Therese Catanzariti 1. 2 Works – section 32 literary works dramatic works musical works ...

Therese Catanzariti 1

CopyrightIntellectual Property

2015Therese Catanzariti


works and other subject matter

Works – section 32· literary works· dramatic works· musical works artistic works

Part IV other subject matter· Sound recordings – s 85· Cinematographic films – s 86· Television broadcasts and sound broadcasts – s 87· Published editions of works - s 88

Subject matter may include works◦ film includes script, costume designs, song◦ sound recording include music and lyrics


works and other subject matter

sometimes stretched Computer program – literary work Computer game – cinematograph film Electronic poker machine game – cinematograph

film?? Fireworks display schedule – dramatic work??

contrast◦ France (fashion designs)◦ US (boat hull)


exhaustive

May be shortJapanese haiku 5/ 7 / 5Mohammed Ali – “Me / We”

“literary work” includes:(a) a table, or compilation, expressed in words, figures or

symbols; and(b) a computer program or compilation of computer programs

don’t need literary merit

bills of sale, exam papers, computer compression table, betting coupon, weight watcher’s program, railway timetables, compatibility table printers and toners


literary works

Hollinrake v Truswell – cut-out of woman’s arm◦ “literary work is intended to afford either information and instruction, or pleasure, in the

form of literary enjoyment”.

Exxon Corporation – one word “Exxon”◦ needs to be “original literary work”◦ not just original and literary (in writing)◦ Convey no meaning and suggest nothing in itself

Elwood v Cotton On – words / numbers suggesting US college teams◦ Such semiotic meaning as the words and numbers convey (they do

convey such meaning to some extent, being well recognised symbols that "stand for" something else) is so insubstantial and vague that they do not constitute literary works.

Fairfax v Reed – newspaper headlines◦ too slight, insubstantial and too short to qualify as literary works◦ May represent only facts and ideas◦ Metawork of information about work, not work itself


Literary works


Fairfax v Reed7

Computer Edge v Apple – literary work included computer program

Digital Agenda reforms (2000) expressly include computer program

Computer program: ◦ set of statements or instructions to be used in a computer

to bring about a certain result, ie, the language not the application is protected.

NOT include data / content in program – AVRA v Warners

NOT include functions / language – Data Access


literary works – computer program

Therese Catanzariti, 13 Wentworth Chambers (c) 2014

Is there a human author? software tools to write code - C++ tools

But a computer program is a tool and it is natural to think that the author of a work generated by a computer program will ordinarily be the person in control of that program. However, care must taken to ensure that the efforts of that person can be seen as being directed to the reduction of a work into a material form. Software comes in a variety of forms and the tasks performed by it range from the trivial to the substantial. So long as the person controlling the program can be seen as directing or fashioning the material form of the work there is no particular danger in viewing that person as the work’s author. But there will be cases where the person operating a program is not controlling the nature of the material form produced by it and in those cases that person will not contribute sufficient independent intellectual effort or sufficient effort of a literary nature to the creation of that form to constitute that person as its author: a plane with its autopilot engaged is flying itself. In such cases, the performance by a computer of functions ordinarily performed by human authors will mean that copyright does not subsist in the work thus created.

Telstra v Phone Directories (2010) 194 FCR 142 per Perram J at [118]

includes choreographic or “other dumb show”, and a scenario or script for a film (s.10(1))

choreagraphic work – Laban notation

Intended to be performed or presented(Ricketson)

Jesus Christ Superstar – originally no stage show The Kings Speech – first performance was a read-

through


Dramatic works

Norowzian v Ark Ltd◦ Jump cut edited tv commercial can’t be performed

Aristocrat Leisure Industries Pty Ltd v Pacific Gaming Pty Ltd◦ written specifications of digital poker machine not dramatic work◦ Lack element of performance◦

Australian Olympic Committee Inc v Big Fights Inc◦ action must be staged, contrived or directed◦ not simply recorded, so no copyright in sporting events

Nine v ABC (Year 2000 fireworks) (1999)◦ schedule how fireworks would be performed◦ interlocutory so bal of convenience◦ dramatic work “not strong” as may be discrepancy between what

planned and what happen - performance may not comply with script


Dramatic works

Endemol – Big Brother BBC Worldwide – The Office Shine – Masterchef, Biggest Loser (sold to News US $690M)format rights – combination copyright /confidential information

Green v Broadcast Corp of NZ (1989) “clapometer” “make up your mind time a dramatic work must have sufficient unity to be

capable of performance and that the features claimed as constituting the ‘format’ of a television show, being unrelated to each other except as accessories to be used in presentation of some other dramatic or musical performance, lack that essential characteristic


dramatic works – reality TV

distinct from ◦ lyrics – literary work◦ sound recording – other subject matter “sound recording”◦ performance – performer’s rights

can include adaptations, arrangements, samples if sufficient originality

CBS Records Australia Ltd v Guy Gross◦ Colette, demo of “Ring My Bell”◦ arrangement not sufficiently original to be new

original work


musical works

paintings, sculptures, drawings, engravings, photographs;

buildings and models of buildings. works of artistic craftsmanship; not circuit layouts

no need for ‘artistic quality’ unless work of artistic craftsmanship.


artistic works

Millar and Lange Ltd v Polak◦ Stylised representation of a single letter on a

Christmas card◦ Lott v JBW & Friends- “Opera In The Outback”◦ Four words as part of a graphic

Roland Corporation v Lorenzo◦ Logo

Elwood v Cotton On◦ Where words and numerals used for visual look

and feel not semiotic reasons


can “writing” be artistic work?


Elwood

Cotton On

NZ Ct Appeal: Lincoln Industries case (plastic frisbee) Greenfield Products v Rover-Scott Bonnar (moulds for pulleys and clutch plates for ride on mower)

Copyright Act not distinguish between industrial and aesthetic works

but limited protection for registerable designs

Sculpture as haphazard collection of itemsTracy Emin – “My Bed” (shortlisted Turner Prize)Arte povera– 1960’s radical artists using found objectsJoseph Beuys – Tate Modern, Kunstmusem Liechtenstein

Creation Records v Newsgroup Newspapers – Oasis coverscene itself not copyright and merely assembly of ‘objets trouvés.Photograph not copy of official photograph, but merely shot of same

sceneTherese Catanzariti 17

Sculptures and engravings

arts and crafts movement / anti-industrial John Ruskin, William Morris, Tiffany – V&A Needs artistic quality

exception to copyright – design overlap

George Hensher v Restawhile – chicken wire prototype

Coogi v Hysport- commercial fabric◦ doesn’t need to be handmade

Burge v Swarbrick –plugs and mouldings◦ whether artistic expression unconstrained by

functional concerns


works of artistic craftsmanship

“wall of sound” Phil Spector Stock Aitken Waterman – record music using

synthesisers, drum machines, sequencers and vocal track

sound recording - aggregate of the sounds embodied in a record – s10

record – disc, tape, paper, electronic file or other device in which the sounds are embodied – s10


sound recording

mobile phone ringtones ◦ monophonic instrumental◦ polyphonic instrumental◦ truetones

Sound recording associated with a film is deemed not to be a sound recording

but forms part of the cinematographic film - s 23(1) PPCA v FACTS –exists and entitled to copyright


sound recording

Aggregate of visual images embodied in an article capable of being shown as a moving picture

Galaxy Electronics Pty Ltd v Sega Enterprises◦ Computer game held to be cinematograph film◦ even though order of play could change with each game◦ because limitations in the range of outcomes preconceived by

the authors Aristocrat v Pacific Gaming

◦ Pacific Gaming conceded that poker machine game was film◦ may not be because need real progression

France - film is “work” not “other subject matter“


cinematograph film

Published editions of works – includes newspapers, magazines and books

Presentation, layout, typographical arrangement Not defined in Copyright Act Nationwide News Ltd v Copyright Agency Ltd“protects the presentation embodied in the edition” US – West Publishing – page numbers of legal

reports


Published Editions

A communication to the public delivered by a broadcasting service

free to air / cable, subscription/ non-subscription Protects act of communication NOT the work Protects the broadcast signal Network Ten Pty Ltd v TCN Channel Nine Pty Ltd

◦ “The Panel” re-broadcast extract from Alan Border Medal Dinner

◦ Trial judge held every minute was a broadcastbut if broadcast 24/7 no start or end◦ HC held that the broadcast was each program not every signal


Broadcasts


Duration

Generally works – life + 70 years Printed editions of works - 25 years Films – 70 years Sound recordings - 70 years TV & sound broadcasts – 50 years


Duration

Used to be life + 50 / 50 years European law harmonised up to maximum (Germany

was 70 years) US Sonny Bono Act (catalyst Steamboat Willie expiring??) Australia signed US/Australia Free Trade Agreement

Is this appropriate for computer programs? Information sheets? Industrial drawings?


Duration


Ownership

Owner – author lit, dram, musical or artistic– s35photo – person who took the photograph – s10

author has to be an individual Telstra v Phone Directories Company no human author of white and yellow pages

contrast s178 Copyright Designs Patents Act (Eng)

Computer generated work – work generated by computer in circumstances no human author of work


who is the owner - works

“work of joint authorship – work produced by the collaboration of two or more authors where contribution of each not separate from contribution of other authors

joint author’s contribution not distinct from other author/s - all authors write each chapter

not each author write separate chapters

Primary Health Care v Commissioner of Taxation“consultation notes and history of a patient where entries made by more than one doctor, could be seen as forming a continuous narrative with the patient as its subject, but the individual entries are separate and distinct and not the result of collaboration between the doctors”


Joint authors

song publicly performed / communicated◦ recording royalty for recording paid to PPCA (split performers/band and record company◦ publishing royalty for musical work / literary work to APRA(split composer/lyricist and music publisher)

Composer / lyricist royalties for cover versionsoriginal performers no royalties for cover versions

Composer / lyricist one or two people band four or five people

Fisher v Brooker – organist on “A Whiter Shade of Pale” joint author of musical work

Hadley v Kemp – Spandau Ballet drummer joint author of “Glow” but saxophonist not joint author of “True” (saxophone solo 9% of song)


authorship of musical workswhy John Lennon made more than Ringo Starr

Employees in course of employment – s35(6)

Commission artistic work – s35(5)◦ agreement for valuable consideration

take photograph (private or domestic) paint or draw a portrait make engraving

◦ commissioner is owner of copyright◦ if commission for particular purpose, author can restrain use for any

other purpose unless otherwise agree

Newspapers – s35(4)◦ under terms of employment by the proprietor of a newspaper, magazine

or similar periodical◦ For purpose of including in newspaper, magazine or similar periodical ◦ Author is owner for reproduction in book or hard copy◦ Newspaper is owner for other purposes unless otherwise agree


ownership – works - exceptions


is the author an “employee” degree of control the mode of remuneration, the provision and maintenance of equipment, the obligation to work, the hours of work provision for holidays, the deduction of income tax delegation of work by the putative employee

Stevens v Brodribb Sawmilling Co Pty Ltd (1986) 160 CLR 16 at [9] per Mason J

Hinkley wrote a class library “App Warrior” Using work computer and work computer tools At odd hours (but he used to work at RedRock during

odd hours of the day and night) Hinkley used AppWarrior so he could finish his

Redrock work within 2 hours – and spent the rest of his time mucking around on discussion boards

Hinkley joined Hotline Communications, got venture capital and assigned AppWarrior

Redrock claimed AppWarrior


Redrock Holdings Pty Ltd v Hinkley


Is the author an “employee”

legal authority to control, while remaining relevant and indeed often decisive, is no longer the sole determining factor when assessing whether a person is employed under a contract of service, in particular where that person exercises a high degree of professional skill and expertise in the performance of his or her duties

as a skilled Macintosh technician employed to fill a gap in Redrock's technical staff, it could be expected that even as an employee he would be given a great deal of latitude

on a fixed salary, from which group tax was deducted signed ATO employee Declaration entitled to annual leave, to sick leave and to long service leave. superannuation contributions were made by Redrock on his behalf. Provided necessary equipment and programs specially purchased to assist

writing software for the company Provide Internet access to download manuals, information or software as

needed. Redrock Holdings v Hinkley [2001] VSC 91 at [20] to [23] per Harper J


School Organisational Health Questionnaire 57 questions in 12 modules Measure teacher morale and school

organisational climate ACER/Independent Schools Victoria

reproduce 25 questions in Building Educational Effectiveness project

Insight SRC IP Holdings v Australian Council for Educational Research


Dr Hart, psychologist was the author Dr Hart employed by Victorian Dept Education on

teacher stress project based on research data collected from 1,520 Victorian

teachers from 18 primary and 26 secondary schools

making survey not part of his employment, not required to produce it

even tho not made outside working hours agreement between Dept and Hart that Dept could use

questionaire and he could use Dept data mean that questionaire not part of employment

Not Crown copyright because not directed to make it

Hart not Dept is owner


is the author an “employee”?

Contract for service or services sub-contractor s/he started here a while ago, we pay workers comp and

super and holidays, s/he gives us invoices with ABNs, we pay per hour, we don’t deduct PAYG

sole shareholder/director

Group certificates PAYG statements Tax returns Superannuation contributions Workers compensation

equitable ownership?

Maker is person who owns the record on which recording is made (and the performer if a live performance) – s22(3) and (3A)

Person who paid if recording made pursuant to agreement for valuable consideration

Employer if performer of live performance is employee

Crown if made under Crown’s direction – s178 International organisation if made under its

direction – s188


ownership – sound recording – s97

Maker including director Maker doing the things necessary for the production of the

first copy of film – s 22(4)

Person who paid if recording made pursuant to agreement for valuable consideration

Employer if director directed film pursuant to employment contract is employee

Crown if made under Crown’s direction – s178 International organisation if made under its direction – s188

contrast France – L113.7 – authorship of audiovisual work belongs to natural persons who have carried out intellectual creation of work

rebuttable presumption - author of screenplay, author of adaptation, author of dialogue, composer of music created for the film, director, author of underlying work (novel)


ownership – film – s98


NRL v Singtel broadcast of NRL football game record broadcast on mobile phone to watch later

Who was the maker of the copy of the broadcast TJ – the subscriber Full FC – Optus and subscriber

Full FC – “It equally is not apparent to us why a person who designs and operates a wholly automated copying system ought as of course not be treated as a “maker” of an infringing copy where the system itself is configured designedly so as to respond to a third party command to make that copy”


76 - The subscriber, by selecting the programme to be copied and by confirming that it is to be copied, can properly be said to be the person who instigates the copying. Yet it is Optus which effects it. Without the concerted actions of both there would be no copy made of a football match for the subscriber. Without the subscriber’s involvement, nothing would be created; without Optus’ involvement nothing would be copied. They have needed to act in concert to produce – they each have contributed to – a commonly desired outcome. The subscriber’s contributing acts were envisaged by the contractual terms and conditions. How they were to be done were indicated by the prompts given on the Optus TV Now TV guide page. The common design – the production of the selected programme for transmission to the subscriber – informed the solicitation and the taking of a subscription by the subscriber; it was immanent in the service to be provided.

maker - Optus and subscriber

infringement if exercise copyright without owner’s licence

do or authorise the doing of an act comprised in copyright

In Australia without being the owner or having the owner’s licence


owner has exclusive rights


Rights

Works - s.31(1) Sound recordings - s.85(1) Cinematographic film - s.86(1) Television and sound broadcasts - s.87(1) Printed editions - s.88(1)


Exclusive rights

to reproduce the work in a material form; to publish the work;

to perform the work in public; to communicate the work to the public;

to make an adaptation of the work

to enter into a commercial rental arrangement in respect of the work


Exclusive rights - works

to make a copy (sound recording/ film / published edition)

to cause it to be performed in public (film/sound recording); to communicate to the public (film/sound recording / broadcast);

to enter into a commercial rental arrangement in respect of sound recording

to make a film or sound recording of a broadcast


exclusive rights – other subject matter

Works = > reproduced

Other subject matter => make a copy

Reproduction broader making a copyCBS Records Australia v Telmak Teleproducts - must take actual sounds– not making a copy sound recording if create

something that sounds like sound recording not cover sound alike recordingsmuzak, polyphonic ringtones


reproduction / make a copy

May not look the same May be in different dimension

Reproduce work if make a film or sound recording of work – s21(1) Reproduce paper script by creating film

Reproduce artistic work if make 3D version of it – s21(3) King Features v Kleeman (Popeye case) – make a doll of

the cartoon drawing Lend Lease v Warrigal Homes - build building based on

architecture plans LB Plastics v Swish – reproduce drawer design


reproduction - broader than copying

Translation of a literary work Dramatic version of a non-dramatic

literary work Non-dramatic version of a dramatic

literary work Picture version of a literary work In relation to computer programs, a

version of the work not being a reproduction of the work

In relation to musical works, an arrangement or transcription.


adaptation – s10

A work is deemed to have been published if reproductions of the work or edition have been supplied (whether by sale or otherwise) to the public – s29

definition only applies for determining if work is published or unpublished to fix subsistence

Avel Pty Ltd v Multicoin Amusements Pty Ltd “to publish” as an exclusive right is to make

public that which has not previously been made public in the copyright territory


publish

doesn’t need to be in Martin Place copyright owner’s public analyse audience: were the persons bound together

by◦ domestic or private tie (ie family reunion), or ◦ aspect of their public life (ie employment)

APRA v Tolbush – chain of automative equipment shops used car radio in car showroom to show how car works /

radio fixed APRA v Canterbury Bankstown Leagues Club – perform

music in bar APRA v Commonwealth Bank – bank played short video to

its employees including 25 seconds of soundtrack

contrast US homestyle exception


perform in public

any mode of visual or aural presentation, whether or not by operation of a device

doesn’t need to be live performance involving living performers before an audience

Includes show a movie or play CD in public

deems the occupier of a premises to be performing the work (or causing SR/CF to be seen/heard in public) where equipment for the performance is provided by or with the consent of the occupier


Perform – s27

Introduced in 2000 Digital Agenda reforms Intended technology neutral replacing broadcast to public / transmit cable

Key difference is geography: Performances to geographically proximate audience (people gathered

one place) Communications to geographically disparate audiences (people not

gathered).

Telstra Corporation Ltd v APRA (broadcast to the public) Telstra provide music on hold to callers including mobile phone users.

Was this a broadcast ‘to the public’? Music on hold is an ‘adjunct to a commercial activity’, used to

‘entertain, placate or distract customers ... in a way hoped to be congenial to them’

A telephone conversation may be private. However, when callers are placed on hold they hear music because it is intended that any member of the public who calls the engaged number will hear the music


Communication to the public

"communicate" means make available online or electronically transmit

made by the person responsible for determining the content of the communication – s22(6)

Cooper v Universal Music Australia ‘making available’ – if making file available via peer to

peer filesharing are you making available If you disconnect and then reconnect is that two infringements or

one?

Roadshow v iinet Is one computer or cluster of computers making available


making available online

transmit ownership – s197◦ assignment◦ Will◦ Devolution by operation of law

future copyright - vests when it comes into existence – s197

assignment must be in writing signed by copyright owner Insight IRC v ACER – agreement can’t refer to earlier oral

agreement because can only assign in writing

divisible / partial assignments or licences◦ certain classes of rights; ◦ for a specified time; or◦ for a specified geographical area


transmission of ownership


assignment and licensing

60

permission or consent to do something sometimes implied when no written assignment

may be revocable and subject to◦ regular payments◦ satisfying performance criteria

does not create proprietary interest may not survive insolvency / bankruptcy

Therese Catanzariti

licensing

61

Therese (licensor) grants Ian (licensee) the exclusive right (type of rights) in and to the work “Finland Stories”

published by Federation Press in 2005 (work)

to communicate the work to the public (rights)

In Australia (area) for 10 years (term)

licence

Therese Catanzariti

62

in writing signed by owner/prospective owner – s10

authorised to do act of copyright to exclusion of all other persons (including copyright owner)

may commence proceedings for infringement, conversion and detinue – s119

difference with assignment◦ tax reasons (may not constitute a “disposal” for CGT◦ may still be revocable◦ may be subject to satisfying performance criteria

exclusive

Therese Catanzariti

63

Reasonable and equitable, obvious, and necessary for business efficacy BP Refinery v Hastings Shire Council, Codelfa v State Rail

necessary to imply term for reasonable or effective operation of contract – Byrnes v Australian Airlines

If engage someone to produce material then implied permission to use material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement - Beck v Montana Constructions Pty Ltd

Implied terms

Therese Catanzariti


CAL v NSW Survey plans Licence only implied if necessary to do so – not necessary

because statutory licence available

Apotex v Sanofi Aventis long-standing and widespread practice to copy the

originator’s PID when produce generic drug

Infringer had onus to show a proper foundation for the implied licence

TGA could accept different PID – TGA did not require evidence of practice equivocal Lack of objection is not enough for an implied licence May imply terms through custom and usagebut only between industry counterparties not competing

traders


collecting societies

67

CAL – Copyright Agency Limited (literary works)

APRA – Australian Performing Right Association (musical works / lyrics)

PPCA – Phonographic Performance Company of Australia (sound recordings )

Screenrights – audiovisual copyright society (films)

Viscopy – Visual Arts Copyright Collecting Society (especially aboriginal art)

Therese Catanzariti

Collecting Agencies or Societies

68

authors weak bargaining position

small marginal revenue= > little incentive for individual authors to enforce

rights

spread cost of enforcement over large number of authors

BUT sampling system not reflect actual use BUT no right to refuse licence BUT overhead costs

Therese Catanzariti

collective administration - authors

69

don’t need to search out owner of each copyright work

standard terms

bundled fee

BUT monopoly – no room to negotiate

Therese Catanzariti

collective administration - users


infringement

Causal connection Objective similarity

S. W. Hart v Edwards Hot Water Systems per Gibb CJ“In order for there to be a “reproduction” within the law of copyright, there must be an objective similarity between the two works and a causal connection between the plaintiff’s work and that of the defendant.


Proving infringement of works

actual derivation: only if copy the original work

Copyright does not grant a monopoly No liability if independent creation

Conscious or subconscious Francis Day Hunter v Bron – subconsious

copying popular song “In A Little Spanish Town”

EMI v Larrikin – flautist (Hams) no evidence


Causal Connection

catch red-handed?

presumption – access + striking similarity

can you can prove access?

can prove indirect access through access to copy

– King Features v Kleeman [1941] AC 417

Therese Catanzariti

copyright – causal connection

73

Copied directly from original work presumed if evidence of access +

similarity

access◦ gave them a numbered copy of work◦ visits from their IP address to yr website◦ visitors book + visited yr gallery / workshop /

showroom / display home

striking similarity that precludes possibility of independent creation –Clarendon v Henley Arch Therese Catanzariti 74

direct causal connection

reproduction through intermediate work

Uncontentious when protected work, intermediate material and infringing work similar in kind (painting → photograph → painting)

Contentious when intermediate material is different king of work such as written description


Indirect Causal Connection

King Features v Kleeman Created dolls and brooches based on

cartoonsNever saw original Popeye drawings that

the cartoons were based on

Frank Winstone v Plix Productsnever saw Plix kiwi pocketsCreated kiwi pockets based on description

of Plix kiwi pockets in legislation


Indirect – never saw original

Copyright protects reproducing or making a copy of the original expression

So the new work needs to reproduce or be a copy

No infringement if use ideas to create a work that is different

Is there an overall resemblance between the 2 works?


Objective similarity

“Kookaburra sits in the old gumtree” is a short musical consisting of four bars in a major key

Two bars are reproduced in a flute riff in the the pop song “Down Under” which is in a major key

Melody is the same even though the harmony and the “feel” of the works are different, and pop song added extra notes

Objective similarity is not determined by note for note comparison, but determined by ear and eye.

The more simple the work, greater degree of taking required


Objective similarity

The ‘basic hook’79Therese Catanzariti

doing act in relation to a “work or other subject‑matter”

includes doing of act in relation to a substantial part of the work or

other subject‑matter

don’t avoid copyright infringement by leaving out inessential parts


substantial part – s14

Assessed by quality not quantity of what taken Ladbroke v William Hill is the part taken “novel or striking, or merely a commonplace arrangement of ordinary words or well-known data

‘Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright and therefore will not be protected.

Quality assessed by originality Data Access v. Powerflex consider “the originality of the part taken” to determine

Reproduction of data irrelevant to structure, choice of commands, and combination of commands is unlikely to reproduce a substantial part


substantial part – s14

Hawkes and Son (London) Ltd v. Paramount Film Service Ltd – Colonol Bogey’s March

20 sec of a 4 min musical work “would be recognised by any person”, is a “vital and an essential part”, contains the “principle air”.

EMI Music v Larrikin - Kookaburra the first two bars are “the signature” of that

work First thing you hear, so melody sticks in your

head

substantial part - music



The ‘basic hook’

French / Crennan / Kiefel JJ “That facts are not protected is a crucial part of the balancing of competing

policy considerations in copyright legislation. The information/expression dichotomy, in copyright law, is rooted in considerations of social utility. Copyright, being an exception to the law's general abhorrence of monopolies, does not confer a monopoly on facts or information because to do so would impede the reading public's access to and use of facts and information. Copyright is not given to reward work distinct from the production of a particular form of expression” (para 28)

“the expression of the time and title information, in respect of each programme, is not a form of expression which requires particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day. The authors of the Weekly Schedule (or the Nine Database) had little, if any, choice in the particular form of expression adopted, as that expression was essentially dictated by the nature of the information. That expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part. “ (para 42)


substantial part – icetv v Nine

Gummow, Hayne, Heydon JJ substantiality depend on quality than quantity of what taken detailed and lengthy preparatory work was directed to business of

Nine and irrelevant, and work done in creating guides involved extremely modest skill and labour

don’t look at what copied to determine if this was original, but look to whole work to determine if what copied was substantial part of the whole work

“in assessing the quality of the time and title information, as components of the Weekly Schedule, baldly stated matters of fact or intention are inseparable from and co-extensive with their expression. It is difficult to discern the expression of thought in statements of which programmes will be broadcast and when this will occur. If the facts be divorced from the other elements constituting the compilation in suit, as is the case with the use by IceTV of the time and title information, then it is difficult to treat the IceGuide as the reproduction of a substantial part of the Weekly Schedule in the qualitative sense required by the case law (para 170)


substantial part – icetv v Nine

Horizontal – literal copying Take part of the whole

Vertical – non-literal copying Don’t copy word for word Take structure / hierachy

Idea / expression dichotomy


substantial part

Trial Judge (Gordon J)◦ The relevant original expression in the Elwood

artistic work was in the ‘precise selection or arrangement of the various design elements’ and Cotton On had not reproduced a substantial part

FCAFC◦ Overturns – relevant original expression of the

Elwood artistic work was in the overall ‘look and feel’ of the layout which had been substantially reproduced by Cotton On


substantial part - Elwood


Elwood

Cotton On

Ladakh v Quick Fashion [2012] FCA 389 Ladakh owned butterfly pattern – Ladakh

sent pattern to China, material and dresses made in China, dresses sent back to Ladakh

Quick sold garments that reproduced the butterfly pattern – sourced from China

BUT no evidence that Quick reproduced or authorised the reproduction in Australia

China source said saw material in China

possible leakage of artwork in China

Infringement in Australia


Knowledge not required for primary infringement

Knowledge required for ◦secondary infringement ◦ remedies s115(3)- additional damages for flagrant infringement of copyright

S116(2) - conversion and detinue

IceTV (Gummow, Hayne and Heydon JJ) may consider animus furandi


Knowledge


Roadshow v iinet Bit-torrent – cluster communicate film one user only communicated a few files, though

each file was critical

NRL v Singtel Optus Optus maker or joint maker of copy of

broadcast, even though subscriber click start Optus role pervasive, even though automated

system – Optus created system to work in this way

infringer

Importing, selling or otherwise dealing with ◦articles that would infringe copyright if made in Australia - s 37+38

◦Pt IV subject-matter - s. 102 + 103

even tho may be genuine and not infringe copyright in place where they are made

permitting infringing performance in place of public entertainment - s. 39


Secondary Infringement

• can create territorial trade barriers because of the territorial divisibility of copyright– Parallel importation or the grey market– Interstate Parcel Express v Time-Life – Bailey (R & A) & Co Ltd v Boccaccio Pty Ltd (1986) 4

NSWLR 701 (Bailey’s Irish Cream label)

• If these are genuine why should the copyright owner control their further exploitation – exhaustion of rights??

• Why might a copyright owner want to price or product discriminate in different territories?

• Does DRM protect copyright or market segmentation?• Sony v Stevens – ACCC as amicus curiae

secondary infringement



authorise doing of any acts of copyright deep pockets easier to sue one than many

Extent of power to prevent Nature of relationship btw person and

person who did the act Whether person took reasonable steps

including comply with industry code of conduct

Authorisation – s36, s101


UNSW v Moorehouse Combination of library, computers, students Sanction, countenance or approve

Roadshow v iinet need more than countenance no power to prevent infringement - power to

terminate contract was too indirect reluctant to impose burden of checking whether

infringing notices not clear

authorisation


NRL v Singtel Subscriber was time-shifting – no

infringement to record broadcast – s111 If Optus authorising subscriber, then no

infringement because subscriber not infringing

NRL needed Optus to be joint maker not just authorising subscriber

need primary infringement


defences

not copy whole or a substantial part

defences to infringement◦ Private copying◦ Fair dealing◦ Digital exceptions◦ Other exceptions

parallel imports no copyright protection registerable designs compulsory licence schemes


limiting rights

time-shifting - s10(10), 111, 248A(1)(aaa)◦ recording broadcasts ◦ for replay at more convenient times - private &

domestic use

space-shifting - s. 109A copying sound recordings for private & domestic use

format shifting – s43C, 47J, 110AA◦ Copying of other works etc from one format to another◦ for private & domestic use


Private copying - 2006 amendments

◦ “copyright law must be seen as credible. If the use of popular and widely owned technology is illegal, but everyone does it anyway, respect for the law is diluted… brings the law more into line with reasonable consumer behaviour… ordinary consumers should not be treated like copyright pirates” - Attorney General P Ruddock 16/2/2007

◦ 109A - This section applies if the owner of a copy makes another copy of a sound recording from the earlier copy for the sole purpose of the owner’s private and domestic use

◦ NOT ripping a friend’s CD, downloading from the internet◦ => most people are still pirates ◦ => Dallas Buyers Club case


Private copying

specific categories◦ research or study – s40◦ criticism or review – s41◦ parody or satire – s41A◦ reporting news – s42◦ professional advice by lawyer, patent or TM

attorney – s43(2) onus on defendant to establish

◦ fall within category – work and purpose◦ use is fair in all circumstances◦ conditions have been satisfied (eg attribution)


fair dealing

detailed consideration of factors Number / extent of quotations/extracts; The use of those quotations/extracts; Relative proportion - long extracts /short comments; Overall impression.

◦ Lord Denning in Hubbard v Vosper(approved by Beaumont J in De Garis case)

◦ May be a significant amount of the workTime Warner v Channel Four (Clockwork Orange)


when is the dealing fair?

excerpts from 20 programs from Nine 8 seconds to – 42 seconds

inaugural Allan Border Medal Dinner. Prime Minister singing “Happy Birthday” (Midday) rugby league player performing

cartwheel after grand final victory (Wide World of Sports)

re-enactment of stabbing (Australia’s Most Wanted)

child yawning (Today Show)

The Panel


s.41 (works), s.103A(audio-visual items) relevant purpose is taker not ultimate users

◦ De Garis v Neville Jeffress Pidler Pty Ltd - commercial news clipping service

some judgment or evaluation doesn’t have to criticise or review the work

itself ◦ Pro Sieben Media v Carlton UK – criticise cheque book

journalism and show 30 second extract of paid interview

taking need not be solely for the relevant purpose Ten v Nine (the Panel case)

need acknowledgement of sourceTherese Catanzariti 10

7

fair dealing - criticism and review

s.40 (works), s.103C(audio-visual items) not mere gathering of information / facts –

De Garis relevant purpose is taker not ultimate

users Librarians

◦ special provisions ◦ generally dealing with copyright material on

behalf another person who will use that material for research and study - ss49-51, 110A


fair dealing - study and research

Factors to take into account –s40(2),103C(2)◦ purpose & character of dealing, ◦ nature of work/audio-visual item & its,

availability, ◦ market effect of dealing, ◦ Amount / substantiality of part copied

reasonable proportion: s.10(2)-(2C) reasonable portion s. 40 (3) – (8): 10% or

single chapter


fair dealing - study and research

reporting of news ◦ by newspaper, magazine or similar periodical:s.42(1)

(a) & s.103B(1)(a) (sufficient acknowledgment required); or

◦ By means of communication or cinematographic film: s.42(1)(b) & s. 103B(1)(b)

sufficient acknowledgement required broader than current events more than making reports available to others –

De Garis news not entertainment – The Panel case(even tho more Americans get their news from

Jon Stewart’s Daily Show than network news)


fair dealing – reporting news

introduced after The Panel case

Australian Copyright Council Information Sheet:

Making something funny is not enough – need to make some form of commentary (which may be implied) on the work you are using or on characteristics or actions such as vice or folly

must still be fair author may still have a claim in moral rights

Campbell v Acuff-Rose – 2 Live Crew rap version of Roy Orbison Pretty Woman


fair dealing - parody or satire

Pretty Woman, walking down the street,Pretty Woman, girl, girl you look so sweet,Pretty Woman, you, you bring me down to that knee,Pretty Woman, you make me wanna beg please,Oh, Pretty Woman.

Verse 2: [Fresh Kid Ice]Big hairy woman, you need to shave that stuff,Big hairy woman, you know I bet it's tough.Big hairy woman, all that hair ain't legit,'Cause you look like Cousin It.Big hairy woman

Verse 3: [Brother Marquis]Bald headed woman, girl your hair won't grow,Bald headed woman, you got a teeny weeny afro.Bald headed woman, you know your hair could look nice,Bald headed woman, first you got to roll it with rice.Bald headed woman, here let me get this uncle bens for ya,Ya know what I'm saying, its' better than Rice a RoniOh, Bald headed woman

Bridge: [Mr. Mixx]Big hairy woman, come on in,[Brother Marquis]And don't forget your bald headed friend[Luke]Hey Pretty Woman, let the boys jump in.

Verse 4: [Mr. Mixx]Two timin' woman, girl you know you ain't right,Two timin' woman, you's out with my boy last nightTwo timin' woman, that takes a load off my mind,Two timin' woman, now I know the baby ain't mineOh, Two timin' woman[All]Oh, Pretty Woman.


Campbell v Acuff Rose 1994 (US)

Part of communication– s43A / s111A◦ Temporary copies◦ Made as part of technical process of making or

receiving a communication Part of using a copy – s43B

◦ Temporary copies◦ Made as part of technical process of using copy◦ (because of expanded definition of material form)

Part of running program– s47B◦ Made as part of technical process of running copy

of program for purpose for which it was designed


digital – technical exceptions

Back up copy – s47C Reproduction to make interoperable

products – s47D Reproduction to correct errors – s47E Reproduction for security testing – s47F

agreement cannot exclude or limit rights


digital – computer program exceptions

painting, drawing, engraving or photograph◦ artistic work situated other than temporarily in public place◦ artistic work situated other than temporarily in premises

open to public – s65◦ building or model of a building – s 66

including in film or television broadcast ◦ artistic work situated other than temporarily in public place◦ artistic work situated other than temporarily in premises

open to public – s65◦ building or model of a building – s 66 ◦ artistic work if inclusion only incidental to the principal

matters represented in film or broadcast – s67


artistic works - exceptions

educational instruction – s200AB(3)◦ purpose giving educational instruction ◦ by body administering educational institution◦ Not made partly for commercial advantage or profit

person with disability – s200AB(4)◦ Use for person with disability (reading, seeing or hearing

work) ◦ reproduction in form or with feature that reduces difficulty

library or archive – s200AB(2)◦ Use for purpose of maintaining or operating library or

archive◦ by body administering archive ◦ Not made partly for commercial advantage or profit


certain cases (following Berne)

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parallel importation exceptions • books

• legally made off-shore• not available in Australia within 90 days of placing order - s

44A, 112A (added in 1991)• accessory goods’ labels or packaging (an ‘accessory’ )

• goods labels or packaging – (added in 1998)• AND any copyright subject matter (other than a ‘feature film’

> 20mins) that is included with a computer program or an electronic literary or music item (added in 2003)

• legally made off-shore • when imported or distributed with the goods - ss 44C, 112C

Therese Catanzariti

118

parallel importation exception

• sound recordings • legally made off-shore - ss 44D, 112C (added in

1998)

computer programs ◦ lawfully made off-shore - s 44E (added in 2003)

‘electronic literary or music item’ (e-books, e-mags, sheet music in electronic form)◦ lawfully made off-shore - ss 44F, 112DA (added in

2003)

Therese Catanzariti

119

labels – “accessories to article” Baileys Irish Cream case restrict parallel imports because of copyright in the label on a

bottle of Bailey’s Irish cream section 44C copyright in non-infringing labels not infringed by

importing article can’t use copyright to restrict parallel imports

• Polo/Lauren (2008 FCAFC)– Logo was an “accessory”

Therese Catanzariti

use by educational institutions & other◦ Copy and communicate broadcasts – Part VA◦ Copy and communicate works – Part VB

certain uses in music industry ◦ cover songs (recording of published musical works

and any associated lyrics) - s54- s64◦ causing sound recording to be heard in public –

s108◦ Broadcast sound recordings – s109, s152

use by the Crown – s183, s183A retransmission of broadcasts – Part VC


compulsory licences


remedies

injunction

Damages

Conversion / detinue

account of profitsbut need to take account of overheads / their contribution Dart v

Décor (1993) 179 CLR 101

additional - section 115(3) Copyright ActAllam v Aristocrat – no proven, $450k additionalElwood v Cotton On - $120k lost profits, $150k additional

Therese Catanzariti

remedies

122

compensate not punish – Elwood v Cotton On [2009] FCA 633

damage to IP as chose in action◦ loss of reputation/exclusivity – Review v New Cover (2008) 79 IPR 236;

Seafolly v Fewstone

◦ lost salesbut discount because unlikely to purchase original because different

target market / sales channels Review v Redberry [2008] FCA 1588 (90% discount)Digga v Norm (50% discount)Seafolly v Fewstone (75%)Elwood v Cotton On (66% discount)

◦ lost licence fee but competitor unlikely to license – Digga v Norm [2008] FCAFC 33

Therese Catanzariti

damages

123


Allam v Aristocrat Flagrant infringement for commercial gain deterrance and element of penalty need to mark court’s disapproval no requirement for proportionality between compensatory

damages and additional damages $450,000 (but infringement not proven)

Insight IP Holdings v ACER ACER commercialised questionaire for govt schools Knew that not permissible to use another’s work for commercial

purposes without consent Dr Hart had meetings and told them couldn’t use it Flagrant breach of copyright Didn’t make profit but enhanced reputation and contacts

aggravated damages


additional damages Dynamic Supplies Pty Limited v Tonnex International Pty Limited (No

3) [2014] FCA 909 Compensatory damages $1 additional damages may be given on principles corresponding to

those governing awards of aggravated and exemplary damages at common law tho sui generis and not limited to the circumstances in which aggravated and exemplary damages are recoverable in tort

Section 115(4) factors not preconditions but court must have regard Flagrancy not established simply by copying a consciousness of wrongdoing, whether or not it also exhibits a

consciousness of copyright infringement Benefit to infringer may include advantages even though no tangible

financial benefit No need for additional damages to be proportional to compensatory

damages Court may consider the burden that additional damages will visit on

the infringer


Moral rights


Right of attribution Right not to have authorship falsely attributed Meskenas v ACP Publishing Painting of Dr Victor Chang in Womens Day nominal damages - $9,100

Right of integrity Right not to have work subjected to derogatory

treatment Perez v Fernandez DJ Suave used Pitbull’s rap/hiphop and inserted audio

drop of Pitbull endorsing DJ Suave Nominal damages - $9,100

Moral Rights


groundless threats

alleged infringer take action against threats made by way of “circulars, advertisements or otherwise” (eg letters of demand)

alleged infringer can obtain◦ declaration threats unjustifiable◦ injunction against continuing threats◦ damages unless satisfy court constitute copyright infringement

Bell v Steele (No 2) FCA 62 – groundless Bell v Steele (No 3) FCA 246

◦ Damages $147,000◦ Costs $22,224

Therese Catanzariti

risks – groundless threats 202A

129


offences

Only applies to acts in Australia Indictable - up to 550 penalty units (5x if corporate) / 5 years

Summary - up to 120 penalty units / 2 years Strict liability - up to 60 penalty units

Commercial scale infringement – s132AC (USFTA)◦ Commercial scale infringement◦ substantial prejudicial impact on copyright owner – s132AC

Infringing copies◦ Making (132AD), selling or hiring (s132AE), offering for sale (132AF), exhibiting in public commercial (132AG), importing commercial (132AH), distributing (132AI), possessing for commerce (132AJ)


Criminal offences

Circumvention devices – s132APA – 132 APE

provision of, commercial dealing in, manufacturing and importation of circumvention devices and broadcast decoding devices

Electronic rights management information s 132AQ – s132AT

Removal / alteration of ERMI Dealing with articles where ERMI removed / altered Therese Catanzariti 13

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Criminal offences - digital

Therese Catanzariti 1. 2 Works – section 32 literary works dramatic works musical works ...

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