One of this year’s seminal cases involved the constitutional validity of the Federal Government’s new plain packaging laws for cigarette packets, and whether these laws result in an “acquisition of property” (being various intellectual property rights) on unjust terms such that they are contrary to section 51(xxxi) of the Australian Constitution. The world first plain packaging laws require that nearly all distinguishing marks be removed from cigarette packets aside from a brand or business name written in a specified way.

In April this year British American Tobacco, Imperial Tobacco, Philip Morris and Japan Tobacco argued the case against the Tobacco Plain Packaging Act 2011 (Cth) (“the TPP Act”). They argued that in effect, the laws extinguish their ability to benefit from statutory intellectual property rights (such as trademarks and copyright images) as well as established goodwill and reputation. A majority of the High Court (Justice Heydon dissenting) rejected these arguments on the basis that there had been no acquisition of property within the meaning of section 51(xxxi).

The purpose of the Federal Government’s TPP Act is to reduce sales of tobacco products within Australia by prohibiting the use of intellectual property rights such as copyright images, trade marks and rights associated with the use of a get up, in order to distinguish one brand from another.

The tobacco companies complained that the new laws prevent them from making any real use of their existing intellectual property rights. While they may own the rights, they are unable to make use of them in any meaningful way. On this basis, the TPP Act effectively eliminates these rights [1]. The companies further argued that the Commonwealth had acquired property – being the use of, or control over, the retail branding of tobacco products in Australia [2].

The Commonwealth alternatively argued that there had been no taking of property and in any case, that it had not “acquired” any property [3].

The majority of the Court generally agreed that in order to invoke section 51(xxxi) there must be an acquisition by the Commonwealth and not merely a “taking”. Chief Justice French stated that, “the interest or benefit accruing to the Commonwealth or another person must be proprietary in character” [4].

While the majority of the High Court agreed that the intellectual property rights affected in this case generally amounted to property for the purposes of s 51(xxxi) [5], they were not satisfied that there was any acquisition of property by the Commonwealth.

Chief Justice French concluded that, “On no view can it be said that the Commonwealth…has acquired any benefit of a proprietary character by reason of the operation of the TPP Act on the plaintiffs' property rights”. His honour further stated that while the companies’ enjoyment of their rights had been restricted, this did not result in any corresponding benefit of a proprietary nature for the Commonwealth [6].

Justice Gummow also concluded that while there had been “sufficient impairment” of the rights in order for it to be characterised as a “taking” of the rights (at least in relation to the plaintiffs’ statutory intellectual property rights) there had been no “acquisition” of property [7].

While the constitutional challenge launched by the tobacco companies was unsuccessful, it is interesting to note that the TPA Act is currently under challenge at the World Trade Organisation level. Three countries, Honduras, Dominican Republic, and Ukraine have all lodged complaints against Australia in relation to the new legislation citing various treaty obligations under the TRIPS Agreement, the GATT and the TBT Agreement [8].

The plain packaging case is not the only case of its kind to consider the constitutionality (under section 51(xxxi)) of intellectual property laws that seek to constrain the rights enjoyed by intellectual property owners.

Earlier this year, in Phonographic Performance Company of Australia Limited (PPCA) v Commonwealth of Australia & Ors [9], the High Court considered the constitutional validity of the one per cent statutory cap on royalties payable by commercial radio stations for the use of sound recordings as prescribed by section 152 of the Copyright Act 1968.

The PPCA argued that there is no justification for protecting the commercial radio industry through a price cap, which in effect prevents the ordinary negotiation of royalty rates with record companies and artists. In particular, it argued that the cap introduced into the 1968 Act is unconstitutional because the imposition of the cap amounts to an acquisition of property (other than on just terms) of the exclusive right enjoyed by copyright owners of sound recordings under the previous Act.

However, the High Court confirmed that the introduction of the cap was constitutionally valid. While it accepted that the exclusive rights enjoyed by copyright owners in a sound recording are property for the purposes of section 51(xxxi), it held that the 1968 Act effectively replaced the 1911 Act. Upon the commencement of the 1968 Act, the previous Act ceased operation [10]. Given this, the cap could not be held to derogate from any right, because those rights only existed under the previous Act.

Justice Heydon stated that, “In short, the 1968 Act did not preserve the … rights under the 1911 Act and the 1912 Act. It abolished those rights. It substituted for them distinct and fresh rights – some more advantageous to those plaintiffs, some less. Thus ss 109 and 152 did not cause any property to be acquired” [11].

Previously an acquisition of property argument was also unsuccessfully raised before the High Court in Nintendo Co Ltd v Centronics Systems Pty Ltd [1994] HCA 27 [12].

It is interesting to consider these cases in light of the present Australian Law Reform Commission’s (ALRC) review into Copyright in the Digital Economy.

While in cases to date, the High Court has concluded that there has been no “acquisition of property” in relation to the limitation of the various intellectual property rights at issue, this does not mean that there could never be a situation where a limit on the enjoyment of intellectual property rights might be held to be unconstitutional. As Justice Heydon states in his dissenting judgement in the plain packaging case, “There is no doubt that a law which affects subsisting exclusive intellectual property rights can attract s 51(xxxi) of the Constitution” [13].

Therefore, when considering whether any new exceptions should be introduced into the present Copyright Act, any limitation of rights must be considered in light of whether their impact might raise arguments that the new law effects an acquisition of property on unjust terms.

Read the High Court’s judgment in the plain packaging case here:

http://www.austlii.edu.au/au/cases/cth/HCA/2012/43.html

[1] JT International SA v Commonwealth of Australia [2012] HCA 43 at 164.

[2] JT International, at 191

[3] JT International, at 155

[4] JT International, at 42

[5] JT International. See for example, Gummow J at 103-106 and at 137.

[6] JT International, at 42

[7] JT International, at 101

[8] http://www.wto.org/english/tratop_e/dispu_e/dispu_by_country_e.htm

[9] Phonographic Performance Company of Australia Limited v Commonwealth of Australia [2012] HCA 8

[10] PPCA, at 35

[11] PPCA, at 63

[12] Nintendo Co Ltd v Centronics Systems Pty Ltd [1994] HCA 27

[13] JT International, at 192.

Back to top | Permalink

Today’s hearing in the High Court marks the third round of litigation between the Australian Competition and Consumer Commission (ACCC) and Google over Google’s Adwords service.

Background to the case

Google derives revenue by displaying targeted advertisements (referred to as “sponsored links”) on the results pages of its search engine. The advertisements are generated by a system called “Adwords”. Sponsored links are either created by or at the direction of advertisers using Google’s Adwords program (which allows advertisers to create, change and monitor the performance of their sponsored links.) Each time a search query is entered into the Google website, Adwords runs an auction to determine which advertisements will be displayed and the order they will be displayed in. Adwords customers elect which auctions to participate in by nominating keywords. As part of the Adwords program, Google employs ‘creative maximisers’ who liase with customers. For example, there was evidence in this case that a ‘creative maximser’ advised the CarSales to nominate “Honda.com.au” as a keyword.

The ACCC first initiated proceedings in 2007 alleging Google had contravened section 52 of the Trade Practices Act 1974 (now s18 of Australian Consumer Law), engaging in conduct that was misleading or deceptive, or likely to mislead or deceive by publishing eleven advertisements on the Google search results page. The headline of each of the advertisements in question comprised a competitor’s name or trade mark, which linked users to the advertisers’ website.

At first instance, Nicholas J ruled in favour of Google, finding that although a number of the sponsored link advertisements were misleading or deceptive, Google had not made the representations and was merely communicating them to the user as an intermediary.

The Full Federal Court overturned this decision. Keane CJ, Jacobsen and Lander JJ found that Google had engaged in misleading conduct by providing the sponsored links as a response to users’ queries.

The appeal to the Full Federal Court concerned only four of the initial eleven advertisements dealt with at first instance (Just 4x4s Magazine, Alpha Dog Training, Honda, Harvey World Travel). The AdWords system has a “dynamic keyword insertion feature” which allows advertisers to nominate keywords, which are automatically inserted into the headline of the advertisement when they match a user’s search query. All four of the advertisements in issue at this stage of the litigation had headlines into which the user’s keywords were dynamically inserted by the AdWords system.

Issues before the High Court

The current issue before the Court is whether Google is responsible for the misleading implied representations made by the advertisements.

Google is arguing that they are not responsible for the implied representations because:

1. The sponsored link consists of three elements, the content of which is dictated by the advertiser, namely, the headline, advertising texts and the URL, and these would not exist but for the creation and direction by the advertiser;

2. Users of the search engine understand that the sponsored links are advertisements paid for by the advertiser; and

3. The misleading conduct alleged was the making of particular representations, namely, a commercial association or other relationship between two entities identified in the advertisement.

The ACCC is arguing that Google should be held liable for the breach given their involvement in the creation and dissemination of the advertisements:

1. Google used its proprietary algorithms to determine which particular advertisements would be eligible for display in response to a given query and determined which from amongst those eligible advertisements would be published, in response to a user’s query.

2. Google inserted the keywords from the user’s queries into the headlines of the advertisements.

3. Google collocated the headline with the advertiser’s URL and gave the headline the functional features.

The ACCC is also arguing that the conduct of the Google employees in assisting and advising advertisers to nominate name and product information of competitors as keywords is relevant to the assessment of Google’s conduct as a whole and should be reconsidered by the High Court.

Implications

Whilst this is not a case about copyright, the decision of the High Court is likely to have implications regarding the liability of online platforms that host third party content.

The High Court’s case information including today’s transcript can be viewed at:

http://www.hcourt.gov.au/cases/case_s175-2012

See the transcript of the application for special leave to the High Court at: http://www.austlii.edu.au/au/other/HCATrans/2012/160.html

Back to top | Permalink

The High Court has today ruled in favour of the Commonwealth Government in a dispute over its new plain packaging laws for cigarettes.

In April this year, British American Tobacco, Imperial Tobacco, Philip Morris and Japan Tobacco argued the case against the plain packaging laws before the High Court. The companies argued that the new laws are unconstitutional because they diminish the value of aspects of their branding.

In particular, it was argued that the laws are contrary to s.51(xxxi) of the Constitution, because they result in an acquisition of property (not being on just terms). It was argued that in effect, the laws extinguish their ability to benefit from their statutory intellectual property rights (such as trademarks and copyright images) as well as their established goodwill and reputation.

While the Court has released a statement that the new laws are not contrary to s.51(xxxi), the reasons for the decision will be published at a later date.

Read the statement from the High Court here:

http://www.hcourt.gov.au/assets/publications/judgment-summaries/2012/hca30-2012-08-15.pdf

Back to top | Permalink

Today the Copyright Tribunal of Australia has handed down its decision in Audio-Visual Copyright Society Limited (Screenrights) v Foxtel Management Pty Limited. The case involves the payment of royalties by Foxtel for the retransmission of broadcasts from free-to-air multi-channels. It follows on from a 2006 decision in which the Copyright Tribunal determined the royalties for the retransmission of free-to-air television broadcasts.

During the period between the 2006 decision and 2010 when Screenrights made its application to the Tribunal, 9 new free-to-air multi-channels launched on Australian TV. Foxtel argued that its retransmissions from these channels were covered by the 2006 decision. The Copyright Tribunal rejected this argument and has determined a royalty of 10 cents per subscriber per month (which is higher than what Foxtel submitted was the appropriate royalty rate and lower than what Screenrights contended for).

In their decision, Deputy President Jagot and Dr Sibly have provided some useful guidance for how such matters are to be approached in the future.

The decision is also interesting in light of broader debates about the value of television broadcasts. The Copyright Tribunal states [at line 188]

‘The evidence in the present case leads us to the same conclusion that the previous Tribunal reached that the benefits to Foxtel subscribers from the retransmissions and thus the value of those retransmissions to Foxtel are best described under the heading of “convenience”.’

The decision can be viewed here:

http://www.austlii.edu.au/au/cases/cth/ACopyT/recent.html

Back to top | Permalink

The Full Federal Court today decided in favour of the NRL, AFL and Telstra in the ongoing litigation that had pitted Optus against the two sporting bodies and Telstra.

Finn, Emmett and Bennett JJ’s decision held that:

- The maker of the recorded broadcasts was either Optus alone, or Optus and the TV Now user – with Optus and its users jointly and severally liable;

- Following from this – Optus couldn’t then rely on the section 111 “time shifting” provision in its defence.

Background to the litigation

The Copyright Act contains an exception allowing TV broadcasts to be recorded for watching at a later time in a private or domestic context (often referred to as “time-shifting”). This litigation is the first to tackle the question of whether firstly, it is legal for these recordings to be made on equipment operated by and located with a commercial third party and secondly, whether it is legal for these recordings to be stored on a cloud service operated by a commercial third party.

In August 2011, Optus launched its “TV Now” service, which lets users record free to air TV programs using Optus’ servers and store these recordings on Optus’ cloud. A user can then stream recorded programs to his or her devices (such as a mobile phone or computer). Users are given a limited amount of free recording time and can pay to have more. A user can only view a program that he or she has recorded – not other users’ recordings. Recorded programs are deleted after 30 days.

These recordings include NRL and AFL matches broadcast on the free to air networks. Optus’ rival, Telstra, had earlier signed a deal worth $153 million with the AFL for the exclusive online broadcast rights to AFL matches. Optus’ TV Now service effectively lets Optus offer a similar service - but without having to pay the AFL for the rights. After rumblings about the legality of the service and potential legal action, Optus took the matter to the Federal Court with the aim of having the service declared legal.

The key issue before the court at first instance was whether Optus’ service fell within the scope of the “time-shifting” exception. Rares J decided in Optus’ favour, which led to the NRL, AFL and Telstra appealing to the Full Federal Court. Additionally, Screenrights, (which administers the retransmission scheme) was granted leave to intervene as amicus curiae and made submissions at the appeal hearings. Our detailed analysis of the first instance decision can be read at http://copyright.org.au/news-and-policy/details/id/2045/

Read the full decision at:

http://www.austlii.edu.au/au/cases/cth/FCAFC/2012/59.html

or

http://jade.barnet.com.au/au/cases/cth/FCAFC/2012/59.html

Back to top | Permalink

The landmark iiNet dispute has concluded today with the High Court handing down its judgment in favour of iiNet. The Court unanimously held that iiNet had no direct power to prevent its account holders from using the BitTorrent system to infringe copyright in the appellants’ films. It also held that the information contained in the AFACT notices did not provide iiNet with a sufficient basis to take action. It therefore held that iiNet had not authorised the infringements.

The key issue before the High Court was the level of knowledge required before an internet service provider (ISP) will be found liable for authorising copyright infringements carried out by account holders, through the provision of access to the internet [1].

The dispute began in November 2008 [2] when several major film and television studios, (with the assistance of the Australian Federation Against Copyright Theft (AFACT)), filed an action in the Federal Court of Australia against internet service provider iiNet, alleging it had authorised the peer-to-peer file sharing activities of its users.

The Copyright Act contains provisions which enable an ISP to limit their liability for infringements that take place on their network. For example, if an ISP receives notice of allegedly infringing material on its network and promptly takes it down, it is likely to fall within the ‘‘safe harbour”. In the present case, AFACT had employed a company known as DtecNet to investigate and collect data on infringing activity carried out by iiNet account holders. It sent iiNet numerous notices with details of the infringements, and invited it to cancel, suspend or restrict the accounts of the customers mentioned in the notices. iiNet failed to take any action [3].

The scope of authorisation has been judicially examined in numerous cases, including the High Court decision of Moorhouse, in which the University of New South Wales was held liable for infringements carried out on photocopiers placed in its library [4]. Since then, there have been several other cases examining the issue. The iiNet litigation is the first of its kind to specifically consider whether an ISP can be held liable for infringements committed by account holders through the provision of internet access.

The safe harbour provisions also refer to any relevant industry code of conduct. While the iiNet litigation has been proceeding, industry players have been negotiating a code of conduct (For more information, click here). It is hoped that the outcome of the High Court’s decision will provide certainty for all concerned, and will provide a basis for the finalisation of the negotiations.

To view the summary, see: http://www.hcourt.gov.au/assets/publications/judgment-summaries/2012/hcasum16_2012_04_20_iiNet.pdf

To view the High Court judgment, see: http://www.austlii.edu.au/au/cases/cth/HCA/2012/16.html or at

http://jade.barnet.com.au/Jade.html#article=263754

[1] Roadshow Films Pty Ltd & Ors v iiNet Limited [2011] HCATrans 323 (30 November 2011)

[2] http://apcprojects.com/iinetdocs/iiNetApplication.pdf

[3] Roadshow Films Pty Limited v iiNet Limited [2011] FCAFC 23 (24 February 2011), at 195

[4] UNSW v Moorhouse [1975] HCA 26 (1975)

Back to top | Permalink

2012 has seen a rapid evolution in the way that copyright material is being made available in Australia.

Subscription Services

Subscription-based services are a broad category of service allowing users to access a whole catalogue of content that they can watch or listen to on-demand.

Unlike the traditional model, in which consumers would obtain music, film and other types of content by buying specific movies or films, subscription-based services let customers watch or listen to anything they want to at any time - without having to specifically purchase it.

Music

Several companies have begun offering music-orientated subscription services in the local market; these include MOG (launched June 2012), Spotify (launched May 2012), JBHiFi Now (launched December 2011), Rdio (launched February 2012), and Deezer (launched August 2012).

Most operate in a similar way: customers pay a monthly subscription fee and are given streaming access to a catalogue of licensed music online. In many cases, the service allows paid subscribers to also download music to mobile devices like tablets and phones for offline listening (useful for when there is no internet connection or when a user is on the move).

A user can listen to any music contained within the service’s catalogue at any time with the added benefit that they do not need to back up content as this is all stored remotely by the subscription music platform and delivered on demand. Users can usually access their music and synchronise playlists on desktops, laptops as well as mobile devices and tablets.

Some services offer a free account with limited functionality but most are based on a range of different monthly or yearly fees that determine what features are available to the user.

Such services provide a legal and licensed alternative to the unauthorised file sharing that takes place online, but also with the added flexibility of available music and use on multiple devices that unauthorised file sharing has previously facilitated. However, in a general sense, the remuneration to the songwriter from use of their music in a subscription service is usually less than the remuneration from a traditional sale of that single or album.

Film & TV

BBC iPlayer

BBC launched its iPlayer service in Australia in late September 2011. It runs on iPad, iPhone and iPod and Android devices and gives users on-demand access to a wide range of BBC programming ranging from older material to newer material.

Free users may watch material from a changing collection of free programming on a streaming-only basis. Paid users pay a monthly or yearly subscription that enables on-demand access to the complete iPlayer catalogue and may either stream programs directly to their device or download programs to their device (for example, to watch when an internet connection is not available).

As the content is available on-demand, a user can, at any time of their choosing, re-watch material or re-download material for viewing.

An article[1] published in The Age on February 27th, 2012 reported that Australia had the highest adoption rates for the iPlayer service, accounting for 20% of its global revenue.

Quickflix

Quickflix runs a subscription service that allows users paying a monthly subscription fee to access an on-demand catalogue of licensed movies and TV shows that can be streamed to the user at any time they chose. The streaming service does have a more limited catalogue than Quickflix’s DVD rental service at present, but this is expected to increase over time.

Quickflix can be accessed via a web interface on a desktop or laptop, on mobile devices, tablets, Xbox and Playstation 3 gaming consoles and some smart TVs from Sony, Panasonic and Samsung.

Similarly to the music services, the film and TV-based subscription services offer licensed material in a flexible way that takes away the removes the need to buy individual items.

Licensed catch-up TV services

The nature of broadcast TV means that there will be times when a viewer missed a show or misses one part of a multipart series. Short of buying the series on DVD, there were not many legal or licensed options to view missed programming unless it was directly purchased on a DVD, purchased through a digital vendor like iTunes or recorded at the time of broadcast by the viewer themselves.

Several networks began to implement “catch up” TV services, which each operate differently, but in most cases feature programs that have already been broadcast for a period of time (often two weeks) upon which they are taken down and replaced with more recently broadcast episodes.

ABC iView & other free to air networks

ABC’s iView is a video streaming service that allows users to watch programming that has been broadcast on the range of ABC TV channels (and in some cases before programs are broadcast on the ABC). Such a service allows users to view any programming that they may have missed and replaces the need for the user to have to make their own recording of that material at the time it is initially broadcast.

iView was initially launched in 2008 for access via the web – which left it largely confined to desktops and laptops. 2010-2012 has seen the broadening of the iView service across to other platforms that include Apple’s iPhone, iPad and iPod devices with an Android app also expected.

The ABC has also integrated iView apps into internet-connected TVs from Samsung, Sony and Panasonic (which allow iView to be watched directly from the TV with no other devices needed) and also integrated iView apps into the Xbox 360 and Playstation 3 console platforms.

The end result is that users can view the material on a variety of platforms and devices without needing to do any of their own format shifting or conversion because the ABC has enabled licensed access to the content across multiple platforms and devices. Such services also solve the issue of missing a program - the viewer often has a two-week window in which to watch the content online after its been broadcast.

Other free to air networks are implementing similar “catch up” services – for example SBS On Demand may be watched on its website as well as on the iPhone and iPad and the Seven Network’s Plus7 catch up service is available via its website as well as viewable on Playstation 3 and as an integrated TV app. There have been reports that the commercial networks will be extending beyond their catch-up TV websites into streaming content to apps on devices [2].

Foxtel

Foxtel operates a catch up TV service that allows users to select from a list of programs that have already been broadcast and download these to their Foxtel set top box for later viewing.

Foxtel also launched its Foxtel GO app for iPads in November 2012. The app allows Foxtel subscribers to receive a live stream of selected channels or select from a list of catch up programs to watch on-demand. The content can only be accessed via iPads at present, but the indication is that devices and features will be broadened in the future.

Licensed Content for Social Media

Many users of social media or people running a personal blog like to share what they may be listening to or watching with their friends or followers for various reasons.

This year has seen several services launch in Australia that offer licensed commercial content that users are able to embed or share on their social media profiles, blogs and websites.

Vevo

Vevo is jointly operated by several music companies and hosts music videos from a range of acts signed to Sony, Universal and EMI for free viewing online. Vevo launched in Australia in April 2012.

Vevo has its own website which allows sharing through Facebook or Twitter. Vevo also has a YouTube channel that enables users to watch music videos through Youtube as well as link to or embed the videos on their own pages.

Videos can be watched for free and in high quality HD video via the aforementioned social media platforms, but also through apps for iPhones, iPads, Android, Xbox and Windows Phone platforms.

In this case, music companies are making legal high-quality free versions of their video clips for popular artists available and allowing linking to and sharing of that content via several social media platforms.

Movieclips.com

Movieclips.com is a website that hosts thousands of licensed clips from movies from all the major film studios. Access is free and movie clips are tagged by mood, character, actor, director, year made and other elements that enable very specific search and discovery of film clips.

Any clips on the site can shared via links with other users on social networking sites like Twitter, Facebook, Gmail, Tumblr, Youtube or screenshots pinned to Pinterest or embedded by users into their own sites or PowerPoint presentations for personal, non-commercial uses.

Users can trim clips to get the exact part of the scene they want and create virtual greeting cards featuring scenes from movies.

Clips may be watched in standard or high definition and links to purchase the full movie are provided with the clip. Movieclips.com has its own YouTube channel facilitating viewing and sharing of clips through that platform.

The site also contains a number of “licensable” clips that can be licensed online via the site by users that want to use clips in a commercial setting. If a clip is licensable, then a ‘”licence clip” button becomes visible. The button leads to a page with several options that determine the licence fees for permission.

A similar site called Anyclip.com also operates an similar service that enables viewing of clips and sharing on social media.

Personal use of Vevo and Movieclips.com is free and the existence of high quality licensed sources of the content means users can rely on such a service as their source of content and avoid the legal issues raised by sourcing unauthorised content from online or making their own copies of the video clips and posting these online.

Digital Newspapers & Magazines

Devices in form factors such as 9 inch and 7 inch tablets are particularly conducive to reading digital magazines and newspapers. This provides an interesting new platform for publishers to deliver content on.

Until the arrival of such devices, content was usually in print form or on a traditional website – a different and less natural reading experience than printed magazines and newspapers.

Tablets and smart phone devices allow digital editions of magazines and newspapers to be read in a way more familiar to their print-based incarnations and offer an interesting hybrid for the user, with the benefits of digital but with the portability and form factor of print.

Several publishers now offer digital versions of their magazines specifically formatted for tablets or phones. Usually, these may be directly purchased by the consumer on an issue-by-issue basis or, automatically delivered to the customer as part of a monthly or annual subscription. New editions are available for download as they are released and in most cases, subscribers can re-download any magazine they were eligible to access during their subscription period. Digital newspaper apps will often automatically update the content daily.

One example in the magazine sector is the New Yorker magazine app, which allows users to either buy digital issues on a pay-per issue basis or purchase a monthly or yearly subscription that enables access to every issue in a given time period. Purchased magazines are downloaded to the device(s) and users are able to re-download any issues they have previously purchased but since removed from their device. The New Yorker’s publisher Conde Nast also has similar apps for its other magazines like Wired, Vogue and Vanity Fair.

Another example is Australian magazine publisher ACP Magazines, which in October 2012, launched digital editions of its magazines (such as the Australian Women’s Weekly, Rolling Stone, Harper’s Bazaar, Australian Personal Computer and Australian Geographic) on the Google Play platform.

Google Play is the content delivery hub for Android-based tablets and smart phones (akin to Apple’s iTunes Store) and features a magazine section whereby users can subscribe to and read digital editions of magazines across their devices. Magazine purchases are synchronise across the devices associated with a user’s account.

Additionally, print subscribers to well known magazines and newspapers like the Economist, Time, The Monthly, Sydney Morning Herald, the Australian are being given access to the digital editions of those magazines such as the website or specially formatted tablet version.

Where to next?

Many new services allow the user to access content on a variety of devices or platforms at any time or to access content in broad ways that weren’t previously possible as act as a disincentive to obtaining unauthorised copies material online.

Given than many of these models are still in their initial stages, it is too early to make any conclusions or broad statements about their success. More time is needed to survey the longer-term impacts, consumer uptake and financial viability of these models for creators.

Nonetheless, given faster internet speeds, increasing ubiquity of smart devices and increasing consumer willingness to buy digital content, the foundations are in place for future innovations to be set in motion to reach the goal of consumers being able to access content in the way they wish, but in a way that is viable for the creators of that content.

[1] http://www.theage.com.au/digital-life/computers/blogs/gadgets-on-the-go/aussies-flock-to-bbc-iplayer-20120225-1tv1b.html

[2] http://www.theaustralian.com.au/media/australians-love-to-watch-tv-online-and-pay-for-it-too/story-e6frg996-1226492991548

Back to top | Permalink

2012 has seen the European Union, UK and the US all making attempts to address the issue of how to deal with “orphan works”.

What are orphan works?

“Orphan works” is a term applied to material that does not have an identifiable copyright owner. Orphan works are in something of a limbo state as there is uncertainty surrounding their use (given that it’s not possible to obtain permission to use them and that working out whether copyright has expired often requires knowledge of when the creator died).

The question of what to do with such works is relevant for a range of institutions such as libraries, museums, galleries and others that have large collections of material. Orphan works are also relevant for any individual wanting to use an orphan work in his or her project.

Interested parties should read our “Orphan Works” information sheet for an outline of key issues. This is available at http://copyright.org.au/find-an-answer/browse-by-a-z/.

The European Directive

The European Council adopted its directive on certain permitted uses of orphan works [1] in October 2012. The directive was published in the Official Journal of the European Union on October 27, 2012.

Directives are effectively a statement of the end-goals that should be achieved in a given area. Each member state must work toward implementing the same end-goal, but it is up to each member state to amend and structure its domestic law to achieve the broader goals set out by a particular directive. EU member states have until 29 October 2014 to implement the directive into their domestic laws.

The directive primarily applies to cultural institutions such as libraries, educational institutions, archives, galleries and public broadcasters. Organisations have to identify potential orphan works and then conduct a “diligent search” to ascertain the copyright owner. When conducting the search, appropriate sources must be consulted (sources vary depending on the type of material being assessed and a list of relevant sources is included in the directive’s annex).

If after conducting a diligent search, no owner is identified, then the material is considered an “orphan work”. Once categorised as an orphan work, eligible institutions may then use the orphan work for purposes that “achieve aims related to their public interest mission” [2] without needing permission. Article 6(2) states that such uses include “in particular the preservation of, the restoration of, and the provision of cultural and educational access to, works and phonograms contained in their collection”.

Once a work is declared an orphan work in one member state, it is considered an orphan work in all other member states. However, the directive states that provisions should be put in place for rightsholders to end the orphan works status on material they later discover has been granted that status [3] and that some mechanism for fair compensation to rights holders be implemented [4].

The full text of the directive can be accessed at http://ec.europa.eu/internal_market/copyright/orphan_works/index_en.htm

UK Orphan Works Reform

The UK government has a proposed orphan works reform as part of its Enterprise and Regulatory Reform Bill (HC Bill 7). The orphan works components of the bill are primarily in provision 68(3) and if passed, will set in place the foundation for the scheme.

Under the scheme, authorised bodies will be able to grant licenses to people or companies wishing to use orphan works – in effect, stepping into the place of the copyright owner as licensor. An up-front payment would be taken and the money set aside for copyright owners that reveal themselves down the track.

The bill states that “for a work to qualify as an orphan work, it is a requirement that the owner of copyright in it has not been found after a diligent search made in accordance with the regulations” [5]. Material that has satisfied the “orphan works” requirement may be then be licensed for both non-commercial and commercial uses. This is in contrast to the European Directive, which does not permit licensing of orphan works for commercial purposes.

The UK’s proposed scheme also contains an “extended collective licensing” component that will allow a collecting society authorised for a certain class of materials “to grant copyright licences in respect of works in which copyright is not owned by the body or a person on whose behalf the body acts” [6]. The means that an approved collecting society will be able to provide a licence to use any orphaned material for commercial and non-commercial purposes – whether or not the creator is a actually member of that society.

Whilst there are expected to be “opt-out” provisions for creators that do not want to have their material licensed by the collecting society, the proposed UK scheme reverses usual copyright licensing practice (in which creators opt-in to licence or have their material licensed by another party).

This, particularly in light of the commercial uses allowed, has proven unpopular with a number of creator groups, particularly photographers (photographs are particularly susceptible to being “orphaned” online). US photographer groups have argued [7] that the scheme will allow a vast amount of non-UK material to be used without permission or compensation to the rightsholders, which will affect the value of the material as well as being uncertainty into licensing use of foreign works in the UK.

The bill has passed through the House of Commons, is currently before the House of Lords after receiving its second reading on November 14 and is next scheduled for a House of Lords committee hearing on December 3. We will have to wait and see whether arguments from stakeholders both for and against the scheme will lead to further amendments.

Read the full text of the bill at: http://www.publications.parliament.uk/pa/bills/lbill/2012-2013/0045/lbill_2012-20130045_en_8.htm#pt6-pb1-l1g65

The US Issues Paper

October saw the US Copyright Office announce an inquiry into orphan works, stating that it “has long shared the concern with many in the copyright community, that the uncertainty surrounding the ownership status of orphan works does not serve the objectives of the copyright system”[[8] The Notice of Inquiry was published on October 22 and submissions are being accepted until January 4, 2013.

The Copyright Office expressed an interest in whether relevant changes in the legal and business environment may foster a resolution of the issues and whether the most appropriate form of addressing the issue would be legislative, regulatory or voluntary.

The Notice of Inquiry frames the issues in two broad areas: the first being use of orphan works on an occasional, isolated or ad-hoc basis (for example, this may include a publisher, individual or filmmaker wanting to use orphan works material).

The second broad issue is how to address orphan works issues in the context of mass digitisation, projects such as preservation projects in museums or galleries or commercially run projects like the Google Books project.

For further information on the inquiry, as well as a list of US-based orphan works resources see: www.copyright.gov/orphan/

Relevance to Australia

Domestically, orphan works have been the subject of past enquires as well as the current ALRC Enquiry into copyright and the digital economy and several organisations such as SBS [9] and the National Film & Sound Archive [10] (which both hold significant amounts of orphan works material) have released statements about their policies on use of orphan works.

Issues under consideration in the ALRC review include (i) whether the current legal treatment of orphan works affects the use, access to and dissemination of copyright works in Australia and (ii) whether domestic copyright law should be amended to create a new exception or collective licensing scheme for use of orphan works.

Australian stakeholders will be monitoring international attempts at developing a solution to orphan works issues in light of the insight such implementations may bring to orphan works–related reform in Australia, if a future need arises.

[1] Directive 2012/28/EU

[2] Article 1(1)

[3] Article 5

[4] Article 6(5)

[5] Proposed provision 166A(3) in Enterprise and Regulatory Reform Bill (HC Bill 7)

[6] Proposed provision 166B(1) in Enterprise and Regulatory Reform Bill (HC Bill 7)

[7] See joint letter of 8/11/2012 to Dr Vince Cable from organisations representing photographers

- http://asmp.org/pdfs/US_UK68ERRB.pdf

[8] http://www.copyright.gov/orphan/

[9] http://www.sbs.com.au/aboutus/corporate/view/id/541/h/SBS-Statement-on-Orphan-Works-1.0-February-2011

[10] http://www.nfsa.gov.au/

Back to top | Permalink

Sharing recorded TV broadcasts on Clickview Exchange

Readers from any educational institution with a Part VA licence (administered by Screenrights) will be happy to know that Clickview Exchange has been classified as a resource centre.

This means that you can share your recorded TV programs on Clickview Exchange with other Part VA-licensed educational institutions.

For a full list of all the resource centres, see http://www.screenrights.org/content-users/australian-services/educational-license/resource-centres

Using digital music from iTunes and other stores in primary & secondary schools

Readers from primary and secondary schools with an APRA|AMCOS/ARIA Schools’ Music Recording and Access Licence, did you know that you can now use music obtained from legitimate online sources (for example, iTunes or Bigpond Music) for your school’s educational purposes?

For more information, see http://www.apra-amcos.com.au/musicconsumers/musicineducation/schools.aspx

Back to top | Permalink

2012 has been a very busy year in Copyright. So before we take a well earned Summer break, lets review some of this year’s developments.

Cases

There have been a number of landmark copyright decisions this year. Notable has been the Optus TV Now litigation. Justice Rares of the Federal Court handed down his decision in February, holding that Optus was able to rely on the time shifting exception in s 111 of the Copyright Act to operate its TVNow service. See our news alert here.

Leave to appeal was immediately granted and in April the Full Federal Court overturned this decision. See our news alert here. Optus sought leave to appeal to the High Court, but this was refused in September. The speed with which the litigation was resolved is striking and indicates the significance of the interests at play. While the litigation may be over, the controversy continues in copyright circles.

The role of Internet intermediaries continues to pose difficult issues for copyright law. In April the High Court held that iiNet had no direct means of controlling the activities of its customers and therefore was not liable for authorising the infringements occurring on its network. See our news alert here.

Online infringements continue to pose a huge problem for copyright creators and producers. It is hoped that 2013 will see the content and communications industries arrive at a workable solution for all.

It is also worth mentioning a decision of the Federal Magistrates Court which contributed to our limited case law on moral rights. As reported in February, the case involved an Australian DJ who had remised the song of another artist. At a time when exceptions to copyright are being debated, this case raises some interesting issues. See our news alert here.

And recently, the Full Federal Court provided some more guidance on the level of originality required for copyright protection. Holding that copyright subsisted in a compatibility chart for printer and computer consumables. Tonnex International Pty Ltd v Dynamic Supplies Pty Ltd [2012] FCAFC 162 https://jade.barnet.com.au/Jade.html#article=286327

In this newsletter we also discuss the recent plain packaging decision of the High Court. See our news article here. While not directly relevant to copyright, it raises some important issues about intellectual property rights as property.

There have also been a number of significant decisions in other jurisdictions. In July we reported on a group of decisions of the Supreme Court of Canada in relation to fair dealing. See our news alert here. The reading down by the Court of the fair dealing purposes marks a distinct shift from Australian law on fair dealing.

The doctrine of fair use has continued to be tested in the American courts. Recently, the Authors Guild has appealed the controversial decision of Justice Baer of the US District Court that mass digitisation of books for indexing amounted to transformative use and was therefore fair use. We will be following the case with interest and providing updates to you in 2013.

Policy

While no new copyright legislation has been introduced in 2012, there is certainly a lot going on the policy front.

The much awaited Beijing Treaty was concluded in July and it can be expected that the Government will commence consultations on its implementation in the New Year. See our news alert here.

The Report of the Convergence Review was released in April. See our news alert here. While the report does not focus on copyright issues, it is likely to have significant issues for copyright law and policy. The first package of reforms was announced by the Government last week. http://www.minister.dbcde.gov.au/media/media_releases/2012/193

And in the UK, Richard Hooper released a report on the establishment of a digital copyright exchange. We were lucky enough to have Mr Hooper visit Australia in October and make a presentation to the Copyright Society of Australia. His work certainly provides food for thought. See our news article here.

The Attorney-General’s Department is currently conducting inquiries into extending the legal deposit requirements to digital material and on exceptions to technological protection measures. The Council’s submissions are available below:

• Apr 2012 Submission to AG on Extending legal deposit click here

• Aug 2012 Submission to AG on TPMs click here

• Oct 2012 Submission to AG on TPMs click here

The main focus this year has been on the Australian Law Reform Commission’s inquiry into Copyright and the Digital economy. The inquiry is looking at the adequacy and appropriateness of the exceptions to copyright and existing statutory licences and the digital economy. The ALRC released a lengthy Issues Paper in August and at the time of writing, submissions have just closed. The Copyright Council’s submission is available here. The ALRC is due to report in November 2013.

Business Models

2012 has also been notable for the proliferation of new business models. In this newsletter, we take some time to look at this, see article here.

PwC report

In 2012, the Copyright Council was pleased to commission a new report from PwC looking at the economic contribution of Australia’s Copyright Industries. In case you didn’t realise, copyright industries are a really significant part of the Australian economy.The report is available here.

And for those of you who weren’t at the launch, you can watch a video of the event, including the speech by the Hon Mark Dreyfus QC MP and vox pops with Australian creators. View here.

As I write this, we have just published two new educational books, see our bookstore. We are also getting ready to launch our 2013 National Seminar Program view dates here.

The Copyright Council is always happy to receive feedback so let us know if you have any suggestions.

In the meantime, have a happy, healthy festive season. And go out and enjoy some Australian copyright material!

Back to top | Permalink

The issue of how copyright is operating in the digital age is being reviewed not only in Australia, but also at an international level. In July this year, Richard Hooper CBE and Dr Ros Lynch released a report, Copyright Works – Streamlining copyright licensing for the digital age, which discusses options for improving licensing processes in the digital era. Hooper was appointed by the UK Government to lead a review into the feasibility of establishing a cross-sectoral Digital Copyright Exchange following recommendations made by Professor Ian Hargreaves in the 2011 Hargreaves Report [1].

The first phase of the Hooper Review was completed earlier this year and involved investigation into whether copyright licensing is presently fit for the digital age. In the report Rights and Wrongs published in March this year, Hooper concludes that on the whole, it is not [2]. The report states that in comparison with other countries, the UK’s licensing processes fare well. However, it also says that much could be improved. In particular, some of the outstanding issues identified with current licensing processes include:

• Complexity of licensing processes

• Complexity in terms of the organisations that provide licences

• Imbalance between what is available in digital formats, and what is available in physical formats

• Difficulty in obtaining information about who owns what rights in which country

• A lack of common standards in terms of expressing, identifying and communicating rights information across sectors and between nations [3].

The recently released second phase report then poses some suggestions for improvement to the way copyright licensing is carried out. It states that while there have been improvements in this area since the release of the Hargreaves review, there is “no room for complacency. The drive to streamline licensing processes further will be a constant for the creative and internet industries in the years to come” [4].

In particular, the Report emphasises the importance of improving rights data management in order to better facilitate the licensing process [5].

The Report is also supportive of the establishment of a UK-based “Copyright Hub” where copyright owners can choose to register their works if they wish, and where copyright licensees can go (as a first point of call) to obtain licences. It’s proposed that the Hub will link to national and international copyright exchanges, rights registries and other rights related databases so that information is centrally available through one source.

The Report also states that a focus of the Hub will be on facilitating a high volume of low value copyright transactions (as opposed to larger end, high value deals which are negotiated independently). Examples of the sorts of transactions envisaged that the Hub might facilitate include a user posting a video on YouTube, a small start-up wanting to use text and images, or a publisher wanting to use a diagram in a publication [6]. The idea behind facilitating smaller transactions is that many of these situations may not be licensed due to difficulties faced in obtaining licenses for small values. Yet, in theory, if such licenses could easily be obtained, the volume of licensing should amount to a worthwhile return for rights holders.

The Hub will also, amongst other things, be the place to go for copyright education and to assist people with direction on where they can obtain further information if necessary.

In the addition to making improvements to rights data information, and facilitating small cost transactions, the Report also encourages the copyright industries to continue efforts to develop new, streamlined licensing models. The Report discusses the concept of “Repertoire Imbalance” – the idea that if a particular work is not available online, the temptation will be to locate an illegal copy. It suggests that if the imbalance between what is available in physical formats and what is available digitally is rectified, the perception by users that there is a problem in terms of availability (such that copyright infringement can be “justified”) will be counteracted.

The Report notes that going forward, the creative industries have agreed, in principle, to fund an office to continue work on coordinating cross-sector and cross-boarder licensing initiatives for one year at the first instance [7]. It will be interesting to watch this space to see what further developments ensue.

This is not the only project of its kind to suggest a centralised system for copyright licensing and rights information storage. In Australia, for example, Professor Michael Fraser has carried out extensive work into investigating his idea for a National Content Network [8].

The idea behind a centralised system for copyright licensing is in theory very attractive. In particular, if fully operational, centralised licensing hubs could serve to improve the volume of licensing carried out, particularly where no pre-existing licensing mechanism is available in relation to the exercise of the particular rights.

Such systems are also often posited as a solution to orphan works problems. It is the practicality of coordinating the interests of rightsholders both across sectors and across jurisdictions that poses the biggest challenge to such recommendations being implemented.

Read the second phase Report here:

http://www.ipo.gov.uk/dce-report-phase2.pdf

[1] Professor Ian Hargreaves. Digital Opportunity: A review of intellectual property and growth, May 2011. http://www.ipo.gov.uk/ipreview-finalreport.pdf

[2] Richard Hooper CBE. Rights and Wrongs: Is copyright licensing fit for purpose in the digital age?, March 2012. http://www.ipo.gov.uk/dce-report-phase1.pdf

[3] Rights and Wrongs, at 7

[4] Richard Hooper CBE and Dr Ros Lynch. Copyright Works – Streamlining copyright licensing for the digital age, July 2012, at 1.

[5] Copyright Works, at 10

[6] Copyright Works, at 2 and 20

[7] Copyright Works, at 5

[8] http://clcuts.blogspot.com.au/

Back to top | Permalink

The Australian Law Reform Commission (ALRC) today released the Issues Paper for its current inquiry into Copyright and the Digital Economy.

Headed by Professor Jill McKeough (Dean of Law at the University of Technology, Sydney), the review is focusing on the suitability of current exceptions and statutory licences in the evolving digital marketplace.

The ALRC seeks comment on a wide range of issues, some of these include:

Time-shifting exceptions and private online use of material

Australian copyright law contains an exception allowing individuals to record TV broadcasts on their own devices for later private and domestic viewing.

Technological developments now allow third-parties to record the broadcasts and store these online in the cloud for the user to then remotely access and view on his or her connected devices. This issue is being considered by the courts in litigation relating to the Optus TV Now service.

There is some debate as to what extent private users can utilise third-parties to record material on their behalf and then communicate this to them via online platforms when relying on the private use exceptions.

Question 9 asks:

(a) should it matter who makes the recording, if the recording is only for private or domestic use; and

(b) should the exception apply to content made available using the internet or internet protocol television?

The increasing pervasiveness of social networking and user–generated online sites and the use of copyright-protected material on such sites gives rise to Question 12 that asks “Should some online uses of copyright materials for social, private or domestic purposes be more freely permitted?” and if so, what limits should be placed on such an exception?

Technical activities such as caching, back-up, data mining and cloud computing:

A number of websites and other online enterprises reproduce and communicate copyright material for technical reasons such as operational, data security or data integrity purposes. Australian law is presently unsettled on aspects of such copying.

For example, a search engine may store temporary reproductions (referred to as “caching”) content to power its search platform, or a company that backs up their data or stores it on a cloud-based platform (which involves storing both the data itself as well as copies of that data on various servers in different locations).

Question 4 asks whether copyright law should be “amended to provide for one or more exceptions for the use of copyright material for caching, indexing or other uses related to the functioning of the internet?” If so, how should such exceptions be framed?

Question 6 asks whether copyright law should “be amended, or new exceptions created, to account for new cloud computing services, and if so, how?”

The law is also currently unsettled on the issue of individual users uploading and storing their copyright-protected material with third-party online services. Question 10 asks whether copyright law should “be amended to clarify that making copies of copyright material for the purpose of back-up or data recovery does not infringe copyright, and if so, how?”

Fair Use

At present, Australian copyright law contains “fair dealing” exceptions, which allow copyright material to be used for a number of specified purposes (such as parody or satire and criticism or review).

US law contains a “fair use” provision which allows copyright material to be used without permission but differs from Australian “fair dealing” in that it has a broader, but less certain application that isn’t limited to use for a particular purpose.

Question 52 asks whether domestic law should “be amended to include a

broad, flexible exception? If so, how should this exception be framed? For example, should such an exception be based on ‘fairness’, ‘reasonableness’ or something else?”

Transformative Uses

Transformative use occurs when a pre-existing work (such as a song, film or image) is integrated into a new work in such a way that it seen in a new light or recontextualised in a new and original way. Some “mashups” are an example of a transformative use. The doctrine is associated with US copyright law relating to “fair use”.

Digitisation of media along with more powerful software tools for manipulating such material has allowed people to create and widely distribute their own mashups, remixes and other works involving manipulation of sound, images and film created by others.

There is no specific “transformative use” exception under Australian law. Rather, those using pre-existing source material must look to general copyright principles and other exceptions (such as fair dealing) or if none apply, then seek permission to use the source material.

Question 15 asks whether “the use of copyright materials in transformative uses should be more freely permitted?”

Contracting out of exceptions

There is some debate about the role of contract and copyright exceptions. Question 55 asks whether copyright law should “be amended to prevent contracting out of copyright exceptions, and if so, which exceptions?”

Other issues

Additionally, the paper contains questions relating to the efficacy of the current statutory licensing schemes for educational institutions and the special exceptions for libraries and archives, particularly in regard to the evolving digital context.

Submissions to the ALRC are due on 16 November 2012. The ALRC is expected to release its report by the end of November 2013.

The Issues Paper can be downloaded from the ALRC’s website at http://www.alrc.gov.au/publications/copyright-ip42

For a comprehensive table of the exceptions and statutory licences in the Copyright Act, see our information sheet “Exceptions to Copyright” available under “E” from our website at http://copyright.org.au/find-an-answer/browse-by-a-z/

Back to top | Permalink

Just days before the High Court of Australia is due to hear an appeal in the iiNet matter (30 Nov - 2 Dec), an industry body representing Australian ISPs, the Communications Alliance, has released a proposal to address online copyright infringement.

Telstra Bigpond, Optus, iiNet, iPrimus and internode are all signatories to the Communications Alliance proposal, under which users would receive an education notice if suspected of online infringement. Repeat infringers could attract up to three warning notices within a 12-month period, after which their details could be passed on to copyright holders to allow for legal action.

To read the Communications Alliance proposal, go to:

http://commsalliance.com.au/

Back to top | Permalink

The UK’s “temporary copying” exception is likely to be at issue in an appeal of the decision in the Meltwater News case by the Public Relations Consultants Association (PRCA).

According to recent reports, the PRCA’s appeal of the decision made by the UK Court of Appeals will focus on whether the end users of the Meltwater News media monitoring service are covered by the UK “temporary copying” exception when they access web pages through the service [1].

The public relations group Meltwater offers UK businesses a paid-for online media monitoring service. In January 2009, the NLA – a copyright collecting society acting on behalf of the majority of the UK’s national newspapers – introduced licences to cover paid-for online media monitoring services such as those offered by Meltwater. Under the new licences, the NLA requires payment from media monitoring services crawling its content, as well as payment from the end-users receiving the service [2].

Meltwater argued that the use of the monitoring reports by end users does not infringe copyright and so their clients do not need a licence. However, in July this year, the Court of Appeal found that the receipt and use by an end-user of Meltwater news would constitute an infringement in either, or both, the headlines or the articles on the publisher websites [3].

The PRCA has said in a recent press release that the licensing schemes have, “resulted in an interpretation of UK copyright law by the Court of Appeal which effectively puts millions of UK citizens into conflict with the law every time they visit a website or click on a link because the inevitable transient copies of webpages made in the process of browsing are not exempt from copyright by the temporary copies exception” [4].

The temporary copies exception essentially exempts certain incidental temporary copying that occurs as part of a technological process (such as when accessing a webpage) [5]. However, Managing Director of the NLA, David Pugh, has argued that the case “does not affect ordinary people using websites. It is about the commercial exploitation of newpaper content by commercial operators in ways which are not permitted by the wesites…” [5].

The PRCA and Meltwater have also taken action in the UK Copyright Tribunal regarding the overall fairness of the NLA’s licensing schemes and are still awaiting this decision.

[1] http://www.journalism.co.uk/news/news-aggregator-wins-right-to-appeal-in-online-copyright-case/s2/a546653/

[2] http://www.copyright.org.au/news-and-policy/details/id/1872/

[3] http://www.copyright.org.au/news-and-policy/details/id/1989/

[4]https://prca01.worldsecuresystems.com/_blog/Latest_News/post/PRCA_welcomes_opportunity_to_appeal_NLA_decision_to_Supreme_Court/

[5]http://www.nla.co.uk/uploads/public/Press%20Releases/111107%20NLA%20Supreme%20Court%20statement%20FINAL.pdf

Back to top | Permalink

We have all become accustomed in recent years to searching for real estate online. A recent Canadian case between two companies in the real estate business raises some interesting issues about doing business online.

The plaintiff, Century 21, is a real estate franchise whose website allows searches according to various categories, including locality. The website was publicly accessible but Century 21 sought to restrict its use by competitors through certain terms of use. These terms gave a licence to use the website and its contents for personal use while requiring users to seek permission if they wanted to link to the Century 21 website. There was no “I accept” icon; the terms were simply displayed at the bottom of the website’s homepage.

The defendant, Zoocasta, also operates a real estate website with features including local area information and property listings. The Zoocasta site used robots (automated software programs) to scrape data (a form of indexing that looks for specific information on selected webpages with known layouts) from other sites to collate this information. There was evidence that the Zoocasta site indexed and linked to the Century 21 site, including reproductions of the full property listings.

The case proceeded on a number of grounds, including breach of contract, copyright infringement and trespass to chattels. The court’s findings in relation to contract, subsistence of copyright and fair dealing are particularly interesting.

1. Contract

The court examined the development of the law in relation to electronic contracts and concluded that Century 21’s terms of use constituted a binding contract between the parties. On the facts before it, the court found that Zoocasta had actual knowledge of the terms of use and that there had been a breach of contract.

This finding builds on the existing law in relation to “clickwrap” “shrinkwrap” and “browsewrap” agreements, and will give significant comfort to website operators seeking to manage use of their sites by third parties.

2. Subsistence of copyright

Recent case law has examined whether copyright can subsist in compilations such as medical records, telephone directories and television listings. In this case the court found that copyright did subsist in the individual property descriptions and photographs (although not in the general factual information on the website).

3. Fair Dealing

Canada, like Australia and the United Kingdom has a fair dealing exception which operates as a defence to copyright infringement. In this case, the defendant tried to argue that its use of the Century 21 property listings was a fair dealing and that they were therefore not liable for copyright infringement The court first examined whether the use fell into one of the fair dealing purposes (such as news reporting, research or study, criticism or review). Interestingly the court held that the fact that Zoocasta’s use was clearly commercial did not by itself take its use outside a fair dealing purpose. The court next examined whether the use was fair in all the circumstances. In doing so, it looked at the character of the dealing, the alternatives to the dealing, the amount of the dealing and the nature of the work and concluded that the dealing had not been fair. Hence Zoocasta was found to have infringed copyright in the property listings.

While fair dealing always requires a case-by-case analysis, the Supreme Court of British Columbia’s discussion in the Centruy 21 case will provide useful guidance on the parameters of fair dealing.

The decision is available here http://www.courts.gov.bc.ca/jdb-txt/SC/11/11/2011BCSC1196.htm

Back to top | Permalink

The High Court has allocated December 1 and 2 for film industry representative AFACT’s appeal of the Full Federal Court decision in Roadshow Films Pty Limited v iiNet Limited.

A coalition of film studios unsuccessfully sued internet service provider iiNet for infringement of copyright in the studios’ films In late 2008. 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 sought and secured special leave to appeal the case to the High Court – with the appeal now set for December 1 and 2. The appeal largely focuses 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.

Click here for link to the High Court’s case information: http://www.hcourt.gov.au/cases/case-s288/2011

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

http://www.austlii.edu.au/au/other/HCATrans/2011/210.html

Back to top | Permalink

Australia will host its first lawsuit involving ‘cloud storage’ in the Federal Court on December 19 this year, with the AFL and NRL seeking a permanent ban on Optus copying, recording or replaying their games over its TV Now Service. [1]

The internet-based TV Now service allows users to record and store free-to-air TV programs on Optus’ computer servers (an example of cloud storage) and view them within 30 days using a web browser. However, Telstra recently agreed to pay in excess of $150 million for exclusive rights to stream the sporting events live on the internet and is concerned that TV Now will allow Optus customers to watch the games online with very little delay, thus de-valuing its exclusive rights.

Telstra, the AFL and the NRL are reportedly seeking unspecified damages from Optus, including the profits Optus has made from the service since it was launched in July this year. [2] Optus filed a pre-emptive strike – a claim for protection against infringement notices from the sporting bodies – in August, and the AFL, NRL and Telstra have now filed cross-claims.

Optus' defence is likely to centre on amendments to the Copyright Act introduced in 2006, which allow private individuals to record TV programs to watch at a later time without infringing copyright. The relevant argument will be that individual Optus consumers are doing the recording (through software downloaded to receive the TV Now service), not Optus, so that no infringement is occurring. The counter argument by the sporting bodies and Telstra is likely to be that the programs are being stored on Optus equipment and distributed by Optus for trade, thus cancelling out the personal use defence. The court’s decision is likely to set a precedent in Australian copyright law.

Not surprisingly, the legal parameters of cloud storage services are also being mapped out in Europe and the US. As reported in the Council’s August News Service, a US court handed down a split decision in a copyright case involving cloud storage service MP3Tunes and EMI Music Group on August 22. While the court ruled that MP3Tunes had infringed copyright in relation to certain specific works, it also found that for the most part, the service was protected by the US safe harbour rules of the Digital Millennium Copyright Act. In addition to relying on these 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.

A recent report in the US publication Politico [2] noted that content providers are currently lobbying Congress to make sure that web-based cloud storage isn’t used to facilitate illegal trade in copyright materials: “Content makers are careful to say they don’t want to encourage lawmakers to crack down on the cyberlocker technology, but they are focused on stopping infringing behaviour that occurs on file-sharing services…

“The issue has also caught the eye of the US Copyright Office, which both the Senate and House judiciary committee have consulted in crafting their anti-piracy bills. Maria Pallante, the head of the Copyright Office, acknowledges that tackling infringing cyberlockers presents ‘some really difficult questions’ when it comes to copyright law.” [3]

[1] Sydney Morning Herald at: http://www.smh.com.au/entertainment/tv-and-radio/afl-takes-optus-to-court-over-rights-20110926-1ktnr.html

[2-3] Politico (21/9/11) at: http://www.politico.com/news/stories/0911/64053.html

Back to top | Permalink

The Australian Society of Authors has joined the USA’s Authors Guild, the Quebec Union of Writers and a number of individual authors in filing suit against a partnership of research libraries and five universities which have digitised a large number of books without permission from the authors.

The complaint submitted in a US District Court claims that the universities obtained unauthorised scans from Google of an estimated seven million copyright-protected books: “By digitising, archiving, copying and now publishing the copyrighted works without the authorisation of those works’ rightsholders, the universities are engaged in one of the largest copyright infringements in history.” [1]

Individual authors involved in the suit include Australian author Angelo Loukakis, Fay Weldon and Shakespeare scholar James Shapiro. The universities named in the suit are the University of Michigan, University of California, University of Wisconson, Indiana University and Cornell University.

Rather than seeking damages, the plaintiffs are asking that the books be taken off the universities’ servers and held by a trustee.

For more details, click on the link below.

[1] New York Times at: http://www.nytimes.com/2011/09/13/business/media/authors-sue-to-remove-books-from-digital-archive.html

Back to top | Permalink

Francis Gurry, the Director-General of the World Intellectual Property Organisation, addressed the recent Copyright Law and Practice Symposium on copyright reform at the global level.

To read his speech, click here.

Back to top | Permalink

Public submissions to the Attorney-General’s consultation on revising the scope of the Copyright Safe Harbour Scheme closed on 22 November.

The rationale for the safe harbour scheme is to provide legal incentives for service providers to work cooperatively with copyright owners to deter copyright infringements that are not initiated or controlled by these service providers, but which occur through their systems or networks.

Currently, Carriage Service Providers (CSPs), as defined under the Telecommunications Act 1997, are the only type of service providers that qualify for the safe harbour remedial limitations. The Government has proposed expanding the scope of the scheme to include other service providers undertaking the kinds of activities covered by the scheme. The Attorney-General’s Department invited submissions from interested stakeholders and will now make its deliberations on the matter.

To see the Copyright Council’s submission to the safe harbour consultation, click here:

http://www.copyright.org.au/admin/cms-acc1/_images/7517789194ed4128f27ba8.pdf

Back to top | Permalink

Australian fashion designer Collette Dinnigan has landed in the middle of a copyright dispute concerning the use, without permission, of photos of Kate Middleton wearing a Collette Dinnigan design. The dispute raises interesting issues about the rights of fashion designers in their creations, the rights of media photographers in their photos, and the scope of the Australian fair dealing exceptions – in particular fair dealing for the purposes of reporting the news.

According to a recent article published in the Sydney Morning Herald, the photos of Middleton, which were taken by photographers belonging to London-based agency Ikon Pictures, were reproduced by Dinnigan’s press agency in a media release as well as on her Facebook page. Dinnigan’s company has reportedly received several letters requesting payment for use of the photos but it appears the company will seek to rely on the fair dealing defence for reporting the news.

What is interesting is that Dinnigan owns the dress design and copyright protects unique fashion designs. In theory, a photographer would need to seek permission from a designer to take a photo of a unique fashion garment. However, the designer will usually lose copyright protection once the fashion item is commercially applied. At this point, a photographer would be free to photograph it without infringing any copyright.

Copyright also protects original photographs and the value for the photographers in this case lies in the fact that a celebrity has been captured. These kinds of photos can be licensed for many thousands of dollars and safeguarding the rights is imperative for a photography business.

Australia has a number of fair dealing exceptions, including for the purposes of reporting news. Arguably, the fact that a high profile individual, like the Duchess of Cambridge, is wearing a particular design is a newsworthy event for a fashion designer. But to rely on fair dealing, you also need to be able to establish that the use is fair in all the circumstances.

In one sense it might be argued that the particular use was fair, given that it is the designer’s own work that is featured in the photo. But in another sense, it may not be fair where the use has jeopardised a photographer’s chances of further licensing deals. Also, the availability of other options for reporting news such as linking back to the original photos on the internet or purchasing the rights to use the photos, rather than reproducing them without permission, may be relevant in this case.

Read the full article here:

http://www.smh.com.au/lifestyle/fashion/royal-photographer-to-sue-dinnigan-over-dress-image-20111111-1nbn7.html?skin=text-only

Back to top | Permalink

A recent end-of-year exam set by the Victorian Curriculum and Assessment Authority (VCAA) has raised some interesting copyright issues for writer and columnist Helen Razer.

The Age reports[1] that the VCAA used an article written by Razer in one of its English exams, made several modifications to the text and attributed the article to a “Helen Day” and not the real author. VCAA’s edits to the article substituted words and changed the flow of the original piece and the author has taken issue with this use of her work.

Unless an exception applies, a person planning to reproduce a news article in their own work would seek permission from the copyright owner (often the author or newspaper in which the article appeared). An exception in Australian copyright law allows material to be reproduced without permission if done as part of an examination question, however, even if this exception covers any potential copyright issues, it does not cover the author’s moral rights in the article.

Creators of written, musical and artistic works have several moral rights in addition to copyright in their works, which include the right not to be falsely attributed as well as the right to not have their work treated in a derogatory manner – particularly if this causes some harm to the reputation or honour of the creator.

While it is usually the answers to an exam that are given close scrutiny, in this case the questions themselves have become the focus and it will be interesting to see what happens next.

[1] http://www.theage.com.au/national/education/sloppy-copy-in-exam-raises-ire-20111109-1n7eo.html

Back to top | Permalink

The launch in the United States of a new service called ReDigi, that purports to be a second-hard store for digital music, has come to the attention of music industry representatives as well as music consumers – and it’s going to be a potentially bumpy ride for the new startup.

Walk down any main street or jump on to an online auction site like Ebay or Trading Post and you will see a thriving market in second hand books, films and music. This material has been resold in hard copy form for years, without issue in most cases. But as more and more of our film, music and reading material is purchased in digital formats, the question of whether resale of this material is legitimate becomes more complex due to copyright issues.

So, how does ReDigi work? Users sign up and submit the music files they want to sell via ReDigi’s proprietary ReDigi Music Manager. ReDigi’s system verifies the music file to make sure that it is legitimate and then uploads it to ReDigi servers, where it is made available for purchase by another user. ReDigi deletes any copies of the music file that remain on the seller’s computer and does not allow the seller to retain or replace that music file on their own system once it’s been uploaded. The idea is that only one version of the file is being distributed at any time. Other ReDigi users can purchase and download the file offered for resale, which is then removed from ReDigi’s servers. Percentages of sales go to the relevant artists and labels.

The site raises some interesting legal questions. Firstly, distributing digital files to a third party often means making a reproduction of that file, which usually requires permission or licence from the copyright owner. Secondly, when users purchase the music file from the original vendor (such as Amazon or iTunes), there are usually terms and conditions agreed to before they are able to purchase the file and these terms may prohibit selling the files to a third party.

ReDigi states on its website that it is relying on the US First Sale Doctrine, which allows owners of legitimately acquired copies of copyright material to re-sell that particular material without interference from the copyright owner [1]. The US-based RIAA, which represents the recording industry, has objected to ReDigi’s model and sent a cease and desist letter to ReDigi’s operators in which it responds that the first sale doctrine only applies to the particular copy purchased, arguing that “it does not permit the owner to make another copy, sell the second copy and destroy the original” [2]. Under ReDigi’s model, even though copies are deleted, a copy of the music is being made when it is uploaded to the ReDigi servers for resale and it is this copying that the RIAA argues is being done without a license. Further, RIAA objects to ReDigi allowing 30-second previews of songs in its database to users.

In Australia, resale of physical items is largely unproblematic in copyright terms, while the resale of legally purchased digital material remains a legally grey area. The first place to look are the terms and conditions under which the digital items were purchased to verify whether these allow sale of the material to another person. Beyond that it becomes a question of whether a reproduction or communication of the digital material has been made without the copyright owner’s permission.

Any legal action between the US parties involved in this issue will be informed by other decisions on resale of legally purchased digital material. Interested readers should see our October 2010 issue, which contains a round up of Vernor v Autodesk Inc, a US case that addressed sale of second hand software in the context of the first sale doctrine and software licences. You can view this at http://copyright.org.au/news-and-policy/details/id/1841/

[1] ReDigi website at https://www.redigi.com/education.html

[2] Letter from RIAA to ReDigi CEO CEO John Ossenmacher dated 10/11/2011

Back to top | Permalink

Collecting societies Viscopy and Copyright Agency today announced their plans to merge their service operations in an arrangement expected to produce additional income for artists. The proposed services agreement is expected to take effect from mid 2012, subject to regulatory approval. To read the media announcement, click here.

Back to top | Permalink

Telstra has lost an appeal to the Full Federal Court today, which upheld a February Federal Court decision that copyright did not subsist in the White and Yellow Pages.

The unanimous decision by Chief Justice Keane, Justice Perram and Justice Yates was delivered in three separate judgements, all in general agreement with Justice Gordon’s first instance decision. Chief Justice Keane observed that “in my respectful opinion, the decision of the trial judge was correct”. [95]

Chief Justice Keane was convinced by the respondents argument that the White and Yellow Pages “were compiled, not by the individuals engaged to facilitate the process, but by a computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were published.” [7-8]

For the full decision, see http://www.austlii.edu.au/au/cases/cth/FCAFC/2010/149.html

Back to top | Permalink

The Federal Court has overturned a recent Copyright Tribunal determination that significantly increased the rates payable by the fitness industry for the use of sound recordings in exercise classes.

Fitness Australia appealed to the Federal Court to have the May 2010 Tribunal determination reviewed, arguing that there was a breach of the rules of natural justice in connection with the making of the decision. The Federal Court concluded that the Tribunal had conducted itself “in a way which was procedurally unfair to Fitness Australia”. [at 4]

The appeal essentially turned on whether Fitness Australia had been given an adequate chance to respond to all the evidence considered by the Tribunal in determining the new rate. The Federal Court did not consider whether the rate selected was correct, but rather whether the Tribunal followed correct processes in making its determination.

In particular, the debate largely revolved around the use to which the Roberts Research study was put. The Federal Court stated that, “the position of both parties was that the study was not to be used to fix a rate. It was procedurally unfair for the Tribunal to use the study to fix a rate in light of that clear position.” [at 45]

The case will be sent back to the Copyright Tribunal to redetermine the case.

To read the full decision, see:

http://www.austlii.edu.au/au/cases/cth/FCAFC/2010/148.html

Back to top | Permalink

The Newspaper Licensing Agency (NLA) and its shareholder members have won a copyright case against two companies operating the media monitoring service, Meltwater News, as well as the Public Relations Consultants Association Limited (which represents certain users of the Meltwater News service). The High Court concluded that some of the headlines put forward in the case were independent literary works. The other headlines were considered to form part of the articles to which they relate.

This is the first time a UK Court has directly addressed the issue of whether copyright subsists in newspaper headlines, and the decision is of particular interest given the recent Australian decision of Fairfax v Reed [1], where it was found that copyright did not subsist in the particular headlines in question.

In her decision, Mrs Justice Proudman discussed the comments of Justice Bennett in Fairfax, but said that, “The evidence in the present case (incidentally much fuller than that before Bennett J in Fairfax…) is that headlines involve considerable skill in devising and they are specifically designed to entice by informing the reader of the content of the article in an entertaining manner”. [2]

“In my opinion headlines are capable of being literary works, whether independently or as part of the articles to which they relate. Some of the headlines in the Daily Mail with which I have been provided are certainly independent literary works within the Infopaq test”. [3]

Read the full decision at:

http://www.bailii.org/ew/cases/EWHC/Ch/2010/3099.html

[1] Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984

[2] The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors [2010] EWHC 3099 (Ch), at 70

[3] As per [2], at 71

Back to top | Permalink

2010 has been a big year for copyright in Australia, with several high profile cases concluded and some still pending. The iiNet case was keenly observed both locally and internationally; the Kookaburra case stirred up the passions of the Australian public; a procession of cases influenced by last year’s IceTV decision went to court. As 2010 draws to a close what are the decisions still pending, at home and abroad, that will have an impact?

Roadshow v iiNet

In February the Federal Court ruled that the Internet service provider iiNet was not liable for copyright infringement, as it did not authorise the infringing activities of its users [1]. While iiNet won this first round, the film and television companies that brought the action appealed the decision in the Full Federal Court in August. The appeal decision is pending and the case has the potential to go all the way to the High Court. As discussed in last month’s feature article, this case has significant ramifications for the creative industries and ISPs alike.

Viacom v YouTube

The question of service provider liability for copyright infringement is not only being considered in Australia. A US District Court handed down its decision on a long-running case brought by media companies including Viacom [2] in response to YouTube users uploading copyright materials without permission.

The case tested the operation of safe-harbour provisions in the US Digital Millennium Copyright Act and the degree of protection afforded to service providers. Judge Stanton held that in this instance, YouTube’s general awareness of infringing activity did not disallow the safe-harbour provisions. Furthermore, YouTube was not required to monitor or seek out facts indicating infringing activity.

While Google welcomed the decision this litigation isn't over, as Viacom has filed a notice to appeal. It is likely to be some time before we see another decision in this dispute.

PPCA challenges radio license statutory cap

The copyright license fees paid by Australian radio stations for the use of sound recordings are currently capped (by the Copyright Act 1968) at one percent of a radio station’s revenue. The Phonographic Performance Company of Australia (PPCA) is challenging the cap in the High Court [3], arguing that on its introduction in 1969, the one percent cap amounted to an acquisition of property in contravention of Section 51 (xxxi) of the Constitution.

While the PPCA has never before challenged the cap through the court system, its opposition has been expressed through years of lobbying governments to change the legislation. The PPCA has repeatedly stated that its legal action is not directed at community broadcasters, who would be hard hit by any increase, only to commercial radio stations. This is one to watch for anyone in the music and broadcasting industries.

Google Book Settlement

Google's plans for the mass digitisation of books caused controversy around the world when they came to light, with many authors and copyright owners seeing Google’s actions as infringement on a grand scale. A class action against Google by copyright owners was launched in the US [4] and a settlement was reached in 2008, followed by an amended settlement in 2009 [5].

In February 2010, Justice Denny Chin of the US District Court for the Southern District of New York presided over a hearing to determine whether the amended Google settlement was fair and reasonable. In reserving his decision for a later date the Justice noted that there was much to consider. The outcome of his deliberations will have repercussions for authors and copyright owners in countries around the world, including Australia, but the decision is not expected until next year.

Telstra v Phone Directories

The dispute over Telstra’s phone directories [6] made waves in the area of copyright and compilations. In February 2010, the Federal Court held that copyright did not subsist in the White and Yellow Pages phone directories produced by Telstra.

With reference to the 2009 IceTV decision, the court’s Justice Gordon stated that for copyright to subsist, it was necessary to identify authors and demonstrate that those authors directed their contribution to the particular form of expression of the work. The Telstra judgement was appealed (a decision is not expected until 2011) and the dispute is another potential case for the High Court.

Larrikin v EMI

Despite the victory for Larrikin Music against the band Men at Work in the Federal Court at the beginning of this year [7], a more recent hearing to determine damages set the amount payable well below Larrikin’s initial demands.

Justice Jacobson's decision – that two of the four bars reproduced from Larrikin’s 1934 children’s song Kookaburra Sits in the Old Gum Tree amounted to a substantial part – caused much complaint in the community at large. However, Justice Jacobson later set the amount payable at just five per cent of the royalties paid by APRA/AMCOS since 2002, as well as five per cent of any future royalties. An appeal against the original finding of copyright infringement was also heard this year and the judgement is still forthcoming.

Achos v Ucorp

The judgement on Achos v Ucorp [8] was one of several in 2010 that focused on the importance of authorship and the need to identify the authors who contributed to the work. It was held, amongst other things, that copyright did not subsist in the source code of certain electronic files that were based on data entered into a computer program. The decision has been appealed and the case will continue in March next year.

[1] Roadshow Films Pty Ltd v iiNet Limited (No. 3) [2010] FCA 24

[2] Viacom International Inc. v YouTube Inc, U.S District Court, Southern District of New York, No. 07-02103 (23 June 2010)

[3] Phonographic Performance Company of Australia Limited & Ors v Commonwealth of Australia & Anor [2010]

[4] The Authors Guild, Inc., et al. v. Google Inc., Case No. 05 CV 8136 (S.D.N.Y.)

[5] http://www.googlebooksettlement.com/r/view_settlement_agreement

[6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44

[7] Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29

[8] Acohs v Ucorp [2010] FCA 577

Back to top | Permalink

When the Federal Court handed down its much-anticipated decision on copyright in newspaper headlines (Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd) in September, the finding was in line with long-accepted principles that discrete items like titles, names and slogans are generally not substantial or original enough to be protected by copyright.

The case involved allegations by Fairfax Media that Reed International had infringed its copyright in the Australian Financial Review (AFR). Reed had reproduced elements of AFR articles in its ABIX service, which essentially provides subscribers with abstracts of already published articles, together with the (often unaltered) headlines and by-lines of these articles.

It was a particularly significant case given the concerted effort by publishing companies worldwide to try to protect the value of their content in the new online environment.

A key issue was whether copyright subsisted in the headlines of the AFR articles as discrete literary works. In addition, Fairfax argued that each of the following was capable of separate copyright protection, being a work of joint authorship:

- The combination of each article, together with its headline and by-line;

- The compilation of articles in the particular edition of the newspaper including headlines, but excluding other material such as photos, advertisements and market tables; and

- The entire AFR edition work, including photos, advertisements and market tables.

Headlines

In consideration of whether copyright subsists in headlines alone, Justice Bennett noted that while the creation of headlines might involve effort and skill, “headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works”[1]. This question has not been previously been addressed by an Australian court, however Justice Bennett’s finding is a continuation of long-established principles that items such as titles and names alone will not normally be afforded separate copyright protection.

Authorship

The Court also looked at issues of authorship, making substantial reference to the decision in IceTV[2].

Justice Bennett said: “Authorship is crucial for establishing copyright because it is essential to prove that the work originated from an author who expended independent intellectual effort to create the expression in the work”. However she added that where evidence was established of a work of joint authorship, it was not essential for copyright purposes to name every individual author, provided that some authors could be identified as employees with specific roles, and that the skill and labour in relation those specific roles could also be identified. Therefore, it was not necessary for Fairfax to identify every individual involved in authorship of the works.

Article-headline-byline

Fairfax argued that the combination of an article, a headline and a by-line was a work of joint authorship. But the Court found that the contribution of the journalists writing the body of the articles was separate to the contribution of the sub-editors, who edited the articles and wrote the headlines.

Therefore, the Court held that the headline/by-line and article combination was not a distinct work of joint authorship.

Compilation of articles and the edition work

The Court was satisfied that the compilation of articles as well as the edition works were capable of being protected as works of joint authorship, having been produced through the collaboration of a number of authors whose contribution was not separate from the contribution of the others. On the issue of identifying the authors, Justice Bennett noted that it was sufficient for Fairfax to establish which particular employees by role had contributed, as opposed to the specific identity of these employees.

Despite finding that “copyright subsists in the Article Compilation and the Edition Work as original literary works”, there was no finding of infringement because what was protected in this instance was the particular selection, arrangement and layout of materials, whereas the ABIX service did not reproduce such aspects of the AFR works.

Read the full case at:

http://www.austlii.edu.au/au/cases/cth/FCA/2010/984.html

[1] Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984, at 80.

[2] IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14; (2009) 239 CLR 458

Back to top | Permalink

The Federal Court’s decision on Achos Pty Ltd v Ucorp Pty Ltd demonstrates the difficulties that may arise in claiming copyright protection over digital works, particularly where several people have contributed to their creation.

The Court’s June decision denied copyright protection in the source code of certain electronic files that were based on data entered into a computer program. It was yet another recent case addressing the concept of joint-authorship and emphasising the importance of identifying authors whose contribution is not separate from other authors.

The dispute involved Material Safety Data Sheets (MSDS) – information sheets on hazardous substances given out by manufacturers, importers and suppliers of hazardous substances. Acohs and Ucorp are both in the business of producing electronic MSDS.

Achos claimed that Ucorp had infringed the copyright in, amongst other things, the source code underlying several of its electronic MSDS.

Justice Jessup acknowledged that source code is capable of being protected as a literary work, noting: “There is no a priori reason to deny a body of source code…the status of a literary work. It consists of words, letters, numbers and symbols which are intelligible to someone skilled in the relevant area, and which convey meaning.”[1]

However, the issue was whether the source code was “original” and in deciding on the question of originality, the Court emphasised the importance of authorship, referring to the recent decision in IceTV Pty Ltd v Nine Network Australia Pty Ltd[2].

Acohs produces MSDS through its “Infosafe System” computer program, whereby a central database generates the MSDS from information entered into the system by employees or customers. At issue was whether the programmers who wrote the source code for the Infosafe System, and those carrying out the later data entry using that system, were collaborators in producing the source code which Ucorp was said to have copied.

The Court found that the effort of the original programmers was quite separate to that of the data entry authors. Consequently, it held that since the source code was not the work of one author or a work of joint authorship, the code could not be regarded as an original literary work.

Read the full judgment at:

http://www.austlii.edu.au/au/cases/cth/FCA/2010/577.html

[1] Acohs Pty Ltd v Ucorp Pty Ltd [2010] FCA 577, at 47.

[2] IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14.

Back to top | Permalink

November was a month of grand pronouncements on copyright, with both the EU Digital Commissioner and the British Prime Minister calling for major copyright reform, and the founder of the Creative Commons movement addressing a WIPO conference on a similar theme.

In a speech urging members of the European Union to look beyond “nationalist and corporate self interest”, the EU Digital Commissioner, Neelie Kroes, said: “Copyright exists to ensure that artists will continue to create. Yet we see more and more often that it is not respected. In some sectors, the levels of piracy demand that we ask ourselves what we are doing wrong. We must ensure that copyright serves as a building block, not a stumbling block.”

A case in point, Kroes said, was Europeana, the digital portal of libraries, museums and archives in Europe: “Will this 12 million-strong collection of books, pictures, maps, music pieces and videos stall because copyright gets in the way? I hope not. But when it comes to 20th Century materials, even to digitise and publish orphan works and out-of-distribution works, we have a large problem indeed. Europeana could be condemned to be a niche player rather than a world leader if it cannot be granted licenses and share the full catalogue of written and audiovisual material held in our cultural institutions. And it will be frustrated in that ambition if it cannot team up with commercial partners on terms that are consistent with public policy and with the interests of rightsholders.”

Kroes said the European Commission would soon make legislative proposals on orphan works, and on the transparency and governance of the collective management societies, and would also examine the divergent national copying levies that exist in Europe and look into multi-territorial and pan-European copyright. “We need this debate because we need action to promote a legal digital Single Market in Europe.”

Also in early November, the British PM, David Cameron, announced a review of the country’s intellectual property law – focusing on copyright – with review recommendations due in April 2011. He pointed to the ‘fair use’ copyright provisions in the United States as a possible model for reform, saying: “Over there, they have what are called ‘fair use’ provisions, which some people believe gives companies more breathing space to create new products and services.”

Some Internet groups welcomed the review, saying it would provide an opportunity to redress the balance between copyright owner and user interests set by the Digital Economy Act of 2010 (which underpins the introduction of a system of ‘graduated response’ by ISPs, to prevent online copyright infringement). Other commentators accused the Government of being too much in the thrall of major IT corporations such as Google and Facebook.

In Geneva, high profile copyright reform campaigner and founder of the Creative Commons movement, Professor Lawrence Lessig, addressed a World Intellectual Property Organisation (WIPO) conference on emerging modalities for licensing of digital content. Lessig reportedly divided licensing into two ‘ecologies’, one for professionals and one for amateur [1]. Professionals were those seeking remuneration from the exploitation of their works, while amateurs were those freely distributing their works, including some scientists and academics; licensing should distinctly address each of these ecologies.

[1] http://www.copyrightlaws.com/international/wipo-meetings-francis-gurry-and-lawrence-lessig/

Back to top | Permalink

A new US-based Internet TV provider, ivi, Inc., has recently come under fire from ABC, NBC, CBS and FOX, who allege that the ivi TV service breaches copyright in their broadcasts.

Following its launch in September 2010, ivi received numerous cease and desist letters and subsequently filed a pre-emptive Complaint for Declaratory judgment in the US District Court in Seattle to confirm its services were legal [1]. Days later, the TV broadcasters countered with an action filed in the US District Court Southern District of New York, arguing that ivi was breaching their copyright [2].

Essentially, ivi provides its customers with television broadcasts over the Internet. It operates by receiving the live over-the-air broadcasts of primary transmitters, including ABC, NBC, CBS and FOX, then makes this content available over the Internet to its customers who download the Ivi TV player. But is it legal?

Ivi maintains that its activities fall within the scope of the US statutory license set out in s 111 of the US Copyright Act, which exempts certain secondary transmissions, such as cable TV.

Ivi CEO Todd Weaver likens ivi’s position to the cable providers, arguing [3]: “We pay broadcasters in accordance with the law, just like cable. This is not about copyright, this is about competition.”

“Congress created the compulsory licensing scheme for cable systems, to distribute broadcast content to the masses,” Weaver says. “We intend to increase viewer numbers and would welcome opportunities to work with the Broadcasters.”

Whether or not this particular form of secondary transmission falls within the ambit of the statutory license remains to be seen but the actions are being closely watched in the increasingly converged operating landscape of television.

The US Copyright Office addressed similar issues in a report issued in a June 2008 report, expressing opposition to a statutory license that would permit websites to retransmit television broadcasts without the consent of copyright owners. In its reasoning, the U.S. Copyright Office, amongst other things, said this would “effectively wrest control away from program producers who make significant investments in content and who power the creative engine in the U.S. economy. In addition, a government-mandated Internet license would likely undercut private negotiations leaving content owners with relatively little bargaining power in the distribution of broadcast programming” [4].

The U.S. Copyright Office argues that, “the carriage of programming on the Internet has been subject to marketplace negotiations and private licensing with some degree of success. As such, there is no market failure warranting the application of a statutory license in this context. An Internet statutory license would likely remove incentives for individuals and companies to develop innovative business models” [5].

The report also notes both that the Internet raises unique issues of security, which if not managed properly could be detrimental to rights holders [6]. Further, it is argued that allowing Internet retransmission to be statutorily licensed would breach U.S. obligations under several international free trade agreements [7]. This is because these agreements require the parties not to permit retransmission of television signals on the Internet without the consent of rights holders (See for example, the Australia-United States Free Trade Agreement, Article 17.4.10(b)).

In Australia, a service such as ivi TV would unlikely comply with the conditions of the Part VC statutory license given that the statutory license specifically does not apply to a retransmission that “takes place over the Internet”[8].

This is an important issue for primary broadcasters, particularly given that other businesses are likely to enter this space. Even more recently, another Internet TV provider, FilmOn.com, has also been sued by the major television broadcasters. FilmOn.com’s founder, billionaire Alki David, has been quoted saying, “There is no difference between the Internet and satellite. There’s little difference between having a digital television box (and having television delivered through a computer). It’s all just semantics” [9].

Whether or not he is right will be revealed in the litigation to come, but it is clear for now that the primary broadcasters are keen to maintain control of the distribution of their programming over the Internet, and won’t be letting go without a fight.

[1] Case number 10 CV 1512

http://assets.bizjournals.com/cms_media/pdf/ivi-complaint.pdf?site=techflash.com

[2] Case number 10 CV 7415

[3] Ivi TV Statement in response to NAB, 21 September 2010

http://www.ivi.tv/pr/2010-09-21_ivi-tv-statement-in-response-to-nab

[4-7] United States Copyright Office, Satellite Home Viewer Extension and Reauthorization Act Section 109 Report, at 188, 181, 181, 188.

http://www.copyright.gov/reports/section109-final-report.pdf

[8] Section 135ZZJA The Copyright Act 1968

[9] FilmOn owner preps for battle with TV networks, Eriq Gardner, Reuters

http://www.reuters.com/article/idUSTRE69510K20101006

Back to top | Permalink

Although the level of online copyright infringement in France is relatively high, it is also a nation that champions the rights of artists and creators. In an effort to resolve this conundrum some interesting new schemes have been launched to persuade consumers to source legitimate content online.

1. Carte Musique

In March this year the French Government proposed the establishment of the Carte Musique scheme, whereby people aged 12 to 25 could purchase an online music credit card at half price. Customers would pay 25 Euros for a 55-Euro credit card and the government would pay the other half. The cards could then be used at a variety of online digital music stores.

Prior to the launch of the Carte Musique in October, the proposal went to the EU Commission for approval, to ensure it did not run counter to EU competition policy. Checks and balances applying to the scheme include a limit of one card per individual per year and a cap of 5 million Euros on the total government funding provided to any one music retailer. [1]

Those in favour of the Carte Musique praise its stated aim to “develop the habit for consumers, when they are still young, to use legal music distribution channels over the Internet” [2]. Critics, such as a spokesperson for Internet lobby group La Quadrature du Net, argue along the following lines: “There is no evidence that this would be useful to anything but bringing a bit more money in the pockets intermediaries of distribution of digital music.” [3]

2. YouTube and SACEM

After three years in negotiations, the French music collecting society SACEM has signed a deal with the video streaming website YouTube [4]. Whilst details of the agreement have not yet been announced, it will essentially see royalty payments flowing from YouTube to SACEM and then from SACEM to creators. It will cover music used on the YouTube website from 2007 to 2012.

Cooperation between Internet sites like YouTube and traditional collecting societies is an important step in providing income streams for music creators, as such websites have become destinations on which users seek out and discover new music.

3. HADOPI

On the opposite end of the spectrum to Carte Musique, the French Government's graduated response scheme commenced this year after several years of negotiation and amendment. The scheme creates a new agency called Haute Autorité pour la Diffusion des Œuvres et la Protection des Droits sur Internet (HADOPI).

Rightsholders participating in the scheme monitor Internet networks for infringing activity, collect the IP addresses of infringing users and refer them to HADOPI. HADOPI then sends a warning notice to the relevant ISP, and the ISP must pass the warning notice on to the user connected to that IP address. After three warnings users risk fines or suspension of their Internet account, following a court order. An appeal process exists for users that wish to challenge a finding. [See last month’s newsletter for a detailed look at international graduated response measures.]

Supporters of HADOPI argue that the warning notices alone will serve as a deterrent and begin to reduce infringing activity online. Other arguments in favour suggest that HADOPI will allow rightsholders to focus on larger-scale, repeat infringers who have been warned multiple times that their activity is illegal. Critics argue that the scheme oversteps the bounds of privacy and imposes a sanction disproportionate to the offence.

Many countries are closely watching developments in France and the success of these three measures will influence whether similar arrangements are introduced in other jurisdictions.

[1] EU Press Release, 21 October 2010

http://europa.eu/rapid/pressReleasesAction.do?reference=IP/10/1320&format=HTML&aged=0&language=EN&guiLanguage=en

[2] ibid

[3] Farivar, Cyrus, ‘France to start Carte Musique digital music subsidy plan’ DW-World, 27 October 2010

http://www.dw-world.de/dw/article/0,,6158141,00.html

[4] SACEM Press Release, 30 September 2010

http://www.sacem.fr/cms/site/en/home/about-sacem/documentation/the-last-one/sacem-youtube

Back to top | Permalink

Three recent cyber campaigns – Cook’s Source, Operation Payback, and Limewire: The Pirate Edition – demonstrate that copyright remains a hot topic online. Staffer JEROME JOHN compares the three disputes and concludes that extremists on both sides of the debate make it difficult to think constructively about reform.

1. The Cook's Source saga

Writer Monica Gaudio discovered that a small, US-based magazine titled Cook’s Source had used one of her online articles without permission. Objecting to this use of her work, the writer emailed Cook’s Source editor Judith Griggs and an exchange ensued, culminating in the editor sending a now infamous email to the author. [1]

The curt communication from Griggs stated that anything on the Internet was “public domain” and could be used freely. The angry author responded by posting this on her blog, and her cause was taken up by other bloggers and spread over the Internet, eventually hitting news outlets. Within a few days, hundreds of negative comments were posted to Cook’s Source's Facebook page, the magazine's website briefly went down, names of advertisers were publicised and rewarded for distancing themselves from the magazine, and a number of news articles were written about the case. [2]

Anti-Cook’s Source fervour grew and people began searching older issues of Cook’s Source for other instances of infringement, which led to a number of alleged infringements being discovered and publicised [3]. Eventually Griggs issued a half-apology via the Cook’s Source website, also stating that the magazine could no longer keep going. Cook’s Source had met its demise.

[4]

2. Anonymous & “Operation Payback”

By contrast, the “Operation Payback” campaign launched by Internet activist group Anonymous had a distinctly anti-copyright flavour. Operation Payback began in response to perceived threats against file sharing website The Pirate Bay. Its targets included a number of prominent copyright stakeholders such as the MPAA, RIAA, the UK Intellectual Property Office, the US Copyright Office, rights holder groups in Italy, Spain and Ireland, and several high profile copyright lawyers. The website of Australian film anti-piracy group AFACT was also briefly taken offline in October. [5]

Anonymous attacks websites using a method called Distributed Denial of Service (DDoS), which works by overloading a target website with traffic to the point where it becomes overwhelmed and inaccessible. Because of its rogue nature, little is known about the makeup of Anonymous or which statements and documents released on its behalf are representative of the group's actual goals. Persons alleging to represent the group have listed a number of demands, including the gradual reduction of the term of copyright to a maximum of one year. [6]

3. Limewire: The Pirate Edition

Prior to successful court proceedings against Limewire by several record companies, Limewire software was used to connect to p2p networks and, in many cases, to acquire and distribute infringing music and film online.

Shortly after the Limewire site was shut down in October, reports began to emerge that a team of developers had modified the source code of the original software and released it to be freely distributed under the title Limewire: The Pirate Edition [7]. The Pirate Edition recreates all the functionality of the original software and renders many of the practical outcomes of the court case ineffective. The official Limewire company posted a statement on its website demanding that all unauthorised use of Limewire software and trademarks cease immediately, but the horse has bolted and the Pirate Edition is easily available.

What’s the outcome?

One may ask why in one instance a copyright owner received so much support yet in another, was the target of such hostility? Most likely it turned on who was perceived to be the underdog. In the case of Cooks Source, it was the individual author; in the Limewire and Operation Payback campaigns, the collective user was perceived as the underdog in a fight with large corporate interests.

The relative anonymity offered by the Internet may tempt some to join in vigilante-style copyright actions but such actions can have real-world consequences. Anonymous is now being investigated by the FBI. Cooks Source is now a dead publication. Authorities are seeking those who released The Pirate Edition for potential court action.

And whilst each scenario has had a definite outcome, is the outcome desirable? Was shutting down the whole magazine the author’s intended goal in the Cook’s Source dispute, or was it just to seek compensation for use of the article without permission? Operation Payback has caused much inconvenience to the groups targeted, and generated lots of publicity, but has it done anything to advance the group’s goal of copyright reform? The actual copyright questions have been lost in a myriad of distractions. If any of these campaigns is perceived as a victory, it is a dark victory only. In my view they demonstrate why, whatever your view, it is better to utilise regular channels of intellectual property dispute resolution, such as letters, negotiation, agreements, lobbying, mediation and court, if necessary.

The law gives creators and rightsholders the right to decide how their creative work can be used. In turn, users may be frustrated by the effect of these rights when invoked. Copyright reform is an attempt to re-set the balance between these conflicting positions, particularly when new technologies change the landscape. With copyright reform on the agenda and the issues heating up, it’s important that the focus remains on the long-term goals not short-term distractions.

[1] Gaudio, M. 'Copyright Infringement and Me' LiveJournal, 3rd November 2010 http://illadore.livejournal.com/30674.html

[2] see Champion, E. 'The Cooks Source Scandal: How A Magazine Profits on Theft', edrants.com, 4th November 2010

http://www.edrants.com/the-cooks-source-scandal-how-a-magazine-profits-on-theft/

[3] A collaboratively authored public list of all alleged instances of plagiarism in Cooks Source is available at: https://spreadsheets.google.com/ccc?key=0AmTaIPHPnkSedGFhbHo1d1FIR2oxNWJLaDZLeXhEVEE&hl=en#gid=0

[4] Originally posted by Judith Griggs on www.cookssource.com on 17th November 2010 – the site now appears to have been taken down.

[5] See Anonymous’ page at http://www.anonops.net/anonops/Main_Page for detailed information about the group and Operation Payback.

[6] ibid

[7] Anderson, N. ‘Horde of piratical monkeys" creates LimeWire: Pirate Edition’, Ars Technica, 10th November 2010 - http://arstechnica.com/tech-policy/news/2010/11/horde-of-piratical-monkeys-resurrects-limewire-pirate-edition.ars

Back to top | Permalink

By Mary Anne Reid & Fiona James

The Federal Court’s recent decision on copyright in headlines (Fairfax Media Publications v Reed International Books Australia) is unlikely to be the last word on news aggregation and copyright. This month’s feature article compares Australia’s experience with developments elsewhere.

It is no surprise that traditional news outlets have clashed with the news aggregators flourishing on the Internet. Corporations like News Ltd, Associated Press and Fairfax pay their staff to produce original news stories and pictures, or pay other creators for the use of their work. News aggregators use digital technology to search (‘crawl’), reproduce and index fragments of news produced by others – often without payment to the owners of the original work, often without adding original content, and often generating income for themselves in the process.

In the news aggregator’s worldview, this should be considered ‘fair dealing’ (or ‘fair use’ depending on your country of origin) for the purposes of reporting the news. In the view of some news outlets, the aggregator is unjustly profiting from the work of others.

From a business perspective, the content owner’s point of view is likely to depend on whether they see the news aggregator as providing a welcome source of promotion for their news outlet, or a substitute for their original work. The reality may well be combination of both, yet that may still disturb businesses whose costly content is generating income for others without payment.

The potency of this issue at a time when news publishers around the world are struggling to monetise their content online created significant interest in the recent case brought by Fairfax Media Publications against Reed International Books Australia (trading as LexisNexis). Reed had indexed articles from the Australian Financial Review (AFR) in its news aggregation service ABIX, which essentially provides paying subscribers with abstracts of published articles, together with the (often unaltered) headlines and by-lines of these articles.

Fairfax alleged that Reed had infringed its copyright in the AFR. One of the key issues addressed – for the first time in an Australian court – was whether copyright subsisted in the news headlines in question. In September 2010, the Federal Court’s Justice Bennett found that no copyright subsisted in the headlines reproduced by ABIX and that even if it did, ABIX’s use of the work amounted to fair dealing under Australian copyright law.

It is doubtful, though, that we have heard the last word on news aggregation and copyright. International experience, and the extensive business interests at stake, suggests the Fairfax case may be the first round only.

Google and the wire services

The Google service Google News has been at issue in several high profile cases on copyright infringement and news aggregation.

One of these actions was brought against Google by the wire service Agence France Presse (AFP), in the United States in 2005. As wire services generally license their content to other news outlets rather than publishing on their own sites, AFP asserted that the headline, ‘lede’ (lead) and photo displayed by Google News was licensed content and only those who had paid licensing fees to AFP were authorised to publish them. “By providing this content, even in an abbreviated form, AFP claimed, Google News was infringing their copyrights and stealing their product.”[1]

The legal action continued for almost two years until the matter was concluded out of court in 2007, with Google signing a licensing agreement with AFP for the right to post AFP content on Google News and other Google services.

While the AFP proceedings were in progress, Google moved to stop another potential suit by entering into a similar licensing agreement with the wire service Associated Press (AP) in 2006. In commenting on the two agreements Google maintained its position that Google News was fully consistent with fair use. Rather, it said, the purpose of the licensing deals was to allow for new uses of AP and AFP news content by Google.

Copiepresse

In Europe, Google was involved in another legal action over its Google News service and this time the matter was settled in court.

The association of Belgian newspaper publishers, Copiepresse, commenced court proceedings against Google in 2006, asserting that Google News went beyond a simple search engine service and acted as a “portal to the written press”. [2] Copiepress objected to the display on Google News of the titles and first sentence or two of its members’ newspaper articles, as well as the provision of links to ‘cached’ versions of the articles (HTML text copies of articles stored by Google). Importantly, Copiepress did not object to the provision of hyperlinks to its members’ sites.

• Original expression: Google argued that the fragments displayed on Google News were not original elements qualifying for copyright protection. The court found that some of the headlines were original enough to warrant copyright protection, while others were not.

• News reporting exception: Google argued that in any event it could rely on Belgium’s exceptions to copyright infringement for news reporting. The court found that as Google provided no commentary on the news, the exception did not apply because reproduction could not be the principal object, rather than the secondary, in news reporting. [3]

• Implied licence: Google argued that the newspapers had explicitly or implicitly consented to the use of their materials by not using technical means (robots.txt files and metatags) to stop their publications being indexed by search engines. The court rejected this argument on the grounds that copyright is a right to prior authorisation, not a right to opt out of a particular use.

In 2007 the court ruled that Google had violated Belgian copyright laws and ordered the corporation to pay a daily fine until it removed the Belgian news content (which it did). Copiepress also sought damages for the infringements.

Writing on the ruling in Lexology, Graham Smith (Bird & Bird) stated [4]: “This decision…illustrates the difficulties that face search engines as they develop and extend their activities into areas beyond general purpose search. These challenges are especially pronounced in European countries, which unlike the USA generally lack a flexible doctrine of fair use of copyright works. Instead, the norm in Europe is a series of narrowly crafted exceptions which often do not read well on to technological advances.”

Online Media Monitors

Web ‘crawling’ (or using search engine technology to monitor and index online content) may only become an issue for content creators when the aggregator is selling the indexed information to subscribers. This is the scenario behind an important action currently being fought in two separate courts in the UK: the dispute between Meltwater Holding BV (Meltwater) and the Newspaper Licensing Agency (NLA).

Meltwater is a large public relations group offering UK businesses a paid-for online media monitoring service called Meltwater News. This service searches online news sites to generate media monitoring reports for its customers, including the headlines of relevant articles, the first few words of the article and the ‘hit sentence’, which is a small number of words around the word or phrase being monitored. [5]

The NLA is a copyright collecting society acting on behalf of the majority of the UK’s national newspapers. In January 2009, the NLA announced it would introduce licences to cover paid-for online media monitoring services such as those offered by Meltwater. Under the two new licences, the NLA required payment from media monitoring services crawling its content, as well as payment from the end-users receiving the service.

In essence, the NLA was seeking to extend to the web the principles under which it charges media monitors for photocopying paper news clippings for clients.

Meltwater raised a number of objections to both new licences but particularly to the Web End User Licence, and referred the matter to the UK Copyright Tribunal. Despite a request from the NLA to dismiss it, the Copyright Tribunal decided early in 2010 that it would hear the case and nominated February 2011 as the earliest date convenient to all parties. In a counter-move, the NLA started its own action in the High Court, reportedly seeking a quicker ruling than would be provided by the Copyright Tribunal. The first High Court hearing is due for November 2010. [6]

According to the Copyright Tribunal’s decision on jurisdiction [7], Meltwater asserts that a number of the terms of the licence to crawl the media content are unreasonable, including the financial terms and the requirement to pass on to the NLA the identity of all its customers. An interesting complexity in the case is that, according to Meltwater, the NLA is in the process of commencing its own paid-for online media monitoring service. “So the [Web Database Licence] appears to require Meltwater to give to a potential competitor the names of all its customers.” [8]

In regard to the Web End User Licence, “Meltwater contends that even if the monitoring reports are copies of substantial parts of the literary works in question…the use and receipt of such reports [by the client] does not infringe copyright and so the customers need no licence.” [9]

It is this requirement for the end-user to pay that has caused the most controversy over the licences, with some UK news aggregators describing the requirement as a ‘link tax’.

In a recent online interview, Meltwater CEO Jorn Lyseggen suggested that the two legal cases would probably run in parallel: “If the High Court should rule that there is no reason for our clients to pay the NLA, I think that will end it. But, if they conclude there should be a licence, the Copyright Tribunal would then actually set the licence fees.”

“There might be appeals up to the point where we have a final ruling. But once we have a final ruling, I expect that all parties will comply.” [10]

Does size really matter?

Even in the US, with its relatively wide fair use provisions, the substantiality of the portion of copyright-protected work used may be the basis for a court deciding that the use is infringing, rather than fair. In her article on The Rise of the News Aggregator, Kimberley Isbell makes the following observation about the use of headlines and leads by news aggregators [6]:

“The [US] Supreme Court, as well as a number of lower courts, has found that the reproduction of even a short excerpt can weigh against a finding of fair use if the excerpt reproduces the ‘heart’ of the work…In some instances, the first few sentences may contain the heart of the work. In other instances, this will not be the case.”

So does size really matter or is it skill and effort that counts? Australia’s Fairfax v Reed case was interesting for its focus on this question.

In determining whether the AFR headlines reproduced in Reed’s ABIX subscription service were discrete literary works, Justice Bennett concluded: “Headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works. The function of the headline is as a title to the article as well as a brief statement of its subject, in a compressed form comparable in length to a book title or the like. It is, generally, too trivial to be a literary work.” [12]

There is certainly a long line of case law based on the principle that titles and names are generally too insubstantial to be considered literary works. But some commentary following the Fairfax decision queried whether all headlines are comparable in this regard with titles and names.

There is an argument that news headlines should be distinguished from titles because a headline will often be the basis for deciding whether or not to read the story, and so will ‘make or break’ the story. Contrast this with books, songs or movies, for example. Also, in some cases, a headline neatly encapsulates the essence of the story. It is arguable that, in the case of some headlines at least, there is a significant degree of skill and effort that goes into the selection of the particular words comprising the headline, few though they may be. For a particularly clever title, it may be that more effort and skill has been exercised in the selection of those words than, say, in writing a short news story to accompany it.

While Justice Bennett concluded that copyright did not subsist in the particular headlines put forward by Fairfax, she did not rule out the possibility altogether: “It may be that evidence directed to a particular headline, or a title of so extensive and of such a significant character, could be sufficient to warrant a finding of copyright protection”[13].

Perhaps surprisingly, Fairfax did not appeal the case. However given that the question of subsistence in headlines remains open, we may see another attempt in the future.

Future outlook

Eric Schmidt, chairman and CEO of Google, believes the clash between news aggregators and news creators will largely be resolved through commercial partnerships between the two: “I believe…we all have to work together to fulfill the promise of journalism in the digital age,” Schmidt wrote recently in The Wall Street Journal online. [14]

“Google is serious about playing its part. We are already testing, with more than three dozen major partners from the news industry, a service called Google Fast Flip. The theory—which seems to work in practice—is that if we make it easier to read articles, people will read more of them. Our news partners will receive the majority of the revenue generated by the display ads shown beside stories.

“Nor is there a choice, as some newspapers seem to think, between charging for access to their online content or keeping links to their articles in Google News and Google Search. They can do both.”

While Schmidt may be right about the partnership ahead, the key copyright cases being fought now and in the immediate future are likely to have a significant effect on the terms of such a partnership.

Australian Copyright Council

November

2010

[1] Kimberly Isbell, Berkman Centre for Internet & Society (Harvard University), Research Publication no. 2010-10, 30 August 2010, p. 6.

[2-4] Graham Smith, Bird & Bird, Lexology, March 13 2007.

[5] UK Copyright Tribunal, Colin Birss QC, on Meltwater Holding BV v NLA Ltd, 25 Feb, 2010. P.2

[6] Robert Andrews, paidContent.com; Sept. 20, 2010, at http://finance.yahoo.com/news/Interview-Meltwater-CEO-paidcontent-3545413581.html?x=0

[7-9] UK Copyright Tribunal, as per [5]. P.4

[10] Robert Andrews, as per [6]

[11] Kimberly Isbell, as per [1]

[12-13] Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984 at 44, 46

[14] Eric Schmidt, The Wall Street Journal, http://online.wsj.com/article/SB10001424052748704107104574569570797550520.html

Back to top | Permalink

Australia’s Minister for Trade, Dr Craig Emerson, announced today that international agreement has been reached on the Anti-Counterfeiting Trade Agreement (ACTA), after three years of negotiations.

ACTA has been negotiated by 37 countries, including Australia, Canada, European Union member states, Japan and New Zealand.

The Minister said Australia would not need to change its domestic laws in order to implement the ACTA. The Australian Government will make a final decision on ratifying the ACTA once the Joint Standing Committee on Treaties has examined the agreement.

To view the Minister for Trade’s media release, click here: http://www.trademinister.gov.au/releases/2010/ce_mr_101116.html

Back to top | Permalink

On 13 November 2009, the plaintiffs taking action against Google for scanning and creating an electronic database of their books filed an amended settlement agreement and a motion for preliminary approval of the amended settlement.

The changes proposed in the amended settlement agreement include:

• the class of authors and publishers narrowed to those from the US, Australia, the UK and Canada only;

• each country represented in the class will have an author and a publisher seat on the Book rights Registry Board;

• an independent fiduciary will have sole decision-making responsibility in relation to unclaimed works;

• unclaimed funds will be held for up to 10 years, not 5, with any unclaimed monies at the end of the 10 year period to go court-approved charities in the US, Canada, the UK and Australia;

• any discounting will come out of Google’s share of funds, not from authors or publishers;

• limits have been placed on potential future business models – none of which may be implemented without notice to rightsholders and approval of the Registry board.

More information:

Authors Guild article

Copyright Agency Limited

Full news release

Back to top | Permalink

The Internet Industry Association (IIA) sought leave to appear as amicus curiae in these proceedings, to the extent of making oral and written submission.

Leave was denied. Cowdrey J held that the IIA’s contribution was not “useful and different” from the contribution otherwise given by the parties, saying that the mere fact that the IIA is not iiNet, and thus claims to bring a “broader perspective” does not render its submissions “useful and different”.

Back to top | Permalink

This case concerned a claim by Deckers that the respondents had infringed copyright in its logo, in a photo and in text contained in an “Information Booklet” and “Care Instruction Card” for Ugg boots.

Tracey J held that the logo was of sufficient complexity to attract copyright protection, being “plainly drawn with care, to obtain an effect” and that Deckers’ copyrights had indeed been infringed. The court further held that the respondents had breached earlier terms of settlement, and had engaged in passing-off and in misleading and deceptive conduct in breach of the Fair Trading Act 1999 (Vic) and the Trade Practices Act 1974 (Cth).

Orders made by the court included delivery up and awards of additional damages against the third and fourth respondents. Tracey J commented that, while not giving rise to flagrant damages, “this case must be adjudged as one of the worst of its kind to come before the Court”.

In addition, various restraint orders were made in relation to the use of the word “Ugg” and various similar words.

(Note that Deckers conceded that there exists a style of footwear known as “UGG boots” and that its claim was based on features that distinguished its products from the generic product and that conveyed to consumers the impression that its footwear comes from a particular branded source.)

More:

Deckers Outdoor Corporation Inc v Farley (No 5) [2009] FCA 1298

Back to top | Permalink

The Full Federal Court has dismissed an appeal by Vawdrey Australia Pty Ltd (”Vawdrey”), confirming that Vawdrey (a trailer manufacturer) infringed copyright by indirectly copying the drawings of Krueger Transport Equipment’s “load constraint system” for cargo.

In his consideration of whether a “substantial part” was reproduced, Lindgren J draws on the approach of the High Court in the IceTV case, emphasising the importance of authorship and finding that the Krueger sketches were “original”. In their joint judgement, Moore and Bennett JJ found that the Vawdrey drawing used “substantially the same form of expression” as the Krueger drawings.

It was also confirmed that there was sufficient causal connection between the copyright infringement and the damage suffered by Krueger.

More:

Vawdrey Australia Pty Ltd v Krueger Transport Equipment Pty Ltd [2009] FCAFC 156

Back to top | Permalink

This case concerned the interception of signals during an authorised transmission of an episode of a TV series in Taiwan; the signal was then re-transmitted to subscribers of a pay TV service in Australia.

The Federal Court of Australia has found that the re-transmission constituted a communication of the episode, within the meaning of section 10 of the Copyright Act 1968 (Cth). It consequently held that the corporation which intercepted and re-transmitted the episode infringed copyright in the film comprising that episode. It further held that the Chairman of Directors of the corporation was liable for authorising the infringement.

More:

TVBO Production Ltd & Ors v Australia Sky Net Pty Ltd & Ors [2009] FCA 1132

Back to top | Permalink

The Federal Court of Australia has found that Technicon Industries Pty Ltd (Technicon) infringed the copyright and registered design right of Caroma Industries Ltd (Caroma) when it relied on Caroma’s Trident toilet suite design in the design of its Technicon toilet pan.

The joint CEO of Technicon directed its Chinese manufacturer to use a Caroma brochure “as a guide”. The Court found that Technicon infringed Caroma’s copyright when a Trident design drawing was substantially reproduced; Technicon’s design drawings depicted the Trident pan rather than the Technicon pan.

In Technicon’s defence, the CEO claimed that his instruction was to use the Caroma brochure merely as a guide to the brochure layout. The Court rejected the defence of innocent infringement.

As there was no finding of a blatant intention to reproduce the drawing, additional damages were not payable.

The Court also found that Technicon fraudulently imitated and therefore infringed the Trident design which Technicon knew or suspected was a registered design.

Caroma Industries Ltd v Technicon Industries Pty Ltd [2008] FCA 1465 (2 October 2008)

Back to top | Permalink

The Personal Property Securities Bill 2009 and the Personal Property Securities (Consequential Amendments) Bill 2009 received Royal Assent on 14 December 2009.

The Personal Property Securities Act 2009 and the Personal Property Securities (Consequential Amendments) Act 2009 will apply after the registration commencement time, expected to be in May 2011.

The Acts will deal with personal properties including copyright and other forms of intellectual property.

More:

Information about the Bill

Attorney-General's Department news item

Back to top | Permalink

The government 2.0 taskforce draft report “Engage: getting on with government 2.0” has been released.

Submissions are due by 5 pm 16 December 2009.

Click here to view the draft recommendations

Back to top | Permalink

The Senate has passed the following without amendment:

• Resale Royalty Right for Visual Artists Bill 2009;

• Tax Laws Amendment (Resale Royalty Right for Visual Artists) Bill 2009;

• Personal Property Securities Bill 2009; and

• Personal Property Securities (Consequential Amendments) Bill 2009

The commencement date for the Resale Royalty Right for Visual Artists Bill 2009 will either be fixed by proclamation or within 6 months of receiving Royal Assent, whichever comes first.

The Personal Property Securities Bill 2009 will commence the day after it receives Royal Assent.

More:

Information about Resale Royalty for Visual Artists Bill

Information about Personal Property Securities Bill

Back to top | Permalink

The Federal Government has announced that there will be no change to the current importation provisions for books.

Today’s media release by the Hon Dr Craig Emerson MP explains that the Government has not accepted the Productivity Commission’s recommendation to remove the parallel importation restrictions on books and has decided not to commit to a new spending program for Australian authors and publishers.

The Government judged that removing the current restrictions would be unlikely to have any material effect on the availability of books in Australia.

Back to top | Permalink

Terri Janke has published a paper, “Beyond guarding ground: a vision for a National Indigenous Cultural Authority’” in which she proposes the establishment of a National Indigenous Cultural Authority to create a new framework to “promote Indigenous cultural and intellectual property and set standards for appropriate use including royalties, cultural integrity and attribution”: at 35.

The paper includes useful summaries of key copyright cases involving Indigenous creators and communities.

The paper is available for download at the Australia Council website.

More:

Australia Council

Back to top | Permalink

The Productivity Commission has released the advice received from the Office of International Law (dated 4 June 2009) in relation to Australia’s international legal obligations and the Commission’s report dealing with the parallel importation of books.

The advice addresses a suggestion from some booksellers that parallel importation protection for ‘Australian versions’ of books be retained, and importation only would be allowed in situations where an ‘Australian version’ is unavailable.

The advice concludes that this proposal would be inconsistent with Article 6 of TRIPS (with reference to provisions regarding ‘National Treatment’ and ‘Most Favoured Nation’: Articles 3 and 4) and therefore unlikely to be consistent with the AUSFTA or the Berne Convention.

More:

Productivity Commission Report: Parallel Importation of Books

Back to top | Permalink

In February 2008, the Federal Court of Australia dismissed with costs a claim by the Polo/Lauren Company (Polo/Lauren) for damages, an account of profits and orders to restrain a retailer from importing and selling clothing bearing its polo player logo.

The court held that the retailer was entitled to rely on two defences:

• that the embroidered logo is a “label”, and that therefore the defence under section 44C of the Act (importation of non-infringing accessories to articles) was available; and

• that the embroidered logo falls within the definition of "corresponding design" in section 74 of the Act and that therefore the design/copyright overlap defence in section 77 applied to Polo/Lauren’s claim that, had it embroidered the logos itself, the retailer knew it would have infringed copyright.

The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49 (5 February 2008)

On 18 December 2008, the Full Court dismissed Polo/Lauren's appeal of the Federal Court decision.

The Court was satisfied that the logo affixed to the genuine Polo Ralph Lauren garments was a “label” within the definition of “accessory” in

section 10(1) of the Copyright Act and that the defence in section 44C was available.

It was strictly unnecessary to consider the interaction between copyright protection and design protection in this decision. However, the Court

expressed its view of the extensive submissions on this point and concluded that “neither party could win both the label argument and the corresponding design argument because the garments could not logically, at the one time, both ‘embody’ the Logo and be conceptually distinct from it.”

Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCAFC 195 (18 December 2008)

Back to top | Permalink

In this case, the Federal Court made a declaration that the applicant, Racing & Wagering Western Australia (RWWA), was not breaching its software licence agreement with Software AG (Australia) Pty Ltd (SAG) by copying and testing mainframe computer system software at a disaster recovery site maintained by a third party. It also declared that RWWA was entitled to test the disaster recovery copy under section 47F of the Copyright Act, which allows the reproduction of computer programs for security testing.

The court was also of the view that the copying was covered by s47C, which allows back-up copies of computer programs.

The court dismissed SAG’s cross-claim and made a declaration that SAG is not entitled to additional licence fees or upgrade maintenance service fees under the licence. Even if RWWA had breached its licence agreement, SAG had not properly proven its loss.

Racing & Wagering Western Australia v Software AG (Australia) Pty Ltd [2008] FCA 1332 (29 August 2008)

The Federal Court has ordered Software AG (Australia) Pty Ltd (SAG) to pay the costs of Racing & Wagering Western Australia (RWWA) following the Court’s declaration on 29 August 2008 that RWWA’s use of SAG’s mainframe computer software did not infringe copyright.

The Court commented that the RWWA acted imprudently in rejecting an offer of $300,000 made by SAG before RWWA incurred substantial costs and made exaggerated counterclaims.

SAG is to pay RWWA’s costs (excluding lawyers’ fees) incurred until 11 May 2007 plus all costs and disbursements that were not unreasonably incurred after that date.

Racing & Wagering Western Australia v Software AG (Australia) Pty Ltd No 2 [2008] FCA 1526

Back to top | Permalink

In a joint judgment delivered on 6 August 2008, the High Court allowed an appeal relating to government use of surveyors’ plans.

The State of NSW uses survey plans lodged with Land and Property Information (LPI), a government agency, for a variety of purposes, including sale to members of the public and sale via information brokers. Copyright Agency Limited (CAL) had argued, on behalf of the surveyors, that the use of the plans was subject to a remunerated statutory licence, not a free implied licence as the State contended.

The Federal Court had held that the State of NSW’s use of surveyors’ plans was for the services of the State, within the meaning of s 183 of the Copyright Act. But it said that the State had an implied licence to use the plans and was therefore not obliged to pay equitable remuneration as required by s 183. The Federal Court held that the surveyors “must be taken to have licensed and authorised the doing of the very acts that the surveyor was intending should be done as a consequence of the lodgment of the [plans] for registration”.

The High Court held that there was no implied licence relating to the “public” use of the plans, either in the surveyors’ contracts with their clients or independently of these contracts. The Court’s reasons included that there was no necessity to imply such a licence, and that the State charged for copies supplied.

The State of NSW did not appeal the Federal Court’s finding that it did not own copyright in the plans. The Federal Court rejected the State of NSW’s arguments that it owned copyright because the plans were made under its direction or control, and/or the plans were first published by it. The Federal Court held that the plans were first published when they were provided by the surveyors to their clients.

Copyright Agency Limited v State of New South Wales [2008] HCA 35

Back to top | Permalink

In May 2008, the Federal Court found that a truck body manufacturer, Vawdrey Australia Pty Ltd (Vawdrey), infringed copyright by indirectly copying the “load constraint system” drawings of Krueger Transport Equipment Pty Ltd (Krueger). The parties found to have authorised the infringement, and disclosed information in breach of confidence, subsequently settled the claims by Krueger.

The Court has considered the question of monetary relief claimed from Vawdrey. Vawdrey was precluded from relying on an innocent infringement defence because the company failed to make reasonable inquiries to identify the source of its instructions and was aware of Kreuger’s concerns about infringements.

The Court concluded that the claim concerned a “single course of infringement” (Vawdrey’s drawings and trailer manufacture) and therefore it was inappropriate to apportion damages between the defendants, however, it was appropriate to deduct the settlement amount received.

Based on the component approach to calculating loss to Krueger, the Court concluded that Vawdrey should be ordered to pay $346,449.59 in damages. Damages for secondary loss, caused by Vawdrey’s advertising and first-entrant advantage, were estimated at $10,000. The Court could not find that the costs claimed for mitigating the infringement were foreseeable or caused by Vawdrey. The Court considered that an appropriate award of additional damages was $30,000. Costs are to be awarded as a percentage of Krueger’s overall costs.

More:

Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (No 2) [2008] FCA 1493 (9 October 2008)

On 28 October 2008, the Federal Court ordered Vawdrey Australia Pty Ltd (Vawdrey) to pay damages of $438,904.60.

The Court observed that this amount, agreed between the parties, is approximately $100,000 more than the amount that the Court had earlier concluded should be awarded against Vaudrey for infringing copyright in the drawings of Krueger Transport Equipment Pty Ltd.

Costs were also awarded against Vawdrey.

More:

Krueger Transport Equipment Pty Ltd v Glen Cameron Storage & Distribution Pty Ltd (No 3) [2008] FCA 1592 (28 October 2008)

Back to top | Permalink

On 30 July 2008, Sundberg J in the Federal Court ordered that proceedings concerning a dispute over copyright ownership in the film “The Secret” be stayed until the outcome of proceedings concerning ownership, infringement and damages in the US District Court.

The Court denied an application by TS Production LLC ("TS Production”) for a motion to restrain Drew Pictures Pty Ltd from pursuing action in Illinois while the Australian proceeding is on foot.

The US, where the film was first published and substantially exploited, was considered the most appropriate jurisdiction for Drew Pictures Pty Ltd to issue proceedings. The Australian proceedings were described as “vexatious and oppressive.”

More:

• TS Production LLC v Drew Pictures Pty Ltd [2008] FCA 1110 (30 July 2008)

• * TS Production LLC v Drew Pictures Pty Ltd [2008] FCA 1329 (27 August 2008): court order that application for leave to appeal Sundberg J's decision be heard by Full Court rather than single judge

Back to top | Permalink

On 2 July 2008, the Federal Court found that Rockerfeller Management Corporation and its director infringed copyright by using 800 of the applicants’ examination questions and answers in admission test preparation materials. The Court also found the respondents liable for conversion of the infringing copies.

The respondents, who allegedly purchased the material from a third party, on CDs bearing the copyright notice of the applicants’ competing business, failed to convince the Court that the material, some of which was created from third party sources, lacked originality for copyright protection or that its infringement was innocent.

Cross claims for infringement of 160 questions and answers on the CDs, defamation, passing off and trade practices contraventions were dismissed.

The Court is still to consider submissions on damages, including additional and conversion damages, and costs.

Boyapati v Rockefeller Management Corporation [2008] FCA 995 (2 July 2008)

Back to top | Permalink

On 27 November 2008, the Resale Royalty Right for Visual Artists Bill 2008 was introduced into the House of Representatives by the Minister for the

Environment, Heritage and the Arts, the Hon Peter Garrett MP.

The Bill has been referred to the House of Representatives Standing Committee on Climate Change, Water, Environment and the Arts, to report by 20 February 2009. Submissions are due by 23 January 2009, and the Committee will hold public hearings on 5 and 6 February 2009.

More:

• Resale Royalty Right for Visual Artists Bill 2008

• Background information on resale royalty right

• House of Representatives Standing Committee inquiry

• Hansard for 27 November 2008 (including the Minister's Second Reading Speech on the Bill at page 2)

Back to top | Permalink

In May 2008, the Australian government released a consultation draft of the Personal Property Securities Bill 2008. The Bill is intended to replace a range of Commonwealth, State and Territory legislation dealing with securities and interests over personal properties – properties other than land. Personal property includes copyright and other forms of intellectual property.

Submissions are due by 15 August 2008.

More:

• Bill plus commentary

• Attorney-General's Department enews item

• analysis by PricewaterhouseCoopers Legal

Back to top | Permalink

The US Copyright Office has released the report of its inquiry into “orphan works” (that is, copyright material for which a copyright owner cannot be located or identified).

The Office has recommended that limitations be placed on the remedies that can be awarded in infringement actions where the infringing user can show that a “reasonably diligent” search for the copyright owner was undertaken, and provided that, generally, attribution is given both to the relevant creator and copyright owner.

The principal limitations on remedies recommended by the Office relate to:

- monetary relief (with a general limit on monetary relief to ‘reasonable compensation for the use’, but with no monetary relief where the use is non-commercial and the infringement ceased expediently upon notice); and

- limits on injunctive relief where the work has been incorporated as part of a derivative work.

Back to top | Permalink

On 13 May 2008, the New Zealand government introduced a bill to grant artists a royalty each time their work is resold via an intermediary such as an auction house or commercial gallery. The Australian government has previously promised to introduce similar legislation.

More:

• links to Bill, New Zealand government's media release, and discussion paper preceding the bill

• Australian government promises $1.5M to establish resale right for artists

Back to top | Permalink

This case concerned a dispute over the unauthorised copying of files forming part of computer software known as a website content management system (CMS).

The applicants alleged that a former employee, Mr Petro, infringed copyright in the source code of the company’s CMS. They submitted that Mr Petro copied the table file and editor file (JavaScript files) from a website created for a Dais client, HR Advantage, for use in other commercial websites. The applicants also claimed breach of confidence and contract, and contravention of the Corporations Act.

The claim against Bullet Creative Pty Ltd, which engaged Mr Petro, was settled at the commencement of proceedings.

Justice Jessup agreed with the parties that the CMS source code was a “computer program” under the Copyright Act. His Honour found that the JavaScript files also satisfied the section 10 definition of “computer program”, being “a set of instructions used in a computer to bring about a certain result”.

The case turned on the question of whether Mr Petro had reproduced the table file and/or the editor file from a particular version of Dais’ CMS, developed during a project for HR Advantage.

His Honour found that Mr Petro had not reproduced the JavaScript files from the HR Advantage website, but nonetheless went on to consider whether or not, if he had found any actual copying, the JavaScript files were a “substantial part” of the CMS source code. His Honour concluded that they were not.

Although the files were, in a functional sense, integral to the CMS, his Honour was not presented with any argued case to establish that “a degree of skill, labour and judgment ha[d] given the table file and the editor file an originality which made them a qualitatively substantial part” of the CMS. Further, a quantitative analysis showed that the file source code constituted a very small percentage of the total lines of code in the CMS.

The application was dismissed.

Dais Studio Pty Ltd v Bullet Creative Pty Ltd [2007] FCA 2054 (20 December 2007)

Back to top | Permalink

The Federal Court of Australia has decided an appeal in a dispute between two sellers of photo box albums. The Court denied the appeal against the unsuccessful claim of copyright infringement but allowed the appeal based on contraventions of the Trade Practices Act.

The appellant argued that the respondent and its director infringed copyright in an “artistic work” being a “drawing” on the side of the packaging of the photo box album. The Court observed that the image on the packaging consisted of text fulfilling a semiotic function and a photograph, which, either separately or combined, were not drawings for the purposes of copyright subsistence. The Court refused to allow an amendment of the claim to infringement in a “compilation” because it lacked merit in this case; a compilation involves collecting, arranging or organising disparate data.

On the trade practices claim, the Court held that a substantial number of consumers of photo boxes in the relevant market would be likely to think from the design of the respondents’ packaging that the respondents had an affiliation with the appellant that they did not have. Damages and interest were awarded against the respondents.

Woodtree Pty Ltd v Zheng & Anor [2007] FCA 1922 (7 December 2007)

To view the vase, click here

Back to top | Permalink

On 10 July 2007, the Copyright Tribunal of Australia published its reasons

for concluding that a scheme proposed by the Phonographic Performance

Company of Australia (PPCA) in relation to licences for the use of sound

recordings in nightclubs would be confirmed subject to the adjustment of the

licence fee proposed and the amendment of certain definitions.

PPCA, representing rights holders of recorded music and music videos, was

directed at that time to draft short minutes to give effect to the

Tribunal’s conclusions. However, the nightclub respondents disputed the way

PPCA’s draft short minutes dealt with the phasing in of the new licence fees

for nightclubs.

The Tribunal concluded that the scheme proposed by the Society should be

confirmed subject to changes of the definitions referred to in its earlier

reasons and subject to the substitution of licence fees for nightclubs as

follows: that the applicable fee in Year 1 would be $0.51 per patron, rising

each year over five years to $1.05 per patron in Year 5.

Phonographic Performance Company of Australia Limited under section 154(1)

of the Copyright Act 1968

To view the case, click here.

Back to top | Permalink

The Federal Court has found that Graphix Labels Pty Ltd infringed copyright in artwork supplied by its customer, Futuretronics.com.au Pty Ltd.

Graphix was contracted by Futuretronics to reproduce the artwork on covers or “skins” for mobile phones, iPods, handheld games and electronic game controllers that it was manufacturing for Futuretronics.

At a later date, Graphix decided that it would start manufacturing its own "skins", using artworks supplied to it from other sources. However, a brochure it produced to promote its products included the artworks supplied by Futuretronics, for illustrative purposes only.

In addition to infringement of copyright, the Court found that by supplying brochures and spare copies of skins bearing copies of the artwork to its customers and potential customers, Graphix breached an implied licence term that it would only use the artwork for purposes authorised by Futuretronics.

A claim for breach of copyright in respect of the manufacturing materials was abandoned. Claims for breach of the Trade Practices Act by Graphix and for breach of fiduciary duty against an employee of Futuretronics were unsuccessful.

Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd [2007] FCA 1621

(29 October 2007)

Back to top | Permalink

The High Court of England and Wales held that a cartoon based on a cartoon lion that had been used by the Football Association in 1966 did not infringe copyright since, although there was actual copying, the later work did not reproduce a substantial part of the original.

The issue arose in the context of a dispute over an application by Jules Rimet Cup Ltd (JRCL) to register the later work as a trademark: the court held that JRCL had applied to register the trade marks in bad faith.

Jules Rimet Cup Ltd v The Football Association Ltd [2007] EWHC 2376 (Ch) (18 October 2007)

Back to top | Permalink

The Federal Court has decided a dispute between two project home builders about the copying of architectural plans. The applicants contended that the respondents infringed copyright by copying the applicants’ house plans. The plans included an “alfresco quadrant” comprising a kitchen, meal area, rumpus room and outdoor area under a single roof line.

The Court found that the house plans satisfied the originality requirement for copyright protection. The plans were considered to be different from common place architectural designs in the project home market, particularly with regard to the “alfresco quadrant”. The Court found that what was copied was both qualitatively and quantitatively a substantial part of the applicants’ plans. The objective similarities between the applicants’ plans and a prototype used to derive the respondents’ plans were found to be indicative of copying. Justice Gilmour relied on expert evidence and impressions from his own observations of the buildings in reaching his decision in favour of the applicants.

The managing director of the corporate respondent, who had knowledge that house designs were derived from the applicants’ plans and had power to prevent such copying from occurring, was found to have authorised copyright infringement. The Court found that the product development manager of the corporate respondent, having direction and control over the designer who copied the applicants’ plans, was also personally liable for authorising infringement.

Barrett Property Group Pty Ltd v Metricon Homes Pty Ltd [2007] FCA 1509 (28

September 2007)

To view the case, click here.

Back to top | Permalink

In October 2007, the Commonwealth government released a discussion paper looking at the possibility of extending the legal deposit requirement to audiovisual and electronic material.

Section 201 of the Copyright Act requires publishers of “library material” to give a copy of the material to the National Library. The provision essentially applies to printed material.

The discussion paper is confined to deposit of materials with national institutions such as the National Library and the National Film and Sound Archive. It does not cover the similar provisions in state and territory legislation which require the deposit of materials with state and territory bodies such as the state libraries.

Submissions are due by 11 January 2008.

For a link to the discussion paper, click here.

Back to top | Permalink

The Australian Labor Party released its pre-election arts policy, ‘New Directions for the Arts’, on 14 September 2007. The policy confirms the ALP’s commitment to introduce a resale royalty scheme for visual artists. Resale royalty schemes impose an obligation to pay a proportion of the proceeds from the resale of an artistic work to the artist, even if the artist is not the copyright owner.

Other promises include:

• continuation of the Educational Lending Right Scheme, under which Australian authors and publishers receive payment for books held in educational institutions, and

• “Labor will examine ways to adequately protect artist’s copyright given the challenges posed by new and emerging platforms and changes in consumer patterns.”

More information:

• For the policy see their website

• For the media release of the Shadow Minister for the Arts see their website

In March 2006, Senator Bob McMullan introduced a private member's bill which, if passed, would have introduced a resale royalty scheme.

• For information about the 2006 private member's bill, click here.

In May 2006, the government announced that it would not introduce a resale royalty scheme.

The government's announcement followed a discussion paper on the issue released in 2004.

Back to top | Permalink

Provisions relating to the moral rights of performers – flowing from our obligations under the Australia-US Free Trade Agreement (AUSFTA) to accede to the WIPO Performances & Phonograms Treaty (WPPT) – were passed as part of the AUSFTA implementation legislation, but only came into effect on 26 July 2007 when Australia acceded to the WPPT.

(The relevant provisions are printed as “Note 2” to the current hardcopy Copyright Act (Reprint 12), but have been incorporated into the online version of the Act).

• AUSFTA text

• Copyright Act (consolidated)

• WIPO Performances and Phonograms Treaty

Back to top | Permalink

On 20 June 2007, the Senate Standing Committee on Environment, Communications, Information Technology and the Arts released the report of its inquiry into Australia's Indigenous visual arts and craft sector. The report is entitled 'Indigenous Art Securing the Future: Australia’s Indigenous visual arts and craft sector'.

The report's recommendations included:

• revised legislation on Indigenous communal moral rights (Recommendation 24)

• appropriate legislation to provide for the protection of Indigenous cultural and intellectual property rights (Recommendation 25)

• the Australian Customs Service be given an appropriate role in assisting the protection of Indigenous cultural and intellectual property rights in relation to imported and exported goods (Recommendation 25)

• (by the non-government members of the committee) a resale royalty scheme that is designed to ensure appropriate resale rights accrue to artists, particularly Indigenous artists (Recommendation 26)

More:

• view and download the report

Back to top | Permalink

The Copyright Amendment Act 2006 received Royal Assent on 11 December 2006. The following schedules are in now in force:

• Schedule 6 (private copying, “special case” exception, fair dealing, parody and satire, libraries)

• Schedule 7 (maker of communication)

• Schedule 8 (responses to Digital agenda Review: educational institutions)

• Schedules 10 and 11 (Copyright Tribunal);

The following schedules are not yet in force:

• Schedule 9 (encoded broadcasts): 28 days after Royal Assent; and

• Schedules 1 to 5 (new criminal provisions and enforcement measures) and Schedule 12 (technological protection measures): 1 January 2007

Further information

• our information sheet on the Copyright Amendment Act: click here.

• Attorney-General's Department fact sheets: click here.

• government's response to frequently asked questions: click here

• Attorney-General's media release of 6 December: click here.

• inquiry of the Senate Standing Committee on Legal and Constitutional Affairs into the Copyright Amendment Bill 2006: click here.

• a consolidated version of the Copyright Amendment Act 2006 is available from here (scroll to Copyright Amendment Act 2006).

Back to top | Permalink

A Full Court of the Federal Court has rejected the appeal of all but one of the appellants in their appeal against a decision of Tamberlin J.

The case concerns a website contained which hyperlinks to infringing MP3 files on other websites. The hyperlinks were uploaded by visitors to the site.

At first instance, the proprietor of the website (Cooper) was held liable for authorising infringement. Also found liable were the ISP that hosted the site, its director, and an employee. The appeal by the proprietor of the site, the ISP and the director failed. The appeal by the employee was successful.

Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 (18 December 2006)

Back to top | Permalink

on 3 May 2006, the Copyright Tribunal delivered its decision about the rate payable for retransmission of free-to-air broadcasts.

Screenrights, a copyright collecting society whose members are owners of copyright in film, asked the Copyright Tribunal to determine the amount of equitable remuneration payable to it under the Copyright Act’s Part VC statutory licence, for the retransmission of free-to-air broadcasts. The parties had already agreed on a record keeping system. Screenrights represents the copyright owners of works, sound recordings and cinematograph films but not television or sound broadcasts. The respondents were Foxtel Management Pty Ltd, Optus Vision Media Pty Ltd, and Austar Entertainment Pty Ltd, providers of pay TV in Australia, which often included, in a pay TV package, the retransmission of free-to-air broadcasts.

The Tribunal considered its previous approaches to “equitable remuneration” such as “market rate”, “comparable bargains”, notional bargain rate” and “judicial estimation”. Screenrights argued for a new “social gain” approach, with which the Tribunal disagreed, and Screenrights also relied on a contingent valuation survey. The retransmitters had previously, and unsuccessfully, attempted to prevent the survey being admitted into evidence.

The Tribunal decided to refer to the notional bargaining process, overseas rates (if appropriate) and commonsense, and to place no weight on the survey.

Evidence of the rates paid by some overseas retransmitters (in the United States, Canada, the United Kingdom and Europe) is summarised, including relevant sections of their Copyright Acts. The Tribunal, however, decided that it could not be assisted by the US or Canadian comparisons, and was not confident that it could rely on European remuneration rates as providing comparable bargains.

In the end the Tribunal said that it arrived at its figure of equitable remuneration from “careful estimation and evaluation”, including its appreciation of the likely value that subscribers would see in the benefits of better free-to-air television reception and the ability to use a single remote control. This figure was 22.5 cents per subscriber per month, net to Screenrights. The parties have the opportunity to make futher submissions on four issues: the amount paid when fewer than the five free-to-air channels are transmitted; retrospectivity; phasing in of payments; and CPI indexation.

[2006] ACopyT 2 (3 May 2006)

Click here for the case.

Back to top | Permalink

On 27 July 2006, the parties to the legal actions in Australia and the United States relating to distribution of the filesharing software Kazaa announced that the actions had been settled. The settlement agreement includes an undertaking by the Kazaa operators to introduce filtering technology to bock access to infringing music files.

Media release from Music Industry Piracy Investigations here

Media release of Sharman Networks here.

Media release of Motion Picture Association of America here.

Sydney Morning Herald article "'Kazaa capitulates, settles piracy case" here.

Sydney Morning Herald article "'Kazaa' Makers Settle Piracy Lawsuits" here.

Back to top | Permalink

In another episode of the Kazaa saga, the Full Federal Court has handed down its decision concerning the trial judge’s powers in relation to failure by Sharman Networks to comply with the court’s orders. The relevant order concerned changes to the Kazaa Internet file-sharing system to limit future infringements by users of the software. In response to a question of law reserved by the primary judge, the Full Court held that the trial judge is entitled to make a finding of contempt against Sharman Networks and its associates in relation to their alleged failure to implement orders made by Wilcox J at first instance.

Universal Music v Sharman [2006] FCAFC 41 (23 March 2006)

Click here for the decision.

The substantive issue awaits hearing.

Back to top | Permalink

The Government announced today (27 May 2005) that it is reviewing the laws relating to the use of unauthorised equipment to access pay TV signals without paying subscription fees. Submissions are due by 17 June 2005.

Click here for more information.

Back to top | Permalink

The Government released an issues paper on fair use on 5 May 2005. The issues paper sought submissions about whether the Australian Copryight Act should be amended to include an exception to infringement similar to the fair use exception in US law.

• Click here for the issues paper and submissions.

• Click here for the government's summary of the issue and outcome of the review.

• Click here for the Government's media release.

• Click here for a link to the Attorney-General's speech announcing the inquiry.

Back to top | Permalink

On 14 September 2006, the government released draft regulations dealing with exemptions to liability for circumvention of access-control technological protection measures.

• For the draft regulations, click here.

• For the government's media release, click here.

• For information about matters to be addressed in submissions seeking new circumvention exemptions, click here.

• For information about the draft Coyright Amendment (Technological Protection Measures) Bill 2006, click here.

Due dates for responses

• Responses to the draft Technological Protection Measures Bill are due by 22 September.

• Submissions on further exemptions to circumvention are due by 25 September.

• Responses to the draft regulations are due by 6 October.

Back to top | Permalink

The Copyright Amendment Act 2006 was passed on 5 December 2006.

The Act includes amendments relating to:

• technological protection measures

• enforcement: criminal penalties and preumptions

• unauthorised reception of encoded broadcasts

• time-shifting, format-shifting and space-shifting

• certain non-commercial activities of libraries, educational institutions, cultural institutions

• people with a disability

• parody and satire

• Copyright Tribunal

The Copyright Amendment Act 2006 received Royal Assent on 11 December 2006. The following schedules are in now in force:

• Schedule 6 (private copying, “special case” exception, fair dealing, parody and satire, libraries)

• Schedule 7 (maker of communication)

• Schedule 8 (responses to Digital agenda Review: educational institutions)

• Schedules 10 and 11 (Copyright Tribunal);

The following schedules are not yet in force:

• Schedule 9 (encoded broadcasts): 28 days after Royal Assent; and

• Schedules 1 to 5 (new criminal provisions and enforcement measures) and Schedule 12 (technological protection measures): 1 January 2007

Further information

• inquiry of the Senate Standing Committee on Legal and Constitutional Affairs into the Copyright Amendment Bill 2006: click here.

• a consolidated version of the Copyright Amendment Act 2006 will be available from here (scroll to Copyright Amendment Act 2006).

Back to top | Permalink

The Attorney-General’s Department has published guidelines for organisations wanting to be prescribed as “key cultural institutions” under sections 51B, 100BA and 112AA of the Copyright Act. These provisions came into operation on 11 December 2006 and give “key cultural organisations” a broader ability to make preservation copies of copyright material than permitted under the other, pre-existing library and archive provisions.

Organisations set up under a statute with “the function of developing and maintaining [a] collection” are already entitled to rely on these provisions; other organisations with material of historical and cultural significance to Australia may apply to the Attorney-General in writing to be prescribed as a key cultural institution for the purposes of the sections.

Organisations wanting to apply to be prescribed should include in their application:

• the name and address of the body seeking prescription, together with information as to where the relevant collection is located (if not at the same address as the body administering it);

• whether or not the public has access to the material for research or study purposes, and if not, how the public will otherwise benefit from the preservation copying;

• details of the collection, material, or item to be copied for preservation;

• an explanation of the reason why the material is considered by the organisation to be of cultural or historical significance to Australia (the guidelines give as an example that it is “the only collection of material of this kind in Australia”);

• any other relevant matters (the guidelines give as an example, “any relevant qualifications of the person assessing the material or of the person who may act as the authorising officer” for the collection).

The guidelines state that each application will be considered on its merits and that, where the Attorney-General is not satisfied with the information provided, further information may be requested. The guidelines also state that the Attorney-General may “consult as he/she considers appropriate”.

To view the guidelines, click here.

Back to top | Permalink

The government’s proposed amendments to the Copyright Amendment Bill 2006 are available from the Australian Parliament website.

For further information on the bill, click here and scroll to "Copyright Amendment Bill 2006".

The amendments include:

• limitations on the strict liability offences

• replacement of the proposed exception to allow format-shifting of music with an exception allowing "space-shifting": an owner of a copy of a sound recording will be able to make copies of that sound recording to use on any device, owned by that same person, that plays sound recordings (the copies need not be in a different format from the format of the original)

• the existing definition of "record" will be retained for the statutory licence for recording musical works

• a new defence of fair dealing for parody or satire (instead of an exception subject to the three-step test)

• a new limitation on the new "non-commercial" use exceptions to exclude uses for commercial profit, but allowing cost recovery

• a new version of the amendment to s 40 (research or study), limiting the meaning of "reasonable portion" to 10% or a chapter for published material

• key cultural institutions entitled to make 3 (rather than one) preservation copies of certain material

• a new version of the proposed amendment to s28, relating to communications for the purpose of playing or performing material in class

• a new version of the proposed amendment (s200AAA) relating to proxy caching by educational institutions

• a new definition of "licensor" for the purposes of the Copyright Tribunal provisions to limit the Tribunal's extended jurisdiction to licences offered by collecting societies.

Back to top | Permalink