THE HIGH COURT
			1994 No. 2908P	BETWEEN
UNIVERSAL CITY STUDIOS INCORPORATED
WALT DISNEY PRODUCTIONS INCORPORATED
20TH - CENTURY FOX FILM CORPORATION
WARNER BROTHERS INCORPORATED
			PLAINTIFFS
AND
GERARD MULLIGAN
			DEFENDANT

Judgment of Miss Justice Laffoy delivered on 28th day of November 1997

	Part III of the Copyright Act, 1963 (the 1963 Act) regulates copyright in sound recordings, cinematograph films, broadcasts and other media.  Section 18 specifically deals with copyright in cinematograph films.  In subsection (10) of Section 18 the expression "cinematograph film" is defined as meaning -

	".......... any sequence of visual images recorded on material of any description
	(whether translucent or not) so as to be capable, by use of that material - 
	(a)  of being shown as a moving picture, or
	(b) of being recorded on any other material (whether translucent or not) by
	the use of which it can be shown".
There are two relevant complementary definitions in subsection (10).  First, the word "publication" is defined, in relation to a cinematograph film, as meaning - 

	"........ the sale, letting on hire, or offer for sale or hire, of copies of the film to, or  for showing by any means to, the public".

Secondly, the word "copy" is defined, in relation to a cinematograph film, as meaning- 

	"....... any print, negative, tape or other article on which the film or part of it is
	recorded".

	Subsection (4) of Section 18 provides that the acts restricted by the copyright in a cinematograph film are, inter alia, making a copy of the film.  Section 21(6) provides that any copyright subsisting by virtue of part III of the 1963 Act is infringed -

	"....... by any person who, in the State, and without the licence of the owner of the copyright -
	(a)  sells, lets for hire, or by way of trade offers or exposes for sale or hire any
	article, or 
	(b)  by way of trade exhibits any article in public,  
	if to his knowledge the making of the article constituted an infringement of 	that copyright ......"

	The Plaintiffs in these proceedings are members of the Motion Pictures Export Association of America Incorporated (the Association).   They claim that they are the owners of the copyright of certain films scheduled in the Statement of Claim herein, for example, "Beauty and the Beast", and they allege that the Defendant let on hire, distributed and by way of trade or otherwise offered and exposed for sale or hire and/or exhibited in public and to members of the public for profit pirated and/or counterfeit copies of the scheduled cinematograph films well knowing that the said copies infringed the copyright of, and without the licence of, the Plaintiffs and other members of the Association.
	In simple terms what is alleged against the Defendant is that he has sold and offered for sale video cassettes or tapes which were pirated or counterfeit copies of video cassettes or tapes authorised by the Plaintiffs of films or motion pictures in which they owned the copyright.   As I understand it, the article which it is alleged the Defendant has wrongfully sold and offered for sale is the type of video cassette or tape which one plays at home in a video cassette recorder (VCR) connected to a television set.
	The Defendant contends that a video tape does not come within the definition of "cinematograph films" in the 1963 Act, a contention which is rejected by the Plaintiffs.  I have been requested by the parties to determine as a separate issue in these proceedings the following questions, namely:
(1)	Is a video tape a cinematograph film within the meaning of that expression in
	Section 18(10) of the 1963 Act?
(2)	If the answer to question (1) is in the negative, can a video tape be a
	"copy" within the meaning of Section 18(10) of the 1963 Act of a
	"cinematograph film" as defined in that subsection?
	The forgoing questions are mixed questions of fact and law.  The factual element is the processes by which what is commonly known as a film or motion picture is transferred onto a video tape and the playing of the video tape in a VCR produces the visual images of the film or motion picture on a television screen.   I have had the benefit of the testimony of John Brady, who works in video post production in the State, and who explained the processes involved.  
 	A reel of film of the type projected on a screen in a cinema comprises a sequence of frames and each frame represents an image.   The film is projected at the rate of twenty-five frames per second and this gives the impression of a moving picture.   The creation of a video tape from a reel of film involves representing the sequence of frames on a metal particle tape by an arrangement of metal particles in a series of diagonal patterns which produce lines of information.   As I understand it, getting the information onto the video tape is a two-stage process.  First, a telecine machine causes the visual images on the film to be converted into electrical impulses or signals and then a video tape machine converts the electrical impulses into magnetic signals represented by an arrangement of metal particles on the tape.   The process by which the magnetic signals produce visual images on a television screen is also a two-stage process.  The first stage is that a rotary magnetic head in the VCR reads the information on the metal particles and converts that information into electrical signals.   The television set to which the VCR is connected is the projection unit and it converts those electrical signals into visual images.   
	Mr. Brady testified that there is no visual image observable on the video tape.   If one examines a video tape under a microscope what one observes is an arrangement of metal particles in a series of diagonal patterns.   He acknowledged that what is on the tape is information which represents the frames on the reel of film and that the visual images on the film can be reconstituted from the information on the tape by a magnetic head in a VCR.   
	I think it is important to stress that the issue is being determined in the context that the basic facts which give rise to the Plaintiffs' allegations remain to be proved.  First, the Plaintiffs still have to prove that they are the owners of the copyright in the scheduled films in this jurisdiction, the Defendant having made a very limited concession that the Affidavit evidence produced in accordance with the Order of this Court (Geoghegan J.) made on 21st day of July 1997  proves ownership of the copyright in the scheduled films in the United States of America by virtue of registration in the Copyright Office in the Library of Congress.   Secondly, the Plaintiff must prove by admissible evidence that the Defendant has sold or offered for sale counterfeit video cassettes which infringe the Plaintiffs' copyright contrary to Section 21 (6) of the 1963 Act.  	
	On behalf of the Defendant, Mr. Mackey submitted that the words "any sequence of visual images recorded on material of any description" in the definition of cinematograph films in Section 18(10) of the 1963 Act, on there ordinary meaning, do not capture video tapes of the type which the Defendant is alleged to have sold contrary to Section 21(6).   On the evidence, he submitted, visual images are not recorded on a video tape.   He submitted that there is a cassus omissus in Irish copyright law.   In the United Kingdom the legislature recognised the existence of similar lacuna and rectified it.   Section 13 (10) of the UK Copyright Act, 1956 was in similar terms to Section 18(10) of the 1963 Act.   The recent legislation in the United Kingdom which resolved the difficulty, it was submitted, is the Copyright Designs and Patterns Act, 1988, Section 5(5) of which defines the word "film" as meaning "a recording on any medium from which a moving image may by any means be produced".    That broader definition than the UK 1956 Act definition of  "film" is supplemented by a broader definition of "publication" in Section 175(1) of the UK 1988 Act, wherein that word is defined as including -

	"........  in the case of a literary, dramatic, musical or artistic work, making it
	available to the public by means of an electronic retrieval system".

It was further submitted that the obvious deficiencies in Irish copyright law have been the subject of criticism in Reinbothe and Von Lewinski on "The EC Directive on Rental and Lending Rights and on Piracy" (1993, Sweet and Maxwell).   Having read the chapter in that work on Ireland, I do not find that the criticism is directed at the point in issue in the instant case.
	On behalf of the Plaintiff, while acknowledging the changes wrought in the United Kingdom by the 1988 legislation, Mr. Clarke suggested that these changes were not necessarily intended to cure an infirmity in the existing legislation and such authorities as exist from other common law jurisdictions on similar provisions support this view.  He cited three such authorities.   
	Chronologically, the earliest of the authorities referred to by Mr. Clarke was a decision of a Chancery Division of the English High Court in E.M.I. Limited & Others -v- Sharif & Others, in which judgment was delivered by Whitford J. on 2nd day of February 1981.   The passage from the judgment relied on by Mr. Clarke is in the following terms:

	"Video cassettes are, as I have indicated, in essence cinematograph films.  In 
	normal commercial films sounds and images are both recorded on the film,
	though it is possible in fact to record images on film and to have synchronised
	sound through a disc.  In the video cassette sound and images are recorded
	on the tape, so that it reproduces the same sequence of sound coupled with 
	images when it is run through as you get when you project a film.   It is
	impossible of course from a film to produce a recording of the sound portion 
	alone.  It is equally impossible to produce from a video cassette a recording
	on the sound portion alone".

The application before Whitford J. was an application by the Plaintiffs, who were record companies, for an interlocutory injunction restraining the Defendants from infringing the copyright in sound recordings and sound tracks associated with cinematograph films made by film companies in India, which copyright the Plaintiffs claimed to own.   The issue being addressed in the judgment was whether there was an arguable case that the Plaintiffs had by agreement acquired a copyright interest entitling them to restrain the infringement through video cassettes on which there would be reproduced sound in conjunction with images, the Defendants having conceded that there was an arguable issue in relation to audio cassettes they had produced.   That issue fell to be determined on the proper construction of agreements between the record companies and Indian film companies.   While in the judgment Whitford J. remarked that it might be of some relevance that the agreements were made against the backdrop of the Indian Copyright Act, 1957, in my view, the judgment is of limited assistance in determining the issue I have to determine, because it was concerned with the construction of a commercial agreement, not the construction of a statute, and, in any event, it was merely addressing whether there was an arguable case in the context of an application for an interlocutory injunction.  
	Mr. Clarke referred the Court to the most recent pre-1988 edition of Sterling and Carpenter on Copyright in the United Kingdom (1986, Legal Books (UK)) in which, commenting on Section 13(10) of the UK Act of 1956, the editors stated as follows at page 282:-

	"The criterion of form will thus be satisfied where the recording of a sequence of visual images is on 'material of any description':  this phrase is so wide in import that it will include film strip, videotape, videodisc or any other material substance".

As authority for the foregoing proposition, in a footnote the editors cited the judgment of Whitford J. in the EMI case and they stated that "videocassettes are in essence cinematograph films".  They cited no other authority.  
	The next authority relied on by Mr. Clarke is a decision of the Supreme Court of New South Wales, Equity Division, in Netage Property Limited v. Cantley, in which judgment was delivered by Young J. on 10th December, 1985.  The passage of the judgment relied on is in the following terms:-

	"A question that arises is whether a videotape is a cinematographic film?  I considered this question without deciding it in Videostar Property Limited v. Louis, 15 August, 1985, unreported, and at that stage had some doubts about the matter.  However, it seems to me that Mr. Cotman's submission on the effect of Section 24 of the Australian Copyright Act, 1968 and the arguments in Lahore on Copyright, par. 332, are correct and that is that because a videotape is capable of being shown as a visual moving picture it is a film.  Ricketson on Intellectual Property, p.138, comes to the same conclusion and it is interesting to see that the guidelines as to eligible films made by the Minister for Home Affairs for the purposes of ...... the Income Tax Act make the same assumption .....".

The issue Young J. was addressing was the proper construction of a deed, not the construction of a statutory provision.  However, the observations I have quoted above were preceded by a comment that the deed in question defined "film as a cinematograph film with obvious reference to the Copyright Act".  
	The final authority relied on by Mr. Clarke is a decision of the Supreme Court of Malaysia in Foo Loke Ying v. Television Broadcasts Limited, (1987) F.S.R. 57, in which judgment was delivered on 23 May, 1985.  The passage of the judgment of the Court relied on by Mr. Clarke is the following passage at page 60 in the report:-

	"Since the point has however been raised we need only say that in our view videotapes come plumb within the definition of 'cinematographic film' in Section 2(1) as the first fixation of any sequence of visual images on material of any description (whether translucent or not) so as to be capable, by use of that material, (a) of being shown as a moving picture or (b) of being recorded on other material (whether translucent or not) by the use of which it can be so shown, and includes the sounds embodied in any associated soundtrack.  The definition does not require that the visual images should be in a state ready for projecting in order to qualify as a cinematographic film and it would be enough that they be recorded on any material, translucent or otherwise, and that it should be possible to translate them into a moving picture - a conclusion evident even without having recourse to the reddendo singula singulis canon of construction, sclicet, that words should be read distributively.   Films for television purposes often consist of videotapes which are records on tape of electrical impulses, that is to say, by the use of magnetic impulses the light images are recorded on magnetic tape that can afterwards be used to produce a moving picture.  The definition of 'cinematograph film' in Section 2(1) makes no reference to cinematography or any other process but concentrates chiefly on the essential characteristic of a sequence of visual images capable of being shown as a moving picture".

As the Supreme Court of Malaysia was construing a statutory provision which would appear to be identical to the provision the construction of which is at issue in the instant case, the decision of that Court must be considered as a persuasive authority.  Nonetheless, I think it should be mentioned that it is clear from the report that the issue as to whether a videotape is a cinematographic film was first taken in the appellate Court, there was no evidence before the appellate Court of the processes involved in bringing a film to a television screen via a videotape, and the party raising the point conceded that he was not pressing it and was prepared to leave the matter to the definition of the expression "cinematograph film" in the Malaysian Copyright Act of 1969.
	Mr. Clarke also argued that consideration of the definition of "cinematograph film" itself in Section 18(10) of the 1963 Act indicates that the definition is wide enough to encompass videotapes.  He argued that the words "recorded on any material of any description"  clearly contemplate a form of recording on material other than on the conventional translucent film reel and contemplate a method of recording other than the printing of the visual image on the material.   Moreover, he argued that the words "by the use of that material" are wide and do not necessarily  contemplate a transfer from that material to a moving picture on screen by a single process.  Any process capable of turning images into a moving picture meets the definition, it was contended.  In summary, Mr. Clarke relied on the broad scope of the definition for which he contended, as reflected in the reference to "material of any description" as the medium, and in the absence of a reference of any particular form of use of the material.  He contended that the definition does not require that the images in recorded form be capable of being seen as images, but that it is sufficient if they are capable of being transformed by process into images. 
	Mr Clarke made an alternative submission which goes to the second question raised in the issue.  Although the second question is framed as flowing from a negative answer to the first question, having regard to the submission made by Mr Clarke, the second question stands alone.  Mr Clarke submitted that a video tape comes within the definition of "copy", in relation to a cinematograph film, as defined in Section 18(10) of the 1963 Act because that definition includes, inter alia, any tape on which the film or part of it is recorded.  The context in which Mr Clarke suggested that this submission is relevant is that Section 18(4) restricts the making of a copy of a cinematograph film in which a copyright subsists and under Section 21(6) it is an infringement to sell or offer for sale an article in the knowledge that the making of the article constituted an infringement.  Therefore, so the argument goes, as I understand it, to sell a counterfeit videotape copy of a film knowing it to be a counterfeit copy is an infringement.  
	In reply Mr Mackey dismissed this alternative submission out of hand and his short answer to it was that it is not an infringement to sell a copy of something which itself is not an infringement.  
	As I understand it, there is a general acceptance by the parties that the type of  videotape technology which we know today was not in contemplation by the draftsman of either the UK 1956 legislation or the 1963 Act, when defining the expression "cinematograph film".  How then does one approach the construction of the definition?  A similar problem arose in Keane & Anor -v- The Commissioners of Irish Lights in which the issue was whether a Loran-C mast came within the definition of "beacon" in the Merchant Shipping Act, 1894.  The judgments of the Supreme Court were delivered on 18th July, 1996.  In his judgment, with which Blayney J. and Barrington J. agreed, Hamilton C.J. approved of the following passage from the judgment in this Court (Murphy J.):
	"I have no difficulty in accepting the desirability and, in general, the necessity for giving to legislation an 'up-dating construction'.  Where terminology used in legislation is wide enough to capture a subsequent invention, there is no reason to exclude it from the ambit of the legislation but a distinction must be made between giving an up-dated construction to the general scheme of legislation and altering the meaning of particular words used therein."

	On the topic of an "up-dating" versus a narrow interpretation of an Act, Barrington J. in his judgment stated:
		
	"Had the 1894 Act simply entrusted to the Commissioners of Irish Lights the management of 'aids to navigation' I would be happy to conclude that the Loran-C system of navigation was an aid to navigation within the meaning of the 1894 Act even though the system had not been invented when the 1894 Act was passed.  But the trouble is that the draftsman of the 1894 Act appears to have used terms which tie the Act to the technology of the times".

	In determining whether a videotape comes within the definition of "cinematograph film" in Section 18(10) of the 1963 Act, it seems to me that the proper approach is to look at the language of the definition in the light of Mr Brady's evidence as to the nature of a videotape and the process by which a moving picture is produced by it.  It seems to me that there are three basic ingredients in the definition of a cinematograph film, namely: 
(1) 	it comprises material of any description;
(2)	a sequence of visual images is recorded on that material; and
(3)	the manner of recording is such that by the use of the material either the visual images are capable of being shown as a moving picture or of being recorded on other material and by the use of that other material the visual images are capable of being shown as moving pictures.

	In the case of a videotape the first ingredient is clearly present, because a metal particle tape clearly qualifies as "material of any description".  The second ingredient is also present because, although a sequence of visual images is not observable on the tape, the information on the tape represents such a sequence and has been put on the tape with a view to reproducing the sequence.  In my view, there is no requirement in the definition that the sequence of visual images should be observable on the material; on the contrary, the draftsman provided for a broad range of recording media, including opaque material, and was non-specific about the manner of recording save that it should have the capacity to reproduce the sequence of visual images.  I think the third ingredient is also present in a videotape.  The manner in which the information representing the sequence of visual images has been put on the tape is such that the sequence of visual images which the information represents can be reproduced by using the tape, and, indeed, this is the whole purpose of putting the information on the tape.  In my view, there is no requirement in the definition that the tape itself should be capable of reproducing the sequence of visual images without the intervention of other technology.  Indeed, a series of frames on a conventional reel of film will not produce a moving picture without the intervention of a projector and the use of a screen.  While the manner of projecting images from frames on a conventional reel of film via a projector onto a screen may be more direct than transferring the visual images represented by the information on a videotape via the magnetic head in a VCR onto a television screen, both processes involve methods of recording which give the material which is recorded on the capacity to reproduce what is recorded.  	
	The definition of "film" in the UK 1988 legislation, supplemented by the expanded definition of "publication" in that legislation is undoubtedly wider in scope than the definition of "cinematograph film" in Section 18(10).  There may well be in existence forms of information technology which would not come within the definition in Section 18(10) but  would be captured by the 1988 legislation.  Be that as it may, I am satisfied that the language in Section 18(10) admits of production or reproduction of visual images by means of the videotape technology described by Mr Brady.  Accordingly, I hold that a videotape is a cinematograph film within the meaning of that expression in Section 18(10) of the 1963 Act.  
	Although it is not, strictly speaking, necessary to do so, I propose commenting on the alternative submission made by Mr Clarke in relation to the definition of "copy" in Section 18(10).  In my view, that submission does not stand up.  Copyright can subsist in a "cinematograph film" as defined in Section 18(10), subject to compliance with the provisions of the 1963 Act.  If it does, the doing of certain acts is proscribed by Section 18(4), including the making of a copy of the cinematograph film.  By virtue of Section 21(6) to sell an article in the knowledge that its making constituted an infringement is itself an infringement.  However, making a copy of a film is only restricted if it is a copy of a "cinematograph film", as defined, in which a copyright subsists.  What are at issue in the instant case are counterfeit copies of videotapes of films.  If, contrary to the view I have taken, a videotape does not conform with the definition of "cinematograph film" in Section 18(10), then a copy of a videotape would not constitute a "copy" of a "cinematograph film" within the meaning of Part III of the 1963 Act.