Intellectual Property IP in the Digital Age Holly Raiche.

Intellectual Property

IP in the Digital Age

Holly Raiche

Session OutlineWhat is Intellectual Property

How Is Intellectual Property Protected

Copyright•Components•What is Protected•What is Not Protected

Content in a Digital Age: What is/should be protected

•User Generated content•software

Who is Liable: The role of the ISP (from Moorhouse to iiNET)

Intellectual PropertyWhat is Intellectual Property

•Not ‘real’ property•Gives the creator/owner•Exclusive economic rights•To exploit – do certain things – •In relation to the (creative) work•For a limited time

Intellectual PropertyWhat is Intellectual Property – Categories

DesignsVisual appearance or design of manufactured article (shape, pattern, ornamentation)

Designs Act 2003

Breach of confidenceInformation must have quality of confidence, imparted in circumstances importing an obligation of confidence and unauthorised use of the information to the detriment of the party communicating it

Common law (contract) or equity

Intellectual PropertyWhat is Intellectual Property – Categories

PatentsNew invention as a ‘manner of manufacture’ that is novel and inventive

Patents Act 1990

Trade MarksA sign (letter, word, name, signature, brand, label etc) used to distinguish goods or services dealt with in the course of trade by a person from goods or services so dealt with or provided by any other person.

Trade Marks Act 1995

Part IV Competition and Consumer Act 2010

Tort of Passing Off

Intellectual PropertyDomain Names and Trade Mark: The Issue

Trade Mark – relates to a specific business/service – often at a specific geographic location

Domain Name – is global

‘Cybersquatting’

BT, Virgin, Marks & Spenders et anor v One in A Million [1998] EWCA Civ 1272 (23 July 1998)

CSR Ltd v Resource Capital Aust P/L [2003]

FCA 279

Intellectual PropertyICANN: Uniform Domain Name Dispute Resolution

Available under all gTLD registrars

When •a domain name is identical or confusingly similar to a trade or service mark in which complainant has rights•The holder has no legitimate rights in the domain name•name registered in bad faith - acquired for primary purpose of selling or otherwise transferring the name to the rights holder or preventing the rights holder from obtaining the name

Settlement processes set out including arbitrators (including WIPO)

Intellectual PropertyDomain Names and Hyper-linking:

hyper-linking vs ‘deep’ hyper-linking

Shetland Times – with Shetland News Web – exclusively Internet service linked directly to Shetland Times stories (deep hyper-linking)

Ticketmaster vs Microsoft – Microsoft deep hyper-linked to Ticketmaster site Seattle Sidewalk – bypassing home page information/advertising

Intellectual PropertyCopyright – History

Stationer’s company 1557Company members (printers and booksellers) could purchase a manuscript and, once purchased, had a monopoly on printing, publishing and selling the manuscript (and they could trade the right)

Statute of Anne 1709Gave the author of manuscripts the exclusive right of reproduction (for existing works not already purchased by a printer/bookseller – for 21 years and for new works – 14 years).

COPYRIGHTElements (Copyright Act 1968)

•Creative•literary, dramatic, musical and artistic plus other works (later, sound recordings, films, radio/TV broadcasts etc)

•In a material form (not just an idea or information)•Original

COPYRIGHTWhat is protected

Original works• literary, •dramatic, •musical• artistic

In subject matter other than works•Sound recordings•Cinematograph films•Television/sound broadcasts•Published editions of works

COPYRIGHTCopyright Holder Rights

Economic•Reproduce in material form•Publish•Perform/communicate to the public•Make adaption•Duration – generally 70 years of death of creator or if not published in creator lifetime, 70 years after made public

Moral•Right of attribution•Right against false attribution of authorship•Right of integrity of authorship•Duration – author’s lifetime

COPYRIGHTCopyright as a balance between public access to creative endeavour and reward to the creator for their work

What is not protected: Public Right of Access •material that is out of copyright•Fair dealing -

•Research or study•Criticism or review•Parody or satire•News reporting•Professional advice

•10% rule – single copy of chapter/publication•computer exceptions•Library/educational institution/government copying

COPYRIGHTFair use (US): As a doctrine – in legislation – looks at:

•the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

•the nature of the copyrighted work;•the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

•the effect of the use upon the potential market for or value of the copyrighted work.

COPYRIGHTDigital Content: Computer Programs

The Apple Case: Is the software a literary work (can be in readable form as source code) but their purpose is to control the execution of a machine – when converted into machine executable form

The Apple Case ((1968) 6 IPR 1 (HC judgment)Of itself however, and regardless of how widely one construes the phrase, the arrangement (or series) of electrons or electrical charges in the silicon chip does not constitute a "literary work". It is not written. It is not in a comprehensible language. It cannot be read. It cannot even be seen. Nor is it designed or produced to be read or seen. It is, and was designed and produced to be, an attribute of a functioning part of an operating machine.

COPYRIGHTComputer Programs: Copyright Act 1968

computer program means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

literary work includes:

(a)a table, or compilation, expressed in words, figures or symbols; and

(b)a computer program or compilation of computer programs.

When is a computer program copied? – is it when it is reverse engineered and elements of the program used in the alleged copy?

Powerflex Services P/L v Data Access Corporation

COPYRIGHTThe Digital Agenda Act 2000(context: US Digital Millennium Copyright Act 1998 and WIPO Copyright Treaty)

Has the balance shifted from prohibition on unauthorised copying to unauthorised access?

New right:

to communicate to the public - make available online or electronically transmit (over a path or a combination of paths, provided over a material substance or otherwise) a work or other subject matter

Make available online – public may access from a place and time individually chosen by the individual

(could be one member of the public at a time – Telstra v APRA)

COPYRIGHTDigital Agenda Act 2000 (cont’d)

NB: Shift is to give copyright holders the decision on what is put online (and terms of access on line) – regardless of the purpose of individual access

Prohibition on circumvention service device/service (to get around technological access control) except for permitted purpose (fair dealing is not a permitted purpose)

Exception – browsing and caching(??)

COPYRIGHTProtection of Digital Content: Computer Games

Galaxy Electronics v Sega [1997] FCA 403

Protection of computer generated moving images/sounds constitute a cinematograph film? (not a computer program)

Def cinematographic film – def includes visual images/sounds – aggregated images embodied in…

COPYRIGHTUser Generated content•What is it?•Who is the author? Who is the owner?(noting it is estimated 70% of material on YouTube is made up of unauthorised copyright material)

•Is it direct infringement – reproduction/publication or more than a sample of content

•Was it fair use/fair dealing

•Was a substantial part of the work used

•For what purpose

Example: Mash-up presidential candidates repeating the word ‘change’ with the David Bowie song Changes

COPYRIGHT - AuthorisationUNSW v Moorhouse [1975] HCA 26Held that the University had ‘authorised’ (can mean sanction, approve, countenance) through s. 36(1)- the reproduction of copyright work- through provision of open shelves of books, copying machines (even with notices)

Telstra v APRA (Music on Hold) 146 ALR 649 (1997)Music played in 3 circumstances

•Music supplied by unknown person•Music by Telecom service centre•Music by special Telstra service

Was held to be a broadcast

Was held to be a broadcast to the copyright owner’s public (even if each individual heard the music alone)

COPYRIGHT - AuthorisationSection 36 Infringement by doing acts comprised in the copyright

(1)Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

(2)(1A) In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following:

(a) the extent (if any) of the person’s power to prevent the of the act concerned

(b) the nature of any relationship existing between the person and the person who did the act concerned;

(c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.

COPYRIGHT – US Safe HarbourOnline Copyright Infringement Liability Act – Safe Harbour Provisions of 1998 Digital Millennium Copyright Act – Who is Covered?

(A) As used in subsection (a), the term "service provider" means an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received.(B) As used in this section, other than subsection (a), the term "service provider" means a provider of online services or network access, or the operator of facilities therefore, and includes an entity described in subparagraph (A).

COPYRIGHT –US Safe HarbourUS Safe Harbor Scheme (Extract)

Information Residing Systems or Networks at Discretion of Users In general.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—

• in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or • upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material; •does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and •upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

COPYRIGHT – US Safe Harbour

Viacom v YouTube (owned by Google)

YouTube obtained summary judgment.. Found YouTube did not have actual knowledge of what video clips were being downloaded, and when given a HUGE take-down list of infringing sites, had done so.

•Was no direct infringement – users clicking on hyperlinks means no act on Google’s part•Was no pubic display when thumbnail of video shown next to hyperlink•No reproduction even though Google converts video into Flash – again no purposeful act by Google…•Real issue – who monitors and who polices?

COPYRIGHT – US Safe Harbour

Viacom v YouTubeOver the past decade, the emergence of broadband networks, Internet protocol, and inexpensive wireless network has revolutionized the way Americans inform and entertain themselves. Millions have seized the opportunities digital technology provides to obtain creative works and to express themselves creatively. Entrepreneurs have made fortunes providing the networks, the tools and the creative works that have fueled this revolution. But these same innovations have also been misused to fuel an explosion of copyright infringement by exploiting the inexpensive duplication and distribution made possible by digital technology. Some entities, rather than taking the lawful path of building businesses that respect intellectual property rights on the Internet, have sought their fortunes by brazenly exploiting the infringing potential of digital technology.

COPYRIGHT – AuthorisationS 101 Infringement by doing acts comprised in copyright

(1)Subject to this Act, a copyright subsisting by virtue of this Part is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright

(1A) In determining, for the purposes of subsection

(1), whether or not a person has authorised the doing in Australia of any act comprised in a copyright subsisting by virtue of this Part without the licence of the owner of the copyright, the matters that must be taken into account include the following:

(a) of the owner of the copyright, the matters that must be taken into account include the following:

(b) the nature of any relationship existing between the person and the person who did the act concerned;

COPYRIGHT – Authorisation

(c) whether the person took any other reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.;

(2) The next two succeeding sections do not affect the generality of the last preceding subsection.

(3) Subsection (1) applies in relation to an act done in relation to a sound recording whether the act is done by directly or indirectly making use of a record embodying the recording.

(4) Subsection (1) applies in relation to an act done in relation to a television broadcast or a sound broadcast whether the act is done by the reception of the broadcast or by making use of any article or thing in which the visual images and sounds comprised in the broadcast have been embodied.

COPYRIGHT – Safe Harbours. 39B A person (including a carrier or carriage service provider) who provides facilities for making, or facilitating the making of, a communication is not taken to have authorised any infringement of copyright in a work merely because another person uses the facilities so provided to do something the right to do which is included in the copyright. (Also s. 1112E – applies to audio visual)

The Attorney-General’s Dept has proposed a wider definition of Carriage Service Provider for the purposes of the Copyright Act – safe harbour scheme: to go beyond providers of access to public networks supplied to the public to include:

•Online search engine

•Bulletin boards

•ISPs providing P2P

•Providers of messaging services, chat etc

COPYRIGHT – Safe Harbour

Reliance on ‘mere facilities’ providerUniversal Music v Sharman [2005] FCA 1242

Defendants operated peer-to-peer (P2P) Kazaa file sharing system

On authorisation – met tests in s. 101

On s. 112E facilities – broad definition of facilities but

Protection under s. 39B – met

Cooper v Universal Music [2006] FCAFC 187Cooper as owner and provider of website ‘mp3s4free.net’

•On authorisation – met tests in s. 101 •Protection under s. 112E – met

COPYRIGHT – iiNET

Roadshow Films (AFACT) v iiNET: Facts: •Technology used was P2P software – BitTorrent protocol (Users with software in network are able to copy file content fro others in the network and make copied file available to others in the network)•AUP allowed iiNET to cancel service for illegal or unusual use•AFACT employees subscribed to iiNET and joined BitTorrent ‘swarm’ – and copied copyright material•AFACT also used DTecNet software to collect evidence•AFACT provided IP addresses to iiNET•Accounts not terminated

COPYRIGHT – iiNETRoadshow Films (AFACT) v iiNET [2010] FCA•Justice Cowdrey•Didn’t use ‘authorisation’ tests•Instead, could be no authorisation unless iiNET proovided the ‘means’ of infringement•Broadband provided by iiNET merely a precondition to the means - BitTorrent was the means

As obiter:

Power to prevent: could have passed on notices/terminated service –ineffectual step not a power to stop

Applicants could have pursued the infringers

Wasn’t financial benefit toiiNET

Even if is power and knowledge, is not ipso facto authorisation


AFACT v iiNET [2011] FCAFC 23•On authorisation: All three rejected the ‘means of infringement’ test and affirmed the authorisation tests•Power to prevent – with varying stress, all said iiNET had contractual and technical power to prevent infringement•On relationship – was a contractual relationship between iiNET and its customers, covered by the AUP•Reasonable approach to prevent: - different approach by each of the judges


AFACT v iiNET [2011] FCAFC 23 (cont’d)

Emmett: What would be reasonable:

iiNET informed in writing of particulars

iiNET has been requested to take specific steps•Notify customers of infringement•Invite customers whether service so used•Invite customers to refute allegations or give assurances of no repetition•Warn customers if not response, service suspended (then terminated)

•iiNET given unequivocal evidence•iiNET reimbursed to reasonable costs


AFACT v iiNET [2011] FCAFC 23 (cont’d)

Nicholas J and Jagot J concurred, but Nicolas went further:

Notices sent by AFACT insufficient to provide iNET with requisite knowledge about specific acts of infringement – no verification of accuracy or explanation of collection methodology – and not up to iiNET to seek out such information


AFACT v iiNET – High Court

What relief is being sought/what do you expect ISPs to stop doing

Damages from iiNET s relief?

Does inaction after warning notice(s) constitute authorisation

Is not deletion of download a continuing infringement

What was the element required in Moorhouse

18/04/23 The Internet is for Everyone 37

Online Infringement, ISPs and the NBN

Memorandum of Understanding (USA)

Creation of a Centre for Copyright Infringement Copyright owners and ISPs (Cost – 50% each)

CCI Roles– Education– Development of reliable, accurate and

verifiable methodologies (IP owners/ISPs)– Maintain Technical expert(s)– Collection of Data– Notification– Mitigation Measures



CCI – Continued• Education

– development of ‘copyright alerts’

• Technical– development and maintenance of ‘methodologies for

identifying online infringement and providing evidence– development of methods to match IP addresses with

subscriber accounts, and retention of records to do so

– Notification by IP Owners to ISPs• The work is copyright• Basis on which ownership of IP asserted• Statement of accuracy of notice• Technical information to identity IP address



CCI – ContinuedISP AUPs

– Infringing copyright infringes AUP– Continued receipt of copyright alerts will lead to action– List of mitigation measures– Eventual application of copyright legislation

ISP notification to subscriber• Education material• Copyright alert• Acknowledgement notice• Mitigation measures (shaping, direction to landing page• Review if elected by subscriber• Post mitigation

Intellectual Property IP in the Digital Age Holly Raiche.

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