1. Intellectual Property SAB Summer Session 2014/2015
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2. 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?
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3. 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
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4. 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
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5. 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
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6. 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
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7. 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
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8. 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
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9. 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.
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10. subsistence connecting factors Subject matter material form
originality
duration
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11. Connecting Factors first published in Australia
national/resident in Australia
Copyright (International Protection) Regulations
first published in Convention country
national / resident of Convention Country
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12. 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
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13. 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)
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14. 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
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15. 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
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16. 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.
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17. 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.
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18. 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
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19. 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
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