Producing documents you do not hold in the Copyright Tribunal

Parties to proceedings before the Copyright Tribunal of Australia should be aware of its document production processes and powers. The Tribunal has the power to order the production of documents. Combined with an overarching power to determine its own procedure, this power enables the Tribunal to make orders ancillary to the production of documents. Although the precise limitations of this power have not been exhaustively defined, two recent decisions explore when and how a party can be required to produce documents it does not hold.

The Copyright Tribunal of Australia's powers of document production

The Tribunal is an independent body established by the Copyright Act 1968 (Cth). Its jurisdiction includes determining the royalties or equitable remuneration payable in respect of the statutory licences, making other orders with respect to the operation of statutory licence schemes, addressing disputes about the terms of existing and proposed licence schemes and transactional licences, and dealing with applications for the granting of such licences.

In the context of document production:

• Section 164(a) of the Copyright Act gives the Copyright Tribunal broad discretion as to the Tribunal's procedure. That discretion is however "subject to this Act and the regulations".
• The Tribunal may summons a person to produce specified documents or articles to the Tribunal (section 167(3)). In practice, parties to a proceeding before the Tribunal often agree to exchange categories of documents or information voluntarily, by way of an informal discovery or information disclosure process that is not ordered by the Tribunal, to avoid the need for summonses. Notably, there is no express power conferred on the Tribunal that provides for discovery or enables the administration of interrogatories to parties.

Two recent decisions of the Tribunal provide guidance as to the scope of these powers, and how they may be used to obtain relevant information or documents.

APRA AMCOS: the power to make Sabre orders

A "Sabre order" requires a party to make a request for documents held by a third party (named after the case of Sabre Corporation Pty Ltd v Russ Kalvin's Hair Care Co (1993) 46 FCR 428). In Reference by APRA AMCOS (Summonses) [2022] ACopyT 4, the question for the Tribunal was whether it had the power under section 164(a) to make one, and require a party to request its corporate parent (or other members of its corporate group) to produce documents (Clayton Utz acted for a respondent).

The Applicant asserted that the general discretion conferred by section 164(a) empowered the Tribunal to make such an order. Although in Justice Perram's opinion, "procedure" as contemplated by section 164 did not extend to "an order requiring a party to do something outside the context of a hearing", he sought not to disturb the finding in Reference by Phonographic Performance Company of Australia [2009] ACopyT 1; 84 IPR 393 in which Emmett P found that section 164 was capable of broad operation. There, Emmett P had concluded that section 164 and section 167 enabled the Tribunal to order a person who successfully obtains the issuance of a summons by the Tribunal, to bear the costs and expenses of compliance of the person to whom the summons has been issued: this was to be implied from or incidental to the power granted to the Tribunal under section 167(3).

However, there are limits: the relevant power sought to be exercised, in the context of section 167 must be "implied from or be seen as incidental to" the power to issue a summons. Critically, Justice Perram said in APRA AMCOS:

"The power in section 167(3) is a power to require a person to produce a document. In my view it is incidental to that power to require a party before the Tribunal to ask another person to produce a document. The power in 167(3) will be fruitless if the person to whom a summons is addressed does not have possession of a document although it is in the possession of a parent entity. To make the power to order production efficacious it is therefore incidental to that power to order a party before the Tribunal to request another party for the document."

Therefore while section 167 did not in express terms enable the Tribunal to make Sabre orders, it now appears to be accepted that by virtue of section 164(a) and section 167, the Tribunal can make such orders.

PPCA: compelling a party to collect information it does not have in its possession

In another recent case, Reference by Phonographic Performance Company of Australia Ltd (Summons) [2024] ACopyT 1, the Tribunal was again asked to consider the scope of this incidental power. This decision related to a reference by Phonographic Performance Company of Australia Ltd (PPCA) to have the Tribunal confirm its proposed scheme for the licence of commercial sound recordings to commercial radio broadcasters. PPCA sought the following from the representative body for commercial radio broadcasters, Commercial Radio & Audio Ltd (CRA):

Factual Category 4 – Talent Expenditure

The names and annual remuneration of the top 3 highest remunerated radio presenters from ARN, Nova, SCA and West Coast Radio, and the names of the radio presenter’s show(s).

CRA objected on the basis that the Tribunal lacked the power to compel CRA to answer the request, which it submitted was akin to an interrogatory. CRA submitted that the Tribunal did not have the power to compel a party to provide information that was not in its possession (as opposed to specific documents), nor did it have the power to compel a party to create documents for the purpose of producing them.

In determining the application, Justice Rofe observed that the power under section 164 is "broad and unfettered", but there are limits. She refused to order production of Factual Category 4 by CRA, stating:

"I do not accept that the Tribunal’s broad powers to control its own procedure extends to compelling a party to the Reference to first collect, and then provide, information not already in its possession. This strays beyond the Tribunal’s power in matters of procedure under section 164 and matters implied or incidental to that power. The compulsion of a party to provide information outside its possession exceeds the Tribunal’s power to require the production of specific documents under section 167(3). I will not make an order requiring CRA to provide the information sought in disputed Factual Category 4."

PPCA was however, successful in obtaining summonses to commercial radio broadcasters seeking information concerning the annual remuneration of the top three highest remunerated radio presenters.