1. Copyright Intellectual Property LPAB Summer 2013-14 Session
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2. works and other subject matter
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3. 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
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4. exhaustive 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)
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5. literary works May be short “literary work” includes:
Japanese haiku 5/ 7 / 5
Mohammed 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
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6. 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
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7. Fairfax v Reed 7
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8. literary works – computer program
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
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9. Dramatic works
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
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10. 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
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11. dramatic works – reality TV
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
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12. musical works 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
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13. artistic 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.
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14. can “writing” be artistic work?
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
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15. Cotton On
Elwood
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16. Sculptures and engravings
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 items
Tracy Emin – “My Bed” (shortlisted Turner Prize)
Arte povera– 1960’s radical artists using found objects
Joseph Beuys – Tate Modern, Kunstmusem Liechtenstein
Creation Records v Newsgroup Newspapers – Oasis cover
scene itself not copyright and merely assembly of ‘objets trouvés.
Photograph not copy of official photograph, but merely shot of same scene
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19. works of artistic craftsmanship
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
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20. sound recording “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
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21. 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
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22. cinematograph film
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“
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23. Published Editions
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
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24. Broadcasts
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 broadcast
but if broadcast 24/7 no start or end
HC held that the broadcast was each program not every signal
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25. Duration
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26. Duration Generally works – life + 70 years
Printed editions of works - 25 years
Films – 70 years
Sound recordings - 70 years
TV & sound broadcasts – 50 years
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27. 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?
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28. Ownership
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29. who is the owner - works
Owner – author lit, dram, musical or artistic– s35
photo – 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
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30. Joint authors
“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”
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31. authorship of musical works why John Lennon made more than Ringo Starr
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 versions original 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)
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32. ownership – works - exceptions
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
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33. Redrock Holdings Pty Ltd v Hinkley
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
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34. Redrock Holdings Pty Ltd v Hinkley - was he an emloyee”
‘There is other evidence which satisfies me that Mr. Hinkley was employed under a contract of service. He was on a fixed salary, from which group tax was deducted. He signed an Australian Taxation Office Employee Declaration on 3 November He was entitled to annual leave, to sick leave and to long service leave. Superannuation contributions were made by Redrock on his behalf…’
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35. Redrock Holdings Pty Ltd v Hinkley - was it in the course of employment?
‘Redrock provided [him] with necessary equipment and with programs…all specially purchased to assist him in writing software for the company, together with access to the Internet to download manuals, information or software as needed… in his written submissions Mr. Hinkley states on the issue of the use of an external hard disk owned by him that it would be "unbelievable to suggest that I was expected to use my equipment for Redrock's work". All the indicia put forward in the evidence are consistent with the conclusion that Adam Hinkley became an employee of Redrock’
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36. Insight SRC IP Holdings v Australian Council for Educational Research
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
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37. Hart not Dept is owner 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
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38. ownership – sound recording – s97
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
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39. ownership – film – s98 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)
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40. 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”
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42. maker - Optus and subscriber
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.
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43. owner has exclusive rights
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
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44. Rights
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45. Exclusive 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)
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46. Exclusive rights - works
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
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47. exclusive rights – other subject matter
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
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48. reproduction / make a copy
Works = > reproduced
Other subject matter => make a copy
Reproduction broader making a copy
CBS 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 recordings
muzak, polyphonic ringtones
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49. reproduction - broader than copying
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
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50. adaptation – s10 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.
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51. publish
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
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52. perform in public 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
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53. Perform – s27
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
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54. Communication to the public
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
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55. making available online
"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
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56. transmission of ownership
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
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57. assignment and licensing
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58. licensing 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
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59. licence 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)
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60. exclusive 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
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61. Implied terms
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
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62. Apotex v Sanofi Aventis
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 usage
but only between industry counterparties not competing traders
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63. collecting societies
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64. collecting societies
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65. Collecting Agencies or Societies
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)
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66. collective administration - authors
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
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67. collective administration - users
don’t need to search out owner of each copyright work
standard terms
bundled fee
BUT monopoly – no room to negotiate
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68. infringement
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69. Proving infringement of works
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.
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70. Causal Connection 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
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71. copyright – 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
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72. direct causal connection
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
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73. Indirect 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
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74. Indirect – never saw original
King Features v Kleeman
Created dolls and brooches based on cartoons
Never saw original Popeye drawings that the cartoons were based on
Frank Winstone v Plix Products
never saw Plix kiwi pockets
Created kiwi pockets based on description of Plix kiwi pockets in legislation
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75. Objective similarity
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?
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76. 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
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77. The ‘basic hook’
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78. substantial part – s14
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
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79. 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
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80. substantial part - music
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
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81. The ‘basic hook’
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82. substantial part – icetv v Nine
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)
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83. 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)
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87. substantial part Horizontal – literal copying Take part of the whole
Vertical – non-literal copying
Don’t copy word for word
Take structure / hierachy
Idea / expression dichotomy
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88. substantial part - Elwood
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
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89. Cotton On
Elwood
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90. Infringement in Australia
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
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91. Knowledge 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  
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92. infringer 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
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93. Secondary Infringement
Importing, selling or otherwise dealing with
articles that would infringe copyright if made in Australia - s 37+38
Pt IV subject-matter - s
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
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94. 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
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95. Authorisation – s36, s101 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
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96. authorisation 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
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97. need primary infringement
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
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98. defences
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99. limiting rights 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
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100. Private copying - 2006 amendments
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
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101. Private copying
“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                 
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102. fair dealing specific categories onus on defendant to establish
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)
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103. when is the dealing fair?
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 work
Time Warner v Channel Four (Clockwork Orange)
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104. The Panel 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)
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105. fair dealing - criticism and review
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 source
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106. fair dealing - study and research
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
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107. 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
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108. fair dealing – reporting news
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)
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109. fair dealing - parody or satire
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
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110. Campbell v Acuff Rose 1994 (US)
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 Roni Oh, 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 night Two timin' woman, that takes a load off my mind, Two timin' woman, now I know the baby ain't mine Oh, Two timin' woman [All] Oh, Pretty Woman.
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111. digital – technical exceptions
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
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
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112. digital – computer program 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
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113. artistic works - 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 if inclusion only incidental to the principal matters represented in film or broadcast – s67
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114. certain cases (following Berne)
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
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115. 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)
when imported or distributed with the goods - ss 44C, 112C
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116. 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)
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117. 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”
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118. compulsory licences 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
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119. remedies injunction Damages Conversion / detinue account of profits
but need to take account of overheads / their contribution Dart v Décor (1993) 179 CLR 101
additional
- section 115(3) Copyright Act
Allam v Aristocrat – no proven, $450k additional
Elwood v Cotton On - $120k lost profits, $150k additional
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120. remedies
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121. damages 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
lost sales
but 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)
Elwood v Cotton On (66% discount)
lost licence fee
but competitor unlikely to license – Digga v Norm [2008] FCAFC 33
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122. aggravated damages 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
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123. Moral rights
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124. 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
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125. groundless threats
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126. risks – groundless threats 202A
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
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127. offences
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128. Criminal offences Commercial scale infringement – s132AC (USFTA)
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)
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129. Criminal offences - digital
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
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