Intellectual Property SAB Summer Session 2014/2015 Therese Catanzariti

Intangible separate copyright from the chattel right Pacific Film Laboratories Pty Ltd v. Commissioner of Taxation (1970) 121 CLR 154 re Dickens, Dickens v Hawksley [1935] 1 Ch, 267 Who gets royalties from Art Gallery postcards? Therese Catanzariti

Copyright only protects particular form idea expressed Idea / Expression Copyright only protects particular form idea expressed NOT an accounting system – Baker v Selden NOT how to make rabbit’s pie NOT who won the horse race - Victoria Park Racing v Taylor (1937) 58 CLR 479 Therese Catanzariti

Idea-Expression Dichotomy Donoghue v. Allied Newspapers Ltd Jockey paid for a series of interviews published by the interviewing journalist Jockey can’t stop publication of articles based on these interviews Jockey provided the ideas – but jockey didn’t create the written form journalist wrote the ideas down so journalist is the author and owns the copyright Therese Catanzariti

LB Plastics v Swish Products whether a physical object is an infringing copy of a drawing depicting the object “Of course, it is trite law that there is no copyright in ideas, and it may be that if all the respondents were shown to have copied from the appellants was the idea of some sort of external latching of the moulded corner pieces and clips to the extrusions this would have been a sound enough conclusion. But, of course, as the late Professor Joad used to observe, it all depends on what you mean by “ideas.” What the respondents in fact copied from the appellants was no mere general idea” – Lord Hailsham Therese Catanzariti

Consider a plot idea … A television show A television show set in an office A television show set in an office with a really smarmy boss A television show set in an office with a really smarmy boss and an “everyman” character A television show set in an office with a really smarmy boss an an everyman character which is shot in mock documentary style Therese Catanzariti

Zeccola v Universal City Studios Inc (1982) 46 ALR 189 1 Idyllic beach town setting 2 Untroubled by sharks 3 Person in water vanishes 4 Audience aware of big shark 5 Townsfolk unaware of shark 6 It dawns on some townsfolk 7 There’s conflict/suppression 8 Proper precautions not taken 9 Shark attacks made public 10 Posse try to catch/kill it 11 Measures inadequate 12 They think normal shark 13 Audience knows big shark 14 Townsfolk ‘cop on’ 15 Fearless fisherman called 16 Fisherman hunts shark 17 Shark eats fisherman 18 But shark is blown up Therese Catanzariti

subsistence – icetv v Nine “The exclusive rights comprised in the copyright in an original work subsist by reason of the relevant fixation of the original work of the author in a material form. To proceed without identifying the work in suit and without informing the enquiry by identifying the author and the relevant time of making or first publication, may cause the formulation of the issues presented to the court to go awry.” Gummow, Hayne, Heydon at para 109 Therese Catanzariti

works- s32 Original works in which copyright subsists (1) Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author: (a) was a qualified person at the time when the work was made; or (b) if the making of the work extended over a period--was a qualified person for a substantial part of that period (2) Subject to this Act, where an original literary, dramatic, musical or artistic work has been published: (a) copyright subsists in the work; or (b) if copyright in the work subsisted immediately before its first publication--copyright continues to subsist in the work; if, but only if: (c) the first publication of the work took place in Australia; (d) the author of the work was a qualified person at the time when the work was first published; or (e) the author died before that time but was a qualified person immediately before his or her death. Therese Catanzariti

subsistence connecting factors Subject matter material form originality duration Therese Catanzariti

Connecting Factors first published in Australia national/resident in Australia Copyright (International Protection) Regulations first published in Convention country national / resident of Convention Country Therese Catanzariti

National Treatment I will treat your citizens and residents just like I treat my own even if you have more rights and more protection in your home country even if you have less rights and less protection in your country contrast reciprocity You only get what you get at home Therese Catanzariti

Subject matter literary, artistic, musical, dramatic sound recordings, films, broadcasts, published editions NOT fashion designs (contrast France) NOT boat hulls (contrast US) NOT circuit layouts NOT database (contrast Europe) Therese Catanzariti

material form Work must be recorded in material form Copyright protects expression not idea “material form” - any form of storage includes temporary storage (eg computer RAM) Nine Network v ABC (Y2K fireworks) fireworks did not have material form Therese Catanzariti

originality Originate from author, not creativity, novelty, merit Some intellectual effort Link to authorship Link to infringement Whether copied / communicated “substantial part” Substantial part assessed by originality of what taken Therese Catanzariti

University of London Press v University Tutorial Press (1916) The word “original” does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of “literary work”, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work — that it should originate from the author. Therese Catanzariti

Icetv v Nine (2009) French, Crennan, Kiefel at para 33 The requirement for copyright subsistence that a literary work be "original" was first introduced into the Copyright Act 1911 (Imp), although it had already been recognised at common law. Originality for this purpose requires that the literary work in question originated with the author and that it was not merely copied from another work. It is the author or joint authors who bring into existence the work protected by the Act. In that context, originality means that the creation (ie the production) of the work required some independent intellectual effort, but neither literary merit nor novelty or inventiveness as required in patent law. There has been a long held assumption in copyright law that "authorship" and "original work" are correlatives The requirement of the Act is only that the work originates with an author or joint authors from some independent intellectual effort. Therese Catanzariti

how much intellectual effort is required…. skill, labour and effort- industrious collection, sweat of the brow Some intellectual effort Walter v Lane – shorthand verbatim transcript of public speech, skilled and time consuming activity, more mere transcribing or writing from dictation University of London Press – maths exam papers, drew upon the stock of knowledge common to mathematicians, small amount of time preparing questions, common type of questions Ladbroke (Football) Ltd – football coupons, more than negligible work, labour or skill A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) – motor spare parts catalogue, indexing not unique but work putting catalogue together Dynamic v Tonnex - compatibility chart for printer and computer consumables; selection, layout and format of information Insight SRC IP Holdings Pty Ltd v The Australian Council for Educational Research Limited - Dept of Education questionnaire Therese Catanzariti

telephone directory cases Feist v Rural Telephone (US) – required some modicum of creativity, not just sweat of the brow Desktop Marketing v Telstra (Full FC) – industrious collection, undertaken substantial labour and incurred substantial expense Icetv v Nine (Telstra as amicus) - independent intellectual effort “it may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon "labour and expense" per se and upon misappropriation.” Telstra v Phone Directories – no human author Therese Catanzariti