In June 2016, Standards Australia commenced an arbitration against SAI Global in relation to SAI Global’s obligation under the Publishing Licence Agreement (PLA) to obtain Standards Australia’s consent before amending, modifying or revising Australian Standards or other licensed material.
The arbitral proceeding was heard before Mr Michael McHugh AC QC on a final basis in late 2017.
Mr McHugh made the following orders on a final basis:
1. A declaration that on the proper construction of the PLA, SAI Global is prohibited from amending, modifying or revising the standards and other normative documents delivered to SAI Global by Standards Australia, without Standards Australia’s consent, including by:
- Converting any such electronic documents to a different format; or
- Adding any functionality to such electronic documents, or permitting or allowing any third party to add electronic functionality to such electronic documents.
2. A further declaration that SAI Global had breached a clause of the PLA by, without the prior consent of Standards Australia:
- Converting 31 standards into ePub and XML format;
- Adding functionality to, or for use with, the ePub Converted Standards, or permitting or allowing a third party to add functionality to, or for use with, such documents;
- Allowing or assisting users of SAI Global’s “On the Go” mobile app to amend, modify or revise ePub Converted Standards.
3. Additionally, Mr McHugh declared that SAI Global had infringed copyright in certain Standards by:
- Reproducing, communicating to the public and authorising other persons to communicate to the public the ePub Converted Standards; and
- Reproducing the XML Converted Standards.
4. Mr McHugh also ordered injunctions that restrain SAI Global from:
- Publishing, distributing, marketing, selling, reproducing and communicating to the public any Licensed Material in a form other than in PDF or hard copy or otherwise as consented to by Standards Australia;
- Converting any electronic standards or other normative documents delivered to it by Standards Australia into a different format, without the consent of Standards Australia;
- adding any electronic functionality, or permitting or allowing any third party to add electronic functionality to, or for use with, any electronic standards or other documents without the consent of Standards Australia; and
- authorising, or threatening to authorise, other persons to engage in the conduct referred to in 4(a) and 4(b) above.
5. Mr McHugh also ordered that SAI Global make a payment to Standards Australia of $38,760.43 on account of the profits SAI Global made by its infringement of Standards Australia’s copyright.
The decision has been welcomed by Standards Australia as recognition of Standards Australia’s role in managing and overseeing the digital innovation of its content. Standards Australia also sees the decision as a catalyst to recommence a dialogue with SAI Global about how Standards Australia and SAI Global can work together to modernise the customer experience for users of Australian Standards for the remaining term of the PLA.
“Our first priority is to make the customer experience better – and that means offering contemporary digital products,” said Dr Bronwyn Evans, CEO of Standards Australia.
“Our objective has always been to ensure the viability and capacity of Standards Australia as a contributor to Australia’s economic future. Being able to distribute innovative digital content through appropriate channels and with appropriate checks, balances and commercial terms is a key part of this objective.”
Standards Australia looks forward to commercial discussions with SAI Global as to how the parties can work together to allow for innovation in the delivery of Standards Australia’s content.