannot have it both ways”. By this, Fueltrac means that the State, on the one hand, cannot be seen to have acted in the past on the footing that it made payments to Fueltrac in recognition of particular rights and did so in recognition of a copyright notice and yet, on the other hand, now assert that all of these integers going to the copyright matter are now disputed. Nevertheless, these issues of subsistence, ownership and the exercise of rights comprised in any contended copyright are all alive and in contest and they need to be decided in one place at one time. Past conduct on the part of the State might be said to be probative of questions in issue but that is a matter for determination in another place.

20    Second, I am concerned that a question might arise as to whether the Tribunal’s jurisdiction is engaged. The State might elect not to negotiate with a party in respect of the use of a relevant work because it takes the view that it cannot be satisfied that copyright subsists in that work or that if it does, it is owned by the applicant. It may also take a view that what is done does not amount to an exercise of a right comprised in the copyright. It might simply be wrong about all of those things and might have elected not to negotiate or not to enter into any agreement in reliance upon a misunderstanding as to the true facts and legal consequences of those facts. However, the State may ultimately be right about those threshold matters and might be shown to be correct in the view it has adopted. All of these matters are in contest. It seems to me that the most efficient course is to determine all of these questions in one forum at one time and then, should it emerge that the State and Fueltrac have been unable to reach agreement about the terms, the Tribunal can then fix the terms, which is its statutory role.

21    I am also satisfied that there is at least a question as to whether the Tribunal’s jurisdiction is engaged in the present circumstances: Thomas v Brown (1997) 37 IPR 207, Sheppard J at 210. I am concerned that time and costs might be wasted if it is later found that the Tribunal’s jurisdiction was not properly engaged in undertaking the methodology suggested by Fueltrac.

22    Accordingly, I propose to stay the present proceedings pending the determination of proceedings to be commenced by Fueltrac in the Federal Court of Australia to determine all of the factual and legal questions which need to be resolved prior to embarking upon negotiations leading to an agreement or, failing agreement, the fixing of terms by the Tribunal. The most efficient course would be to stay these proceedings pending the determination of Federal Court proceedings. These proceedings in the Tribunal could be reinvoked should it emerge that Fueltrac is successful in its claims and, in reasonably short order, the parties have been unable to reach agreement as to the terms. The Tribunal can then discharge its statutory role of fixing the terms confident that the anterior questions are resolved and there is no likelihood of a challenge to jurisdiction which would waste everybody’s time and money.

Associate:

Dated:    30 October 2018