REVISITING AUTHORISATION LIABILITY IN COPYRIGHT LAW

• Date: 01 December 2012
• Published date: 01 December 2012
• Author: SAW Cheng Lim LLB (Hons) (National University of Singapore), LLM (Cambridge); Advocate and Solicitor (Singapore); Associate Professor, School of Law, Singapore Management University. Warren B CHIK LLB (Hons) (National University of Singapore), LLM (Tulane) (UCL); Advocate and Solicitor (Singapore); Assistant Professor, School of Law, Singapore Management University.

In this article, the authors revisit the origins and purpose of the law on authorising infringement and propose that the word “authorise” should bear the dictionary meaning of “sanction, approve, countenance”, in lieu of the phrase “grant or purported grant” as adopted in the CBS Songs Ltd v Amstrad Consumer Electronics plc ([1988] AC 1013) decision. The authors will also examine a non-exhaustive list of factors for determining authorisation liability. The suggested approach seeks to expand the scope of indirect copyright liability in Singapore, which is necessary in the face of increasing incursions into the sphere of copyright protection.

I. Introduction

1 In this article, the authors will revisit the law on authorising copyright infringement (or “infringing authorisation” as it is sometimes known). It may appear at first blush to readers who are somewhat familiar with the subject, that the law in this area is well settled and beyond controversy. The reality, however, is that nothing could be further from the truth. The article will attempt to bring the reader through the various difficulties, uncertainties and controversies surrounding this seemingly innocuous aspect of infringement in the law of copyright by raising, and attempting to provide satisfactory answers to, two overarching and fundamental questions:

(a) What does the word “authorise” or “authorisation” mean in copyright parlance?; and

(b) When does or should authorisation liability arise (or under what circumstances would a court arrive at a finding of authorisation)?

2 Owing to constraints of space, it is assumed that the reader has some prior knowledge of the subject and is generally well acquainted with the facts of the leading cases on authorisation liability.

II. Background and history

3 Authorisation liability in the law of copyright has had a fairly long history.1 In Singapore, the action for authorising infringement is to be found in section 31(1) of the Copyright Act,2 which reads thus:

Subject to the provisions of this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Singapore, or authorises the doing in Singapore of, any act comprised in the copyright. [emphasis added]

4 This provision is modelled after section 36(1) of the Australian Copyright Act 1968,3 and similar provisions exist in the copyright statutes of other leading Commonwealth jurisdictions.4 The allied concepts in the US, on the other hand, are the actions for contributory, vicarious and (more recently) inducing infringement, each of which is based on well-established principles at common law.5

5 Two preliminary matters will be addressed at the outset. First, because the respective causes of action for authorising infringement and primary infringement are both contained in the same statutory provision, it may be tempting – on a plain construction of section 31(1)

of the Copyright Act6– to treat both actions as strict liability torts. However, whilst it is true that the former is clearly a “species of infringement”,7 the historical evolution of copyright law (both in the UK and Australia) suggests that the concept of “authorisation” in the statute has “its own independent operation from what one might call primary infringement” [emphasis added].8 Indeed, section 1(2) of the UK Copyright Act 1911,9 for example, gave “the owner of copyright in a literary work both the sole right of reproducing it and the sole right of authorising such reproduction and that those rights were separate and distinct so that infringement of each was a distinct tort” [emphasis added].10 It is therefore inappropriate to consider and examine the law on authorising infringement in the same light as that on primary infringement, especially when the former concerns the potential liability of an accessory and not the direct or primary infringer of copyright (that is, it is concerned with the liability of a person who has made it possible for other third parties to commit primary acts of copyright infringement by, for example, having supplied the means for infringement). It will be explained in greater detail below why, unlike the action for primary infringement and contrary to the plain language of the statute, “the word ‘authorise’ [in the action for authorising infringement] connotes a mental element” [emphasis added].11

6 Second, given its historical significance, it is crucial to keep in mind the raison d'être of the action for authorising infringement. A look back in history reveals that “[t]he introduction of the concept of ‘authorisation’ plainly was designed to meet perceived deficiencies in existing legislation” and, more specifically, that “[t]he word ‘cause’12 was

deliberately discarded in favour of ‘authorise’” [emphases added].13 Indeed, this view had already been underscored much earlier by Scrutton LJ in the seminal decision of the English Court of Appeal in Falcon v Famous Players Film Co (“Falcon”):14

Any one familiar with the old Copyright Acts knows that they were very lengthily worded, and ran ‘shall make or cause to be made, or sell or cause to be sold, or import or cause to be imported, or represent or cause to be represented’, and so on, with a number of other verbs. In the present Act [that is, the UK Copyright Act 1911] that verbiage has been omitted; the words ‘cause to’, which had had a very restricted meaning put upon them, dropped out, and for them was substituted the word ‘authorise’ with a much wider meaning… In my view the wording of the Act of 1911 was intended to enlarge the protection to authors, and to sweep away those decisions by which their rights had been limited, as against the makers of mechanical instruments by which their works could be reproduced. [emphases added]

7 Scrutton LJ's dicta suggest, in no uncertain terms, that the notion of infringement by “authorisation” was clearly intended by legislators at the time to assume a much broader role within the statutory copyright framework than was previously available to copyright owners.15 The authors are of the view that it is precisely this defining historical perspective that must be borne in mind throughout the analysis in this article, of the proper meaning that ought to be presently attributed to the word “authorise”, as well as the appropriate ambit of the statutory cause of action for authorising infringement.

III. Meaning of “authorise”

8 It is trite that the meaning of the word “authorise” is not defined in any copyright statute, with the unfortunate consequence that numerous formulations of the word abound in the case law.16 There are essentially two main schools of thought.

A. “Sanction, approve, countenance”

9 Several cases – particularly from Australia, but also from the UK and Canada – endorse the so-called broader view that the word “authorise” or “authorisation” should assume its dictionary meaning of “sanction, approve, countenance”.17 There is, however, some debate as to whether the phrase “sanction, approve, countenance” ought to be read conjunctively or disjunctively. The phrase that was originally formulated by Bankes LJ in Falcon18 was “sanction, approve and countenance” and this, so said the English Court of Appeal in Pensher Security Door Co Ltd v Sunderland City Council,19 could only mean that the phrase was meant to be read conjunctively.20 However, it is also the case that the expression has been judicially interpreted in the disjunctive sense.21 The problem that has arisen as a result of this controversy is that there is no

consistency at all in the manner in which the word “authorise” has been defined by the courts that have adopted this school of thought, thereby leading to confusion and uncertainty. Indeed, the word “authorise” has also been taken to mean, inter alia, “permit”22 as well as the extension of an “invitation”.23

10 Another difficulty with the expression “sanction, approve, countenance” is that the words, taken individually, are not perfect synonyms or good substitutes for one another. Indeed, “[c]ountenancing does not mean the same thing as approving”.24 To compound matters further, some of the accepted meanings for “countenance” are not co-extensive with the word “authorise”– for example, if “countenance” is taken to mean “condone”25 or, in the words of the Canadian Supreme Court in CCH Canadian Ltd v Law Society of Upper Canada (“CCH”), “[c]ountenance in the context of authorising copyright infringement must be understood in its strongest dictionary meaning, namely, ‘[g]ive approval to; sanction, permit; favour, encourage’”.26 Yet, in relation to the latter view, the High Court of Australia in Roadshow Films Pty Ltd v iiNet Ltd (“iiNet”) has cautioned that “it would be wrong to take from [the expression ‘sanction, approve, countenance’] one element, such as ‘countenance’, and by fixing upon the broadest dictionary meaning of that word to seek to expand the core notion of ‘authorise’”.27

11 Be that as it may, the authors are of the view that it is still more appropriate to adopt the phrase “sanction, approve, countenance”– at the very least – as a helpful working definition of the word “authorise” in copyright legislation. If, indeed, it were true that the phrase “sanction, approve, countenance” indicates a broader definitional ambit for the word “authorise” (as opposed to the alternative meaning of a “grant or purported grant”, which will be discussed in the following section), then

it appears unobjectionable, in principle, to embrace it wholeheartedly, given that this interpretation also accords perfectly with the legislative intent prevailing at the time of its inception – namely, to have the notion of infringement by “authorisation” assume a much broader role within the statutory framework so as to enlarge the scope of protection afforded to copyright owners.28 This argument...