High Court dismisses Telstra’s application to appeal the White and Yellow Pages decision 08/09/2011

The Sydney Morning Herald reports that Telstra will seek talks with the Attorney-General on the need for legislative change, following the High Court’s decision to decline Telstra special leave to appeal a full Federal Court decision earlier this year that Telstra does not hold copyright over its Yellow Pages and White Pages directories.


To read the story click here: http://www.smh.com.au/business/telstra-calls-on-attorneygeneral-over-copyright-20110907-1jxnu.html

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Optus to fight the NRL and AFL over cloud storage of sports programs 30/08/2011

Closely following a benchmark decision in the US on cloud music services, Australia is set to host its own cloud storage lawsuit in the Federal Court – with internet service provider Optus pitched against the National Rugby League and Australian Football League.


The Sydney Morning Herald reports that Optus has launched a pre-emptive action designed to show that its TV Now service is not infringing the copyright of the NRL and AFL. [1] The TV Now service allows users to record free-to-air TV programs on Optus’s computer servers (an example of cloud storage) and then view them within 30 days using a web browser.


From the sports bodies’ perspective, the rights to screen the programs in question are sold to broadcasters and internet TV services for large amounts of money, and Optus’s TV Now service is making money from their intellectual property, free of charge. Optus takes the view that it is trading in storage, not content. The court will decide which of the parties is right.


As reported in our August News Service, a US court handed down a split decision in a copyright case involving MP3Tunes and EMI Music Group on August 22, which has significant implications for Google, Amazon and others in the burgeoning cloud storage business in the US. [2]


While District Judge William Pauley ruled that MP3Tunes had infringed copyright in relation to certain specific works (referred to in letters from EMI), he also found that for the most part, the service was protected by the US safe harbour rules of the Digital Millenium Copyright Act. In addition to relying on the safe harbor provisions for its defence, MP3Tunes also raised questions about whether the storage and streaming of files owned by users needed permission from rights holders in the first place.

[1] Sydney Morning Herald at: http://www.smh.com.au/business/optus-moves-to-protect-tv-now-20110829-1jii3.html

[2] Australian Copyright Council at: http://www.copyright.org.au/news-and-policy/details/id/2000/

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iiNet parties prepare for round three in the High Court 25/08/2011

Australia’s most high profile copyright litigation will head to the High Court now that film industry representative AFACT has secured special leave to appeal the Full Federal Court decision in Roadshow Films Pty Limited v iiNet Limited. As parties prepare for this third round of litigation, we summarise the state of the legal proceedings in the case.


A coalition of film studios sued internet service provider iiNet for infringement of copyright in the studios’ films In late 2008. A key argument was that the ISP was liable for its users’ infringements as it was aware of what was going on (having received notifications about such infringement from rights holders) and did not act to curb such activity, thereby authorising the infringements. However, the Federal Court decided in iiNet's favour, ruling that iiNet had not authorised the infringements.


AFACT then appealed to the Full Federal Court and while the appeal was dismissed, it was a mixed victory for iiNet as the Court did not preclude holding an ISP liable for authorsiation under different circumstances.


AFACT then announced its intention to seek special leave to appeal the case to the High Court. It appealed on six grounds that largely focus around two issues:


(1) Whether the Full Federal Court erred in its application of the principles of authorisation and following this, whether the subsequent finding iiNet did not authorise its users’ copyright infringements is incorrect; and


(2) Whether the Full Court erred in its treatment of the “knowledge” aspect (i.e. how much iiNet needed to know before sufficient knowledge of the infringements could be demonstrated). AFACT’s notification procedure and iiNet’s responses to this will be of relevance here.


The High Court can hear an appeal if one or more of its membership determine that the question of law to be answered is of sufficient public importance.


Counsel for AFACT argued that: “Authorisation is a practical test by which you can attempt to enforce or protect [rights] with someone who it is practical to deal with, namely, someone higher up the chain, such as the university as opposed to the individual student, or here, the ISP as opposed to the individual infringer at their computer”. [1]


Counsel for iiNet argued that the special leave questions did not themselves present any question of general importance, particularly as a number of the grounds were too heavily reliant on the particular fact circumstances of the case. [2]


Justice Crennan and Chief Justice French disagreed with iiNet’s argument and granted AFACT special leave for appeal. The High Court will hear five of the proposed six grounds of appeal (ground three was deemed to have been sufficiently covered in the other grounds).


AFACT and iiNet will now submit their motions and cross-motions for appeal. Whilst there is a possibility the High Court could begin hearing the matter later this year, it is unlikely a decision will be handed down before 2012.


See the transcript of the High Court application for special leave at:



[1] Catterns, D. in Roadshow Films Pty Ltd & Ors v iiNet Limited [2011] HCATrans 210

[2] Cobden, R. in Roadshow Films Pty Ltd & Ors v iiNet Limited [2011] HCATrans 210

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Government use of computer software creates waves 25/08/2011

Two matters currently before the Copyright Tribunal of Australia indicate a level of dissatisfaction with the way the government statutory licence operates in relation to computer programs.


Three different arms of the NSW Government (NSW Police, the NSW Ombudsman and Police Integrity Commission) have been charged with copyright infringement in the Federal Court by Micro Focus (US) Inc and others, over use of a computer program (ViewNow) to access records of police operational activity.


While the NSW Ombudsman sought to claim immunity under the Ombudsman Act 1974, an interlocutory judgment handed down in July held that the act did not protect the NSW Ombudsman from liability for copyright infringement. [1]


Related proceedings have also been brought in the Copyright Tribunal: presumably over whether the usage is covered by the government statutory licence, and the fixing of terms for use of ViewNow.


Meanwhile, another software company, Attachmate, has brought proceedings in the Copyright Tribunal against the Department of Defence. The action relates to an alleged breach of the government statutory licence by failing to disclose details of usage of the software. It has been reported that Defence security measures, which require computers to be wiped every six months, make the collation of this data impossible. [2] Such data would be relevant in calculating royalties.


Under section 183 of the Copyright Act 1968 Commonwealth, State and Territory governments have a broad statutory licence to use copyright material for the services of the Crown. Permission need not be sought in advance, however there is an obligation to inform the copyright owner of the use and to provide relevant information unless it would be contrary to the public interest to do so. If the parties cannot agree terms, they can be fixed by the Copyright Tribunal.


The government statutory licence and issues around Crown ownership of copyright have long been controversial. In 2005 the now defunct Copyright Law Review Committee released its report on Crown Copyright, which made significant recommendations for reform. [3] These have largely gone unaddressed.


It should be noted, however, that from October 2010 there is an obligation on Commonwealth agencies to comply with principle 8(a) of the revised Statement of IP Principles. This provides that when an agency negotiates an ICT procurement contract, there will be a default position in favour of the ICT supplier owning the software subject to the supplier granting the Commonwealth a licence to use the software in government activities. [4]


Both matters await hearing by the Copyright Tribunal.


[1] Micro Focus (US) Inc v State of New South Wales (New South Wales Police Force) [2011] FCA 787 (15 July 2011)

[2] http://www.itnews.com.au/News/257997,attachmate-accuses-defence-of-license-breach.aspx



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Music publishers make a deal with YouTube 25/08/2011

The legal settlement announced on August 17 between the National Music Publishers Association of America and the vast user-generated website YouTube is a major new development in an ongoing conflict between YouTube and copyright owners.


The settlement will allow the National Music Publishers Association (NMPA) to receive royalties from licensing agreements with YouTube, while the association has dropped its appeal of a US district court ruling made in favour of YouTube in 2010.


The NMPA was a plaintiff in a companion suit to one filed against YouTube by entertainment company Viacom in 2007. Viacom argued that YouTube was liable for infringing the copyright in thousands of Viacom works uploaded to the site by users. However, the court concluded that YouTube qualified for protection under the safe-harbour provision of the US Digital Millenium Copyright Act, which essentially provides protection to online service providers in cases where they are either not aware of the infringing activities of their users, or where appropriate action is taken, upon notification from rights-holders, to disable access to infringing content.


Viacom indicated its intention at the time to appeal the decision: "We believe that this ruling by the lower court is fundamentally flawed and contrary to the language of the Digital Millennium Copyright Act, the intent of Congress, and the views of the Supreme Court as expressed in its most recent decisions. We intend to seek to have these issues before the U.S. Court of Appeals for the Second Circuit as soon as possible.” [1]


The chief executive of NMPA, David Israelite, welcomed the settlement with YouTube: “This is a positive conclusion for all parties and one that recognises and compensates the work of songwriters and publishers going forward.” [2]


The appeal by Viacom – in which Viacom is seeking $1 billion in damages from YouTube – remains in effect, with oral arguments expected take place before the end of 2011. [3]


[1] Australian Copyright Council at: http://www.copyright.org.au/news-and-policy/details/id/56/

[2] NMPA media release at: http://www.nmpa.org/media/showwhatsnew.asp?id=57

[3] Bloomberg: http://www.bloomberg.com/news/2011-08-17/music-publishing-group-drops-appeal-of-youtube-copyright-infringement-case.html

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Mixed US verdict on MP3Tunes cloud storage 25/08/2011

On 22 August a US court handed down a split decision in a copyright case involving MP3Tunes and EMI Music Group, which has significant implications for Google, Amazon and others in the burgeoning cloud storage business.


While US District Judge William Pauley ruled that MP3Tunes (and its chief executive Michael Robertson) had infringed copyright in relation to certain specific works (referred to in letters from EMI), he also found that for the most part, the service was protected by US safe harbour rules of the Digital Millenium Copyright Act [1].


As reported in our June newsletter [2], MP3Tunes launched in February 2005, offering a service by which users can upload their digital music to the company’s digital locker (i.e. the cloud) and then stream this music back to their computers and various other devices. The site operates without licences from the rights holders and is quite similar in functionality to Amazon Cloud Player and Google Music. MP3Tunes also has a companion service called SideLoad, which aggregates links to free music files available on the web and allows users to save these files into their lockers.


EMI and its subsidiaries sued the operators of MP3Tunes (and SideLoad) in 2007, arguing that it was engaged in an unauthorised use of their music. MP3Tunes relied on the safe harbor provisions for its defence, as well as raising questions about whether the storage and streaming of files owned by users needs permission from rights holders in the first place.


[1] Paid Content at: http://paidcontent.org/article/419-mp3tunes-wins-on-dmca-but-founder-robertson-may-take-a-hit/

[2] Australian Copyright Council at: http://www.copyright.org.au/news-and-policy/details/id/1973/

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