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Intellectual property : commentary and materials [Sixth edition.]
 9780455238685, 0455238685

Table of contents :
Commentary and Materials
PREFACE
TABLE OF CONTENTS
TABLE OF CASES
TABLE OF STATUTES
Part 1 INTRODUCTION
1
Introduction to Intellectual Property
2
The International Context of Intellectual Property
Part 2 COPYRIGHT
3
Copyright: Contextual and Conceptual Issues
4
Criteria for Subsistence of Copyright
5
Copyright: Ownership, Rights and Exploitation
6
Copyright Infringement, Defences and Remedies
7
Copyright in the Digital Environment
Part 3 PATENTS
8
Context of Patent Law
9
Requirements of Validity
10 Specifications – The Internal Requirements
11
Infringement and Exploitation
Part 4 TRADE MARKS
12
Protection of Business Reputation
13
Trade Marks
Part 5
OTHER INTELLECTUAL PROPERTY AREAS
14
Designs and Circuit Layouts
15
Confidential Information
16
Plant Breeder’s Rights
Part 6
SPECIAL TOPICS IN INTELLECTUAL PROPERTY
17
Indigenous Cultural and Intellectual Property
INDEX

Citation preview

INTELLECTUAL PROPERTY Commentary and Materials

Thomson Reuters (Professional) Australia Limited 19 Harris Street Pyrmont NSW 2009 Tel: (02) 8587 7000 Fax: (02) 8587 7100 [email protected] http://www.thomsonreuters.com.au For all customer inquiries please ring 1300 304 195 (for calls within Australia only)

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INTELLECTUAL PROPERTY: COMMENTARY AND MATERIALS DAVID PRICE MA (Sydney), LLM (NTU), PhD (Law) (CDU), BA (Chinese) (Macquarie), GDipEd (Sydney), FAIM Associate Professor in Intellectual Property Law and International Law School of Law, Charles Darwin University

COLIN BODKIN BSc (Hons), DPhil (Sussex), MBA (Macquarie), GradDipIP (UTS) Author of Patent Law in Australia

FADY AOUN BEc (Hons)/LLB (Hons); PhD (Law) (Sydney) Lecturer in Intellectual Property and Corporate Law The University of Sydney Law School, Sydney University

SIXTH EDITION

LAWBOOK CO. 2017

Published in Sydney by Thomson Reuters (Professional) Australia Limited ABN 64 058 914 668 19 Harris Street, Pyrmont, NSW First edition (McKeough, Blakeney) 1987 Second edition (McKeough) 1992 Third edition (McKeough, Bowrey, Griffith) 2002 Fourth edition (McKeough, Bowrey, Griffith) 2007 Fifth edition (Price, Bodkin, Arnold, Adjei) 2012 National Library of Australia Cataloguing-in-Publication entry Title: Intellectual property commentary and materials/ David Price, Colin Bodkin, Fady Aoun. Edition: 6th edition. ISBN: 9780455238685 (paperback) Notes: Includes index. Subjects: Intellectual property–Australia–Textbooks. Patent laws and legislation–Australia. Industrial property–Australia–Textbooks. Copyright–Australia–Textbooks. Other Creators/Contributors: Bodkin, Colin (Colin Lewis), 1947- author. Aoun, Fady J G, author. © 2017 Thomson Reuters (Professional) Australia Limited This publication is copyright. Other than for the purposes of and subject to the conditions prescribed under the Copyright Act, no part of it may in any form or by any means (electronic, mechanical, microcopying, photocopying, recording or otherwise) be reproduced, stored in a retrieval system or transmitted without prior written permission. Inquiries should be addressed to the publishers. All legislative material herein is reproduced by permission but does not purport to be the official or authorised version. It is subject to Commonwealth of Australia copyright. The Copyright Act 1968 permits certain reproduction and publication of Commonwealth legislation. In particular, s 182A of the Act enables a complete copy to be made by or on behalf of a particular person. For reproduction or publication beyond that permitted by the Act, permission should be sought in writing. Requests should be submitted online at http:// www.ag.gov.au/cca, faxed to (02) 6250 5989 or mailed to Commonwealth Copyright Administration, Attorney-General’s Department, Robert Garran Offices, National Circuit, Barton ACT 2600. Editor: Zoe Haynes Product Developer: Lucas Frederick Publisher: Robert Wilson Printed by Ligare Pty Ltd, Riverwood, NSW This book has been printed on paper certified by the Programme for the Endorsement of Forest Certification (PEFC). PEFC is committed to sustainable forest management through third party forest certification of responsibly managed forests. For more info: http://www.pefc.org

PREFACE In the present legal and economic climate, intellectual property law in Australia is nothing if not dynamic and transformational. The mercurial expansion of the digital environment as an essential medium of communication and trade is challenging the very essence of conventional intellectual property law and practice. At the same time, the push for a global harmonisation of the intellectual property protection environment by developed countries as major exporters of intellectual property rights is significantly impacting on the form and structure of Australia’s domestic intellectual property regime. It is a fascinating time to be studying intellectual property law. This latest publication, the sixth edition of Intellectual Property: Commentary and Materials, attempts to capture at least some of this dynamic environment. It includes updated discussion of all the essential aspects of the nature of the property rights involved in copyright, patents, designs, trade marks and geographical indications, protection of business reputation, plant breeders’ rights, confidential information and passing off. It also examines subject matter outside the conventional paradigm of intellectual property protection, namely indigenous and cultural intellectual property. This edition incorporates a number of changes and enhancements from the earlier editions. It includes expanded and updated chapters on the international dimensions of intellectual property rights and their impact on the Australian domestic regime, on copyright in the digital environment and on indigenous cultural intellectual property. The sixth edition again brings together a team of experienced authors. They in turn each bring their own unique approach and dynamics to this longstanding and leading publication on intellectual property and its protection (or non-protection, as the case may be in some instances). The objective of the current team of authors has been to produce a scholarly yet practical tome which can serve a dual purpose: first as an authoritative source for the academic, researcher or research student pursuing a study of intellectual property; and secondly as a useful guide for the legal practitioner seeking a broader understanding of the law of intellectual property. The authors hope that it will also inspire in the reader an ongoing passion and fascination for intellectual property and its pervasive presence in everyday life. This edition endeavours to guide the reader towards a broader understanding of the complex nature and parameters of intellectual property and its accompanying rights. It focuses on the Australian context and materials, while noting that this context must still take cognisance of, and exist within, a global environment. In this edition, David Price is responsible for Chapters 1, 2, 3, 4, 5, 6, 7 and 15; Colin Bodkin for Chapters 8, 9, 10, 11, 14 and 16; Fady Aoun for Chapters 12 and 13; and David Price and Fady Aoun are jointly responsible for Chapter 17. Our special thanks to Thomson Reuters and especially to Lucas Frederick and Zoe Haynes. Without their contributions, guidance, and steely determination that we would adhere to essential deadlines, this edition would not have been possible.

DAVID PRICE COLIN BODKIN FADY AOUN February 2017

v

TABLE OF CONTENTS

Preface .............................................................................................................................................. v Table of Cases .................................................................................................................................. ix Table of Statutes ......................................................................................................................... xxxiii

PART 1 Introduction 1 Introduction to Intellectual Property ................................................................... 3 2 The International Context of Intellectual Property ......................................... 21

PART 2 Copyright 3 Copyright: Contextual and Conceptual Issues ................................................... 53 4 Criteria for Subsistence of Copyright ................................................................. 77 5 Copyright: Ownership, Rights and Exploitation ............................................. 153 6 Copyright Infringement, Defences and Remedies .......................................... 221 7 Copyright in the Digital Environment .............................................................. 291

PART 3 Patents 8 Context of Patent Law ........................................................................................ 345 9 Requirements of Validity .................................................................................... 367 10 Specifications – The Internal Requirements .................................................. 433 11 Infringement and Exploitation ........................................................................ 459

PART 4 Trade Marks 12 Protection of Business Reputation .................................................................. 499 13 Trade Marks ........................................................................................................ 587

PART 5 Other Intellectual Property Areas 14 Designs and Circuit Layouts ............................................................................. 743 15 Confidential Information ................................................................................. 767 vii

Intellectual Property: Commentary and Materials

16 Plant Breeder’s Rights ....................................................................................... 823

PART 6 Special Topics in Intellectual Property 17 Indigenous Cultural and Intellectual Property ............................................. 837 Index ......................................................................................................................................... 871

viii

TABLE OF CASES A A v B [2002] 3 WLR 542 ................................................................................................ 15.10, 15.80 A&M Records Inc v Napster Inc 239 F 3d 1004 (9th Circuit 2001) ..................... 7.160, 7.170, 7.230 A&M Records Inc v Napster (2000) 50 IPR 232 ........................................................................ 6.320 A Bailey and Company Limited v Clark, Son and Morland [1938] AC 557 ............................... 13.440 ACCC v Nooravi [2008] FCA 2012 .......................................................................................... 17.140 AF’s Application, Re (1913) 31 RPC 58 ..................................................................................... 9.130 AG Australia Holding Ltd v Burton (2002) 58 IPR 268 ............................................................. 15.200 AG Spalding & Bros v AW Gamage Ltd (1915) 84 LJ Ch 449; 32 RPC 273 ......... 12.30, 12.50, 12.60, 12.70, 12.160, 12.210, 12.320 AIM Maintenance Ltd v Brunt (2004) 60 IPR 572 .................................................................... 15.180 AMP Inc v Utilux Pty Ltd [1972] RPC 103 ................................................................................. 14.50 ANI Corp Ltd v Celtite Australia Pty Ltd (1990) 19 IPR 306 ..................................................... 15.180 A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (No 2) (1996) 34 IPR 332 ............ 6.330 Abbott Laboratories v Corbridge Group Pty (2003) 57 IPR 432 ................................................. 9.870 Abbott Laboratories Ltd v Evysio Medical Devices plc [2008] EWHC 800 ................................ 10.350 Abernethey v Hutchinson (1825) 2 LJ Ch 219; 47 ER 1313 ..................................................... 15.190 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554 .................... 13.290 Ackroyds (London) Ltd v Islington Plastics Ltd [1962] RPC 97 ................................................. 15.300 Acme Bedstead Co Ltd v Newland Bros Ltd (1937) 58 CLR 689 ................................................ 9.560 Acohs Pty Ltd v RA Bashford Consulting Pty Ltd (1997) 144 ALR 528; 37 IPR 542 ................... 11.440 Acohs Pty Ltd v Ucorp Pty Ltd [2010] FCA 577 ......................................................................... 4.510 Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 57 ALR 389; 4 IPR 214 .... 5.110 Ad-Lib Club Ltd v Granville [1971] 2 All ER 300 ...................................................................... 12.300 Adelaide Corporation v Australasian Performing Right Association Ltd (1928) 40 CLR 481 ........ 7.190 Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 ...................................... 12.270 Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) 26 IPR 171 .......... 9.60, 9.570 Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 ..... 9.140, 9.350, 9.860 Advanced Hair Studio of America Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1 .............. 13.440 Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683; (2001) 52 IPR 24 ...................................................................................................................................... 13.500 Ainsworth Nominees Pty Ltd v Andclar Pty Ltd (1988) 12 IPR 551 ............................................ 6.120 Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411 ..................................... 9.680, 11.70 (1999) 44 IPR 593 .................................................................................................................... 9.700 Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] AIPC 91-474; [1999] FCA 628 ............................................................................................................................. 10.160 Aktiebolaget Hässle v Alphapharm Pty Ltd (2000) 51 IPR 375 ................................................... 9.700 Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 ..................................... 9.690, 9.700 Al Hyat Publishing Co Ltd v Sokarno (1996) 34 IPR 214 ......................................................... 12.180 Alice Corporation Pty Ltd v CLS Bank International 134 S Ct 2347 (2014) ................................ 9.440 Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd [2001] FCA 1838; 53 IPR 400 ......... 7.210 Allen v Brown Watson [1965] RPC 191 ................................................................................... 12.290 Allsop Inc v Bintang Ltd (1989) 15 IPR 686 .................................................................. 9.690, 10.240 Alsop’s Patent, In the Matter of (1907) 24 RPC 733 .................................................................. 9.840 Amalagamated Television Services Pty Ltd v Pickard [1999] ATMO 103 ................................... 13.510 Amalgamated Television Services Pty Ltd v Sylvia Margret Clissold [2000] ATMO 14 ............... 13.510 Amber Size & Chemical Co Ltd v Menzel [1913] 2 Ch 239 ............. 15.150, 15.180, 15.190, 15.240, 15.370 American Cyanamid Co v Berk Pharmaceuticals Ltd [1976] RPC 231 ........................................ 9.230 American Cyanamid Co v Upjohn Co [1970] 1 WLR 1507 ........................................................ 8.360 American Cyanamid Co (Dann’s) Patent [1971] RPC 425 ................................................ 9.60, 9.230 American Express v Thomas (1990) 19 IPR 574 ........................................................................ 15.40 American National Can v Trigon [1996] APO 23 ..................................................................... 10.280 ix

Intellectual Property: Commentary and Materials

Amstrad Consumer Electronics Plc v British Phonographic Industry Ltd [1986] FSR 159 ............ 6.270 An Application by the Pianoist for the Registration of a Trade Mark, Re (1906) 1A IPR 379 ...... 13.650 An Application for a Patent by Compagnies Reunies des Glaces et Verres Speciaux du Nord de la France, In the Matter of (1931) 48 RPC 185 .................................................................. 9.60 Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 28 IPR 383 ..................................................... 9.80 Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1467 ............................................ 13.740 Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2015) 115 IPR 67 .................................... 13.740 Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No 3) [2015] FCA 1436 ........................... 13.740 Aneeta Window Systems (Vic) Pty Ltd v K Shugg Industries Pty Ltd (1996) 34 IPR 95 .............. 11.440 Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 ....................... 13.520, 13.650, 13.680 Anheuser Busch Inc v Budejovivky Budvar NP [1984] FSR 413 ................................................ 12.180 Anheuser v Conservatories Custom Built Ltd [1989] RPC 455 ................................................. 12.210 Ansell Rubber Company Pty Ltd v Allied Rubber Industries Pty Ltd [1967] VR 37 ........... 15.30, 15.60, 15.120, 15.140, 15.150, 15.180, 15.190, 15.200, 15.240 Ansul BV v Ajax Brandbeveiliging BV [2005] Ch 97 ................................................................. 13.760 Anton Piller KG v Manufacturing Processes Ltd (1976) 1 Ch 55 ................................................ 6.520 Apand Pty Ltd v The Kettle Chip Company Pty Ltd (1994) 30 IPR 337 ......... 12.110, 12.130, 12.340, 13.330 Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485 ................................................................... 9.580 Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (2013) 253 CLR 284 ........................... 9.310, 9.320 Apple Computer Inc v Computer Edge Pty Ltd (1983) 50 ALR 581; ATPR 40-421 ............. 4.40, 4.380 Apple Computer Inc v Computer Edge Pty Ltd (1984) 2 IPR 1 .................................................. 4.380 Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225 .................................. 4.40, 4.380 Application by Baker & Priem (No 2), Re (1989) 15 IPR 660 ................................................... 14.110 Application by Beecham Group Ltd, Re (1984) 3 IPR 26 ............................................................. 9.80 Application by Bourjois Ltd, Re (1988) 11 IPR 625 .................................................................... 14.70 Application by Glenleith Holdings Ltd (Patent Office), Re (1989) 15 IPR 555 .......................... 13.360 Application by Lee Kum Kee (Patent Office), Re (1988) 12 IPR 212 ......................................... 13.360 Application by Sakata Rice Snacks Pty Ltd, Re (1998) 43 IPR 378 ............................................ 13.320 Application by Shell Internationale Research Maatschappij BV, Re (1985) 4 IPR 439 .................. 9.450 Application for Type Font in the Name of Microsoft Corporation, Re (2007) 71 IPR 664 ........... 14.70 Application in the name of Apple Computer Inc, Re (2007) 74 IPR 164 .................................. 14.150 Applications by Maxam Food Products Pty Ltd (Patent Office), Re (1991) 20 IPR 381 ............. 13.410 Aquaculture Corp v New Zealand Green Mussel Co Ltd (No 1) (1985) 5 IPR 353 ........ 15.50, 15.300 Aquaculture Corp v New Zealand Green Mussel Co Ltd (No 2) (1986) 10 IPR 319 ...... 15.50, 15.300 Aquaculture Corp v New Zealand Green Mussel Co (No 3) (1990) 19 IPR 527 ............ 15.50, 15.300 Argyll v Argyll [1965] 2 WLR 790 ............................................................................................ 15.190 Argyll v Argyll [1967] Ch 302 ......................................................................... 15.80, 15.170, 15.240 Aristoc Ltd v Rysta Ltd [1945] AC 68 ............................................................. 13.520, 13.600, 13.770 Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (in liq) [2007] FCAFC 40; 157 FCR 564 .................................................................................................... 12.440 Aronberg v Federal Trade Commission 132 F 2d 165 .............................................................. 12.140 Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29 ........................................ 9.870 Asahi Kasei Kogyo Kabushiki Kaisha v W R Grace & Co [1991] RPC 485; (1991) 22 IPR 491 .... 9.680, 10.110 Aston v Harlee Manufacturing Co (1960) 103 CLR 391 ................... 12.210, 13.100, 13.180, 13.220 Aston v Harlee Manufacturing Co (1960) 103 CLR 391 .......................................................... 13.210 AstraZeneca AB v Apotex Pty Ltd (2014) 226 FCR 324; 107 IPR 177 ................. 9.580, 9.730, 11.440 Athlete’s Foot Marketing Associates Inc v Cobra Sports Ltd [1980] RPC 343 ........................... 12.200 Attorney-General v Guardian Newspapers Ltd (No 2) [1990] AC 109; [1988] 3 All ER 545 ....... 6.330, 15.90 Attorney-General v Jonathon Cape Ltd [1976] QB 572 ........................................................... 15.170 Attorney-General v Trustees of National Art Gallery of New South Wales (1944) 62 WN (NSW) 212 .......................................................................................................................... 4.260 Attorney-General (Cth) v Adelaide Steamship Co (1913) 18 CLR 30 ................................ 8.20, 8.240 Attorney-General (NSW) v Brewery Employees Union (NSW) (Union Label Case) (1908) 6 CLR 469 ............................................................................................................................... 13.10 x

Table of Cases

Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 10 IPR 153; 10 NSWLR 86; 75 ALR 353 ........... 15.230, 15.240, 15.250, 15.280, 15.290, 15.410, 15.430, 15.440 Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd (1987) 8 NSWLR 341 ........... 15.240 Attorney-General (UK) v Heinemann Publishers Australia Pty Ltd [1988] HCA 25 ......... 6.330, 15.250 Attorney-General (UK) v Jonathan Cape Ltd [1976] QB 752 ...................................... 15.240, 15.410 Attorney General v Guardian Newspapers Ltd (No 2) [1990] 1 AC 109 .................................... 15.10 Attorney General v Trustees of National Art Gallery of NSW (“Joshua Smith” Case) (1944) 62 WN (NSW) 212 .............................................................................................................. 4.270 .au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 ......... 12.160, 12.230 Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2006) 66 IPR 420 .................................. 9.860, 9.870 Australasian Performing Right Association v Tolbush (1985) 7 IPR 160; 62 ALR 521 ....... 6.160, 6.200 Australasian Performing Right Association Ltd v Commonwealth Bank of Australia (1992) 25 IPR 157 ................................................................................................................................ 6.160 Australasian Performing Right Association Ltd v Jain (1990) 18 IPR 663 .............. 6.160, 6.180, 6.190 Australasian Performing Right Association Ltd v Miles (1961) 3 FLR 146 ................................... 6.160 Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2002) 54 IPR 161 ............. 15.10, 15.80 Australian Competition and Consumer Commission v Australian Dreamtime Creations [2009] FCA 1545; (2009) 84 IPR 326 ................................................................................. 17.120 Australian Competition and Consumer Commission v Chen (2003) 132 FCR 309 ................... 13.630 Australian Insurance Holdings Pty Ltd v Chan [2010] FCA 781 ................................................ 15.400 Australian Performing Right Association Ltd v Canterbury-Bankstown League Club Ltd (1964) 5 FLR 415 ................................................................................................................. 6.160 Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153 .................... 13.650, 13.670 Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 .............. 13.650 Australian Securities and Investments Commission v National Exchange Pty Ltd (2003) 202 ALR 24 ............................................................................................................................... 12.160 Australian Video Retailers Association v Warner Home Video Pty Ltd (2001) 53 IPR 242 ............. 5.450 Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 ........ 12.310, 13.520, 13.640, 13.650 Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 .................................................................... 6.90 Automobile Club de L’Quest v Gardiakos (2005) 66 IPR 191 .................................................. 13.500 Avedis Zildjian Co (1990) 18 IPR 474 ...................................................................................... 13.360 Avel Pty Ltd v Jonathan Wells (1991) 22 IPR 305 ............................................................ 4.520, 5.430 Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 18 IPR 443; 171 CLR 88 ...... 3.70, 5.430, 6.150 Avel Pty Ltd v Wells (1992) 23 IPR 353 ........................................................................... 4.510, 4.520 Aveley/Cybervox Ltd v Celltech Ltd [1982] FSR 92 .................................................................. 15.240 Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75 ......................................... 9.770, 9.780, 9.800

B BA’s Application, Re (1915) 32 RPC 348 ................................................................................... 9.130 BBC v Talbot [1981] FSR 228 .................................................................................................. 12.290 BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 51 ALJR 254; 12 ALR 363 .... 12.100, 12.110, 12.210, 12.330 BO Morris Ltd v Gillman (1943) 60 RPC 20 ............................................................................ 15.150 BP plc v Woolworths Ltd (2004) 212 ALR 79 ........................................................................... 13.470 Baigent v Random House Group [2006] EMLR 16; [2006] EWHC 719 ............................. 6.20, 3.120 Baker v Selden (1880) 101 US 99 ............................................................................................. 3.100 Bali Brasserie Co Inc’s Registered Trade Mark, Re (1968) 118 CLR 128 ....................... 13.540, 13.640 Ballarat Products Ltd v Farmers Smallgoods Co Pty Ltd [1957] VR 104 ....................... 12.210, 12.290 Bancorp Services LLC v Sun Life Assurance Co of Canada (US) 687 F. 3d 1266 (2012) .............. 9.440 Bancroft’s Application (1906) 23 RPC 89 ................................................................................ 10.280 “Barry Artist” Trade Mark [1978] RPC 703 .............................................................................. 13.360 Baskin-Robbins Ice Cream Co v Gutman [1976] FSR 545 ........................................... 12.190, 12.210 Bauman v Fussell [1978] RPC 485 ............................................................................................... 6.20 Baume & Co Ltd v AH Moore Ltd [1958] Ch 907 ........................................... 13.70, 13.650, 13.680 Bausch & Lomb Inc v Registrar of Trade Marks (1980) 28 ALR 537 ......................................... 13.440 Bavaria NV v Bayerischer Brauerbund eV (2009) 177 FCR 300 ................................................ 13.510 xi

Intellectual Property: Commentary and Materials

Baygol Pty Ltd v Foamex Polystyrene Pty Ltd (2005) 66 IPR 1 ........................................ 11.70, 11.90 Beatty v Guggenheim Exploration Co 122 NE 378 ................................................................. 15.450 Beck v Montana Constructions Pty Ltd [1964–65] NSWR 229 ................................................... 4.320 Bedford Industries Rehabilitation Association Inc v Pinefair Pty Ltd (1998) 40 IPR 438 ............ 11.100, 11.110, 11.130 Beecham Group Ltd v Bristol Laboratories Ltd [1978] RPC 153 .......... 11.30, 11.130, 11.150, 11.160 Bell v Steele (No 2) [2012] FCA 62 ........................................................................................... 6.630 Beloff v Pressdram Ltd [1973] 1 All ER 241 .............................................................................. 15.420 Benchairs Ltd v Chair Centre Ltd [1974] RPC 429 ................................................................... 12.120 Benmax v Austin Motor Co Ltd [1955] AC 370 ....................................................................... 12.380 Bent’s Brewery Co Ltd v Hogan [1945] 2 All ER 570 ................................................... 15.190, 15.240 Berlei Limited’s Application (1968) 118 CLR 128 .................................................................... 13.520 Betts v Wilmott (1871) 2 Ch LR 6 ........................................................................................... 11.120 Biogen Inc v Medeva Plc [1997] RPC 1 ...................................................................... 10.110, 10.360 Blackadder v Good Roads Machinery Co Inc (1926) 38 CLR 332 ............................................ 13.180 Blackie & Sons v Lothian Book Publishing Co (1921) 29 CLR 396 ............................................... 6.20 Blackmagic Design Pty Ltd v Overliese (2010) 84 IPR 505 ......................................................... 15.40 Blakey v Latham (1889) 6 RPC 184 ........................................................................................... 9.690 Blount v Registrar of Trade Marks (1998) 83 FCR 50; 40 IPR 498 .................. 13.240, 13.260, 13.470 Blue Gentian LLC v Product Management Group Pty Ltd [2014] FCA 1331 ............................ 11.480 Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255 .......................... 13.680 Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2014] FCA 637 ............................ 13.680 Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2016] FCA 1129 .......................... 13.680 Boots Pure Drug Co, Re [1938] Ch 54 .................................................................................... 13.390 Boulton v Bull (1795) 1 H Bl 463; 126 ER 651 ............................................................................ 9.40 Bowden Wire Ltd v Bowden Brake Co Ltd (1914) 31 RPC 385 .................................................. 13.90 Braas GmbH v Humes Ltd (1993) 26 IPR 273 ......................................................................... 10.240 Brain v Ingledew Brown Bennison and Garrett (A Firm) [1996] FSR 341 .................................. 11.410 Brain v Ingledew Brown Bennison and Garrett (A Firm) (No 3) [1997] FSR 511 ....................... 11.410 Breen v Williams (1996) 186 CLR 71 ....................................................................................... 15.220 Breville Pty Ltd v Warehouse Group (Australia) Pty Ltd (2005) 67 IPR 576 ................................. 11.80 Bridge Stockbrokers Ltd v Bridges (1984) 4 FCR 460; 57 ALR 401 .............................. 12.100, 12.310 Bright Tunes Music Corp v Harrisongs Music Ltd (1976) 420 F Supp 177 ................................. 3.130 Bristol-Myers Co v Beecham Group Ltd [1974] AC 646 ............................................................. 9.780 Bristol-Myers Co (Johnson’s) Application [1975] RPC 127 ......................................................... 9.770 Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524; 41 IPR 467 ......... 9.140, 9.150, 9.160, 9.580, 11.170, 11.180, 11.200 Bristol-Myers Squibb Company v Apotex Pty Ltd (2015) 228 FCR 1 ........................................ 11.480 Bristol-Myers and Co’s Application [1969] RPC 146 .................................................................. 9.500 Bristol Conservatories v Conservatories Custom Built [1989] RPC 455 ....................................... 12.50 Bristol Myers Squibb Co v Baker Norton Pharmaceuticals Inc [1999] RPC 253 .......................... 9.330 Bristol Myers and Co’s Application, Re (1969) RPC 146 ............................................................ 9.510 British American Glass Co Ltd v Winton Products (Blackpool) Ltd [1962] RPC 230 .................. 12.390 British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448 ........................ 15.300 British Legion v British Legion Club (Street) Ltd (1931) 48 RPC 555 ....................................... 12.400 British Leyland Motor Corp v Armstrong Patents Co Ltd [1986] FSR 221 ................................ 14.240 British Medical Association v Marsh (1931) 48 RPC 565 .......................................................... 12.400 British Motor Syndicate v John Taylor & Sons (1900) 17 RPC 723 ........................................... 11.110 British Nylon Spinners Ltd and Imperial Chemical Industries Ltd, Ex parte; In re Imperial Chemical Industries Ltd’s Patent (1963) 109 CLR 336 ........................................................ 11.480 British Reinforced Concrete Engineering Co Ltd v Lind (1917) 34 RPC 101 ................ 11.440, 15.190 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 ............................................. 13.470 Brooktree Corp v Advanced Micro Devices Inc (1998) 14 IPR 85 ............................................... 4.520 Brown v Jam Factory Pty Ltd (1981) 53 FLR 340 ..................................................................... 12.100 Brown, Wills & Nicholson’s Application, Re (1923) 41 RPC 171 .............................................. 13.390 Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 ............................ 13.290 Bulun Bulun v R & T Textiles Pty Ltd (1998) 86 FCR 244; 41 IPR 513 ........................... 17.30, 17.110 Bunnings Group Ltd v CHEP Australia Ltd [2011] NSWCA 342; 82 NSWLR 420 ....................... 12.440 Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 ................................................. 12.30, 12.390 Burge and Others v Swarbrick [2007] HCA 17; 72 IPR 235 ........................................................ 4.530 xii

Table of Cases

Burger King Corporation v The Registrar of Trade Marks (1973) 128 CLR 417 ........... 13.420, 13.440 Burgoyne’s Trade Mark (1889) 6 RPC 227 .............................................................................. 13.410 Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400 ................................ 4.360, 6.250 Burroughs Corp (Perkin’s) Application (1974) RPC 147 ............................................................. 9.400

C C & W’s Application, Re (1914) 31 RPC 235 ............................................................................... 9.40 C Van Der Lely NV v Ruston’s Engineering Co Ltd [1993] RPC 45 ........................................... 10.150 C Van der Lely NV v Bamfords Ltd [1963] RPC 61 .......................................................... 9.500, 9.570 C and A Modes v C and A (Waterford) Ltd [1978] FSR 126 ...................................................... 12.210 CA Henschke & Co v Rosemount Estates Pty Ltd (1999) 47 IPR 63 ......................................... 12.250 CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 ......................................... 12.260 CBS Records Australia Ltd v Guy Gross (1989) 15 IPR 385 ............................................. 4.220, 4.230 CBS Records Australia Ltd v Telmak (Aust) Pty Ltd (1987) 9 IPR 440 ................................. 5.80, 6.210 CBS Songs Ltd v Amstrad Consumer Electronics Plc (1988) 11 IPR 1 .............................. 6.180, 6.270 CC Wakefield & Co Ld v Purser (1934) 51 RPC 167 ................................................................ 12.410 CCOM Pty Ltd v Jiejing Pty Ltd (1993) 27 IPR 577 .................................................................. 11.300 CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 .................... 9.60, 9.400, 9.430, 10.320, 10.330 CGR’s Application, Re (1924) 42 RPC 320 ................................................................................ 9.130 CRW Pty Ltd v Sneddon [1972] AR (NSW) 17 ......................................................................... 12.140 Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429 ...................... 12.110, 12.210 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2006] FCA 363 ............... 12.260 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2007) 159 FCR 397 ......... 12.90, 12.230 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 2) [2006] FCA 364 .... 12.270 Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) [2006] FCA 446 .... 12.270 Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429 ................................... 12.210 Cadbury Schweppes Pty Ltd v Pub Squash Company Pty Ltd [1980] 2 NSWLR 851 ................ 12.230 Calder Vale, Re (1934) 53 RPC 117 ........................................................................................... 14.90 Campbell v MGN [2002] EWCA Civ 1373 ...................................................................... 15.10, 15.80 Campbell v MGN Ltd [2005] UKHL 61 ..................................................................................... 15.10 Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45 ................ 12.80, 12.160, 12.310, 12.390, 13.10, 13.470, 13.540, 13.550, 13.560 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337; [2014] HCA 48 ........ 13.110, 13.290, 13.410, 13.420 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2013) 299 ALR 752 .................................. 13.420 Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375; (1994) 120 ALR 495 ........... 13.520 Carpmael’s Application (1928) 45 RPC 411 ................................................................................ 9.90 Castrol Australia Pty Ltd v EmTech Associates Pty Ltd (1980) 33 ALR 31 ........ 15.240, 15.410, 15.420 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 1 IPR 265 ............... 13.120 Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 ................... 10.240, 11.50, 11.60, 11.80 Catnic Components Ltd v Hill & Smith Ltd [1987] FSR 60 ........................................................ 11.30 Cementation Co Ltd’s Application, Re (1945) 62 RPC 151 .......................................................... 9.40 Centronics Systems Pty Ltd v Nintendo Co Ltd (1992) 24 IPR 481 ............................................ 4.520 Chakrabarty, Re 571 F 2d 40; 197 USPQ 73 (1978) .................................................................. 9.210 Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330 ............ 13.690 Chancellor, Master and Scholars of the University of Oxford (t/a Oxford University Press) v Registrar of Trade Marks (1988) 15 IPR 646 ....................................................................... 13.320 Chancellor, Masters and Scholars of the University of Oxford v Registrar of Trade Marks (1990) 24 FCR 1 ................................................................................................................ 13.420 Chantrey Martin v Martin [1953] 2 QB 286 ................................................................................ 3.70 Charles Selz Ltd’s Application (1954) 71 RPC 158 ................................................................... 11.440 Children’s Television Workshop Inc v Woolworths (NSW) Ltd [1981] 1 NSWLR 273 ................ 12.370 Chiron Corporation v Organon Teknika Ltd [1994] FSR 202 .................................................... 10.110 Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60; [2009] FCA 891 ....... 13.450 Chris Ford Enterprises Pty Ltd v B H & JR Badenhop Pty Ltd (1985) 4 IPR 485 ......................... 14.160 Christy v Tipper [1905] 1 Ch 1; 21 RPC 755 ........................................................................... 13.390 Chubb Australia Ltd, Re (1990) 20 IPR 175 ............................................................................. 13.320 Church of the New Faith v Commissioner of Pay-roll Tax (Vict) (1983) 154 CLR 120 .............. 17.310 xiii

Intellectual Property: Commentary and Materials

Ciba-Geigy AG (Durr’s) Applications [1977] RPC 83 .................................................................. 9.370 Cincinnati Grinders (Inc) v BSA Tools Ltd (1931) 48 RPC 33 ...................................................... 9.850 Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309 ............................... 4.320 Clark v Adie (1875) LR 10 Ch App 667 ...................................................................................... 11.30 Clark v Ryan (1960) 103 CLR 486 ........................................................................................... 12.250 Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 ......................... 13.310, 13.420 Clark Equipment Co v Registrar of Trade Marks (1965) 112 CLR 537 ...................................... 13.420 Clarke v Adie (1875) LR 10 Ch App 667 .................................................................................... 11.80 Clayton v Vincent’s Products Ltd (1934) 34 SR (NSW) 214 ..................................................... 12.210 Clifford Davis Management Ltd v WEA Records Ltd [1975] 1 WLR 61 ....................................... 5.290 Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254 ........... 13.760, 13.770 Coca-Cola Co v All Fect Distributors Ltd (1999) 96 FCR 107; [1999] FCA 1721; (1999) 47 IPR 481 .................................................................................................... 13.520, 13.590, 13.640 Coca Cola v PepsiCo In (No 2) (2014) 109 IPR 429; [2014] FCA 1287 .................................... 12.260 Coco v AN Clark (Engineers) Ltd [1968] FSR 415 ...... 15.80, 15.90, 15.100, 15.110, 15.180, 15.230, 15.260, 15.300, 15.320 Coco v AN Clark (Engineers) Ltd [1969] RPC 41 ........................................................ 15.240, 15.280 Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 ........................................... 13.730 Coleman Company Inc v Igloo Products Corp (1999) 48 IPR 158 ........................................... 13.165 Collins v Northern Territory (2007) 161 FCR 549 .................................................................... 11.200 Collins Co v Brown [1857] 3 K & J 423; 69 ER 1174 ............................................................... 12.210 Colman Properties Ltd v Borden Inc [1990] 1 All ER 873 ......................................................... 12.210 Comite Interprofessionel Du Vin de Champagne v NL Burton (1981) 38 ALR 664 ..................... 12.10 Commercial Plastics v Vincent [1964] 3 WLR 820; [1964] 3 All ER 546 .................................... 15.150 Commission for the New Towns v Cooper (Great Britain) Ltd [1995] Ch 259 ......................... 11.240 Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39; 32 ALR 485; 55 ALJR 45 .......... 6.330, 6.370, 6.380, 15.170, 15.240, 15.290, 15.410 Commonwealth v Tasmania (1983) 158 CLR 1 ......................................................................... 2.120 Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 44 ALJR 385 ...... 10.240, 11.40 Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39 ................................. 3.70 Como Investments Pty Ltd v Yenald Nominees Pty Ltd (1997) ATPR 43,617 ............................ 11.240 Computer Edge Pty Ltd v Apple Computer Inc (1986) 65 ALR 33; [1986] HCA 191; 61 CLR 171 ............................................................................................................................. 4.40, 4.380 Computer Edge Pty Ltd and Anor v Apple Computer Inc and Anor (1986) 6 IPR 1 ...................... 1.60 Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 12 IPR 487 ................ 5.430, 6.180 ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 ......... 12.10, 12.90, 12.110, 12.180, 12.210, 12.230, 12.310, 12.340, 13.530 “Concord” Trade Mark [1987] FSR 209 .................................................................................. 13.760 Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd (2006) 229 CLR 577 ............ 5.330 Consorzio del Prosciutto di Parma v Marks & Spencer plc [1991] RPC 351 ............................. 12.210 Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154; 41 IPR 593 ........... 4.360, 4.370, 4.480 Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 ............................................. 11.170 Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 ............................. 13.650 Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 ........................................ 10.240 Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 .... 10.320 Cope Allan (Marrickville) Ltd v Farrow (1984) 3 IPR 567 ........................................................... 4.410 Copyright Agency Ltd v State of New South Wales [2007] FCAFC 80 ............................. 5.240, 5.250 Coral Index Ltd v Regent Index Ltd [1970] RPC 147 ................................................................. 15.40 Corelli v Gray (1913) 29 TLR 570 ......................................................................... 3.140, 6.40, 6.120 Corrs Pavey Whiting & Byrne v Collector of Customs (Vic) (1987) 10 IPR 53 ............ 15.200, 15.410, 15.450 Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594 .............................................................................................................................. 13.500 Cowan v Avel Pty Ltd (1998) 58 FCR 157 ................................................................................ 11.420 Crane v Price (1842) 1 Web PC 393; 4 Man & G 580; 134 ER 239 .................................. 9.40, 9.840 Cranleigh Precision Engineering Ltd v Bryant [1965] 1 WLR 1293; [1966] RPC 81 .... 15.100, 15.310, 15.320 Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 ........................................................................................................................ 13.740 xiv

Table of Cases

Croft v Day (1843) 7 Beav 84; 49 ER 994 ................................................................................. 12.20 Cuisenaire v Reed [1963] VR 719 .............................................................................................. 4.360 Cultivaust Pty Ltd v Grain Pool Pty Ltd (2005) 147 FCR 265; 67 IPR 162 .................................. 16.10 Cummins v Bond [1927] 1 Ch 167 ........................................................................... 4.40, 4.50, 5.80 Cutler v Wandsworth Stadium Ltd [1949] AC 398 .................................................................... 12.60

D D’Arcy v Myriad Genetics Inc (2015) 325 ALR 100 .............................................. 9.230, 9.240, 9.250 DC Comics v Cheqout [2013] FCA 478; (2013) 212 FCR 194 .................................... 13.570, 13.580 DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd (2013) 100 IPR 19; [2013] FCA 132 ............. 9.770 Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129 .................................. 13.80, 13.190 Dalgety Australia Operations Ltd v FF Seeley Nominees Pty Ltd (1985) 5 IPR 97 ....................... 14.90 Dallas Buyers Club LLC v iiNet Ltd [2015] FCA 317 ............................................... 7.10, 7.300, 7.310 Dallas Buyers Club LLC v iiNet Ltd (No 3) [2015] FCA 422 ........................................................ 7.300 Dallas Buyers Club LLC v iiNet Ltd (No 4) [2015] FCA 838 .................................... 7.10, 7.145, 7.300 Dallas Buyers Club LLC v iiNet Ltd (No 5) [2015] FCA 1437 ............................................. 7.10, 7.145 Damorgold Pty Ltd v JAI Products Pty Ltd (2014) 105 IPR 60; [2014] FCA 150 ........................ 11.220 Dan River Trade Mark [1962] RPC 157 ................................................................................... 13.310 Darcy v Allen (1602) 11 Co Rep 84 ............................................................................................. 8.10 Dart Industries Inc v Decor Corp Pty Ltd (1989) 15 IPR 403 .................................................... 14.140 Dart Industries Inc v Decor Corp Pty Ltd (1993) 179 CLR 101 ................................................ 12.110 Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649 ................................. 4.350 Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1 ....................... 4.380, 4.390 David Syme & Co Ltd v General Motors-Holden’s Ltd [1984] 2 NSWLR 294 ........................... 15.450 Davidson v CBS Records (1983) AIPC 90-106 ........................................................................... 5.290 Dawson Chemical Co v Rohm & Haas Co 448 US 176 (1980) ................................................ 11.200 De Garis v Neville Jeffress Pidler (1990) 95 ALR 625 .......... 5.140, 5.150, 5.160, 5.350, 5.360, 6.330, 6.370 Deckers Outdoor Corporation Inc. v Farley (No 2) [2009] FCA 256 ........................................ 13.740 Decor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 ....................................... 10.230, 10.240 Decor Corp Pty Ltd v Dart Industries Inc (1989) AIPC 90-549 ................................................... 9.850 Del Casale v Artedomus (Aust) Pty Ltd (2007) 73 IPR 326 .......................................... 15.380, 15.390 Demagogue Pty Ltd v Ramensky (1992) 39 FCR 31 ................................................................ 11.240 Dennison Manufacturing Co v Monarch Marking Systems Inc (1983) 1 IPR 431 ....................... 9.450 Dent v Turpin (1861) 2 John & H 139; 70 ER 1003 ................................................................... 12.60 Derek McCulloch v Lewis A May Ltd (1947) 65 RPC 58 .......................................................... 12.360 Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 55 IPR 1 ........................... 7.50 Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112 .............. 4.80, 4.90 Deta Nominees Pty Ltd v Viscount Plastic Products Pty Ltd [1979] VR 167 .... 15.240, 15.270, 15.300 Devefi Pty Ltd v Mateffy Perl Nagy Pty Ltd (1993) 113 ALR 225 .................................................. 3.70 Diabolo Case [1908] 2 Ch 274 ............................................................................................... 13.420 Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2011] 1 All ER 242; [2010] EWCA Civ 920 ..................................................................................................................... 12.70 Diamond v Chakrabarty 447 US 303 (1980) ............................................................................. 9.210 Diamond, Commissioner of Patents & Trade Marks v Diehr & Lutton 209 USPQ 1 (1981) ........ 9.400 Dick Smith Investments Pty Ltd v Ramsey [2016] FCA 939 ...................................................... 13.770 Dickens, Re [1935] Ch 267 .............................................................................. 3.50, 3.60, 3.70, 3.90 Digital Pulse Pty Ltd v Christopher Harris [2002] NSWSC 33 ................................................... 15.230 Dixon Investments Pty Ltd v Hall (1990) 18 IPR 481 ................................................................... 6.50 Dominion Rent A Car Ltd v Budget Rent A Car Systems (1970) Ltd [1987) 2 NZLR 395 .......... 12.210 Donaldson v Becket (1774) 1 ER 837 .......................................................................................... 3.20 Donoghue v Allied Newspapers [1938] Ch 106 ........................................... 3.100, 3.110, 4.40, 5.80 Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [2001] FCA 1877 ...................... 10.280 Dorling v Honnor Marine [1965] Ch 1 ...................................................................................... 6.250 Douglas v Hello! Ltd (2005) 65 IPR 449 ..................................................................... 15.210, 15.260 Douglas v Hello! Ltd (No 1) [2001] 2 All ER 289 ............................................... 15.10, 15.80, 15.210 Douglas v Hello [2007] UKHL 21 .............................................................................................. 12.90 Dow Chemical v Ishihara Sangyo Kaisha Ltd (1986) 5 IPR 415 .................................................... 9.90 Dowson & Mason Ltd v Potter [1986] 2 All ER 418 ................................................................... 15.40 xv

Intellectual Property: Commentary and Materials

Draper v Trist (1939) 56 RPC 429 ........................................................................................... 12.400 Dronpool Pty Ltd v Hunter (1984) 3 IPR 310 .............................................................................. 6.20 Duchess of Argyll v Duke of Argyll [1967] Ch 302 ................................................................... 15.100 Ducker’s Trade Mark (1928) 45 RPC 397 ................................................................................ 13.100 Dunlop v Holborn Tyre Co (1901) 18 RPC 222 ....................................................................... 11.110 Dunlop Olympic Ltd v Cricket Hosiery Inc (1990) 20 IPR 475 ...................................... 13.80, 13.190 Dunlop Pneumatic Tyre Co v David Moseley & Sons Ltd [1904] 1 Ch 616 .............................. 11.110 Dunlop Pneumatic Tyre Co Ltd v British & Colonial Motor Car Co (1901) 18 RPC 313 ........... 11.150 Dunlop Rubber Co’s Application (1942) 59 RPC 134 ................................................. 13.310, 13.390 Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) 177 FCR 239 .............................................. 9.760 Durkan v Twentieth Century Fox Film Corporation [2000] ATMO 5 ........................................ 13.510

E E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 ................................. 13.760 E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144; [2010] HCA 15 ........ 13.760 E I Du Pont de Nemours and Company v ICI Chemicals & Polymers Ltd (2005) 66 IPR 462 ..... 9.540 EI Dupont de Nemours Powder Co v Masland (1917) 244 US 102 ......................................... 15.280 EMI Music Publishing Ltd v Papathanasiou [1993] EMLR 306 ................................................... 6.140 EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47 .......... 3.150, 6.140 EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 ................................................ 13.740 Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1; (1999) 44 IPR 535 .................... 4.320 Eastman Photographic Materials Co v Comptroller-General of Patents, Designs & Trade Marks [1898] AC 571; 15 RPC 476 .................................................................................... 13.390 Eclipse Sleep Products Incorporated v The Registrar of Trade Marks (1957) 99 CLR 300 ......... 13.440 EdSonic Pty Ltd v Cassidy [2010] FCA 1008 ................................................................... 5.160, 5.190 Edison & Swan Electric Light Co v Holland (1889) 6 RPC 243 ................................................... 10.60 Education, Director-General of v Public Service Association of New South Wales (1985) 4 IPR 552 ...................................................................................................................................... 5.240 Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548 ............................. 13.620 Edwards Hot Water Systems v SW Hart & Co Pty Ltd (1983) 49 ALR 605 .................................. 14.70 Eisman & Co’s Application, Re (1920) 37 RPC 134 ................................................................. 13.390 Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 ................................. 9.690, 10.240 Elders Rural Services Australia Ltd v Registrar of Plant Breeder’s Rights (2012) 199 FCR 520; 95 IPR 229 ........................................................................................................................... 16.10 Elders Trustee and Executor Co Ltd v EG Reeves Pty Ltd (1987) 78 ALR 193 ............................ 12.160 Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 .................... 10.200, 10.220, 10.240 Electric Telegraph Co, The v Brett (1851) 10 CB 838; 138 ER 331 .............................................. 9.40 Electrix Ltd’s Application, In Re [1957] RPC 369 ..................................................................... 13.530 Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 ............................................................. 13.70, 13.760 Eli Lilly & Co v Pfizer Overseas Pharmaceuticals (2005) 218 ALR 408 ...................................... 10.150 Elias v Grovesend Tinplate Co (1890) 7 RPC 455 ...................................................................... 9.130 Ellis & Co’s Trade Marks (1904) 21 RPC 617 ........................................................................... 13.500 Elton John v Richard Leon James [1991] FSR 397 ...................................................................... 5.290 Elton and Leda Chemicals Ltd’s Application, Re [1957] RPC 267 ................................................. 9.40 Eno v Dunn (1890) 1B IPR 391 ............................................................................................... 13.520 Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166 ................................................................ 13.770 Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd [1979] AC 731 .............. 12.60, 12.70, 12.90, 12.100, 12.160, 12.210, 12.410 Esanda Ltd v Esanda Finance Ltd [1984] 2 NZLR 748 .............................................................. 12.210 Eutectic Corporation v Registrar of Trade Marks (1980) 32 ALR 211 ........................... 13.420, 13.440 Evans v E Hulton & Co Ltd [1924] Mac CC 51 .......................................................................... 3.110 Evans v Hutton (1924) 131 LT 534 ........................................................................................... 6.270 Express Newspapers Plc v Liverpool Daily Post & Echo Plc [1985] FSR 306 ............................... 4.170 Express Newspapers Plc v News (UK) Ltd (1990) 18 IPR 201 ...................................................... 5.80 Exxon Corp v Exxon Insurance Consultants International Ltd [1981] 2 All ER 495 ..................... 4.170 Exxon Corporation v Exxon Insurance Ltd [1982] 1 Ch 119 ...................................................... 4.170 Exxon/Fuel Oils (T 409/91) [1994] OJEPO 653 ....................................................................... 10.360 xvi

Table of Cases

F F Hoffman-La Roche & Co Aktiengesellschaft v Commissioner of Patents is reported in (1971) 123 CLR 529 .......................................................................................................... 10.320 FAI Insurance Ltd v Advance Bank Aust Ltd (1986) 7 IPR 217 .................................................... 4.320 FH Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537 .............................................................................................. 13.440 FP Innovation Pty Ltd v Registrar of Trade Marks [2013] FCA 826 ........................................... 13.740 Faccenda Chicken Ltd v Fowler [1986] 1 All ER 617; 6 IPR 155 ........ 15.140, 15.180, 15.360, 15.370 Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984; (2010) 88 IPR 11 ................................................................................... 4.120, 4.130, 6.430 Falcon v Famous Players Film Co [1926] 2 KB 474 .................................................................... 6.270 Falconer v Australian Broadcasting Corporation (1991) 22 IPR 205 ............................ 15.160, 15.170 Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc (1993) 26 IPR 565 ........................... 9.450 Fanfold Ltd’s Application (1928) 45 RPC 325 .......................................................................... 13.370 Farbenfabriken Application, Re [1894] 1 Ch 645 ..................................................................... 13.390 Farbenindustrie AG’s Patents, In re (1930) 47 RPC 289 ............................................................. 9.700 Farley (Aust) Pty Ltd v JR Alexander & Sons (Qld) Pty Ltd (1946) 75 CLR 487 ......................... 13.180 Faulding (1965) 112 CLR 537 ................................................................................................. 13.420 Federal Trade Commission v Standard Education Society 302 US 112 ..................................... 12.140 Fei Yu t/as Jewels 4 Pools v Beadcrete Pty Ltd [2014] FCAFC 117 ............................................ 11.220 Fender Guitar Case, Fender Australia v Bevk [(1989) 15 IPR 257] ............................................ 13.710 Fenty v Arcadia [2013] EWHC 2310 .......................................................................................... 12.90 Fenty v Arcadia [2015] 1 WLR 3291; [2015] EWCA Civ 3 .......................................................... 12.90 Fertilitescentrum AB and Luminis Pty Ltd (2004) 62 IPR 420; [2004] APO 19 ............................ 9.290 Festo Corp v Shoketsu Kinzoku Kogyu Kabushiki Co Ltd (2000) 234 F 3d 558 .......................... 11.70 Fine Industrial Commodities Ltd v Powling (1954) 71 RPC 253 .............................................. 11.440 Firebelt Pty Ltd v Brambles Australia Ltd (2000) 51 IPR 531; [2000] FCA 1689 ........................ 10.140 Firebelt Pty Ltd v Brambles Australia Ltd (2002) 76 ALJR 816; 188 ALR 280 .................. 9.650, 10.150 Fiscal Technology Co Ltd v Johnson (1991) 23 IPR 555 ........................................................... 15.180 Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 ............... 10.240 Flashback Holdings Pty Ltd v Showtime DVD Holdings Pty Ltd (No 6) [2010] FCA 694 ............. 5.320 Fleming’s Nurseries Pty Ltd v Hannaford [2009] FCA 884 ......................................................... 16.10 Fleming’s Nurseries Pty Ltd v Siciliano (2006) 68 IPR 545 ......................................................... 16.10 Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196 .... 12.180, 12.210, 12.290 Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 ............................................ 9.690, 10.240 Florence Mfg Co v JC Dowd & Co 178 F 73 ........................................................................... 12.140 Flour Oxidizing Company Ltd v Carr & Co. Ltd [1908] 25 RPC 428 .......................................... 9.580 Foggin v Lacey (2003) 57 IPR 225 .......................................................................................... 14.190 Fomento Industrial SA v Mentmore Manufacturing Co Ltd (1956) RPC 87 ..................... 9.510, 9.560 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 ................................................................................................................................. 13.170 Ford v Foster (1872) LR 7 Ch App 611 .................................................................................... 12.210 Forsyth v Riviere (1819) 1 Web PC 95 ......................................................................................... 9.40 Foster v Mountford and Rigby Ltd (1976) 29 FLR 233; 14 ALR 71 .................................. 15.10, 17.80 Franchi v Franchi [1967] RPC 149 ........................................................................................... 15.120 Francis Day & Hunter Ltd v Bron [1963] Ch 587 ........................... 3.130, 3.150, 6.110, 6.130, 6.140 Frank Yu Kwan Yuen v McDonald’s Corporation, McDonald’s Restaurants Ltd (2001) CH/APP No 183 ................................................................................................................... 13.50 Franklin v Giddens [1978] Qd R 72 ......................................................................................... 15.260 Fraser v Evans [1969] 1 QB 349; [1969] 1 All ER 8 .................................................................. 15.420 Fraser v Thames Television [1984] QB 44 .................................................................................. 15.70 Freeman v TJ & FL Pohlner Pty Ltd (1994-1995) 30 IPR 377 ................................................... 10.240 Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230 .......................... 11.80 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; 201 FCR 565 .............. 13.570, 13.580 Funk Bros Seed Co v Kalo Inoculant Co 333 US 127 (1948) ...................................................... 9.190 xvii

Intellectual Property: Commentary and Materials

G G v Day [1982] 1 NSWLR 24 .................................................................................................. 15.170 GEC’s Application, Re (1942) 60 RPC 1 .............................................................................. 9.40, 9.50 Gadd & Mason v Manchester Corp (1892) 9 RPC 516 ............................................................. 9.500 Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 145 ALR 21 ........................................ 4.420 Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 37 IPR 462 .............................. 4.420, 4.430 Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485 .......................... 13.520, 13.640 Gartside v Outram (1856) 26 LJ Ch 113 .................................................................... 15.410, 15.420 Genentech I/Polypeptide expression (T 292/85) [1989] OJ EPO 275 ....................................... 10.110 General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457; (1971) 1A IPR 121 ..................................................................................................... 9.570, 9.580, 9.670, 9.680 Generic Health Pty Ltd v Otsuka Pharmaceutical Co Ltd (2013) 296 ALR 50; 100 IPR 240 ....... 11.210 George Cording Ltd’s Application, Re (1916) 33 RPC 83 ........................................................ 13.390 George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64; [1975] RPC 31 .............. 4.360 Gerard Industries Pty ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119 ......................... 14.140 Gillette Safety Razor Company v Anglo-American Trading Company Ltd (1913) 30 RPC 465 .................................................................................................................................... 11.260 Gilman Engineering Ltd v Ho Shek On (1986) 8 IPR 313 ........................................................ 15.180 Glastonbury case [1938] AC 557; (1938) 55 RPC 253 ............................................................. 13.310 Glaverbel SA v British Coal Corp [1994] RPC 443 .................................................................... 10.240 GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No. 2) Limited v Apotex Pty Ltd [2016] FCA 608 ........................................................................................................... 10.220 Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; (2008) 76 IPR 161 ........................ 13.460 Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 ..................................... 12.100 Globelegance BV v Sarkissian [1974] RPC 603 ........................................................................ 12.210 Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd [2005] FCA 1521; 67 IPR 497 ........................................................................................................................... 4.530, 5.270 Gollel Holdings v Kenneth Maurer (1987) 9 IPR 109 ................................................................. 12.90 Gould v Vaggelas (1985) 157 CLR 215 ................................................................................... 11.240 Grain Pool of WA v Commonwealth of Australia [2000] HCA 14; 202 CLR 479; 170 ALR 111; 46 IPR 51 ...................................................................... 1.80, 1.90, 2.120, 16.10, 16.180, 16.190 Grant v Commissioner of Patents [2006] FCAFC 120 ................................................................ 9.410 Great Western Corp Pty Ltd v Grove Hill Pty Ltd [2001] FCA 423 ............................................ 11.220 Green v Broadcasting Corp of New Zealand (1983) 2 IPR 191; (1989) 16 IPR 1 ............... 4.190, 6.40 Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417; (1990) 95 ALR 275 .... 4.300, 4.310, 5.110, 5.270, 6.50 Greenfield Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 ................................................ 4.330 Griffin v Isaacs (1938) 12 ALJ 169; 12 AOJP 739 ............................................................. 9.450, 9.560 Griffiths v United States of America [2005] FCAFC 34 ............................................................... 6.620 Grove Hill Pty Ltd v Great Western Corp Pty Ltd (2002) 55 IPR 257; [2002] AIPC 91-810; [2002] FCAFC 183 ............................................................................ 9.590, 9.790, 9.800, 11.220 Gruzman Pty Ltd v Percy Marks Pty Ltd and Anor (1989) 16 IPR 87 .......................................... 5.340

H H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151 .................. 9.570, 9.600, 9.860, 10.250 H Lundbeck A/S v Generics (UK) Ltd [2009] RPC 13 ............................................................... 10.360 HIT Factory Inc v HIT Factory Inc (1986) 12 CPR (3d) 287 ...................................................... 12.210 Hack’s Application, Re (1940) 58 RPC 91 ................................................................................ 13.490 Hadley v Kemp [1999] EMLR 589 .................................................................................... 5.70, 5.110 Haines v Copyright Agency Ltd (1982) 42 ALR 549 ................................................................... 5.370 Half Court Tennis Pty Ltd v Seymour (1980) 53 FLR 240 .................................................. 4.350, 6.40 Hall v Lewis (2004) 64 IPR 61 ................................................................................................. 14.110 Hallelujah Trade Mark [1976] RPC 605 ................................................................................... 13.500 Hanave Pty Ltd v LFOT Pty Ltd (1999) FCA 357 ...................................................................... 11.240 Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCA 406 ............................. 12.230 Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579; [2008] FCAFC 181 ........................................................................................................................ 12.230 Harrods Ltd v R Harrod Ltd (1923) 41 RPC 74 .......................................................................... 12.60 xviii

Table of Cases

Hartnell v Sharp Corp of Australia Pty Ltd (1975) 5 ALR 493 ................................................... 13.790 Harwood v Great Northern Railway (1863) 11 HLC 654 ........................................................... 9.450 Hawkes & Son (London) Ltd v Paramount Films Service Ltd [1934] 1 Ch 593 ........... 6.50, 6.60, 6.70 Health World Ltd v Shin-Sun Australia Ltd (2010) 240 CLR 590 ............................................... 13.740 Hearne v Street (2008) 235 CLR 125 ...................................................................................... 15.350 Hecla Foundry Co v Walker, Hunter & Co (1889) 14 App Cas 550 ............................................ 14.40 Helitune Ltd v Stewart Hughes Ltd [1991] FSR 171 ................................................................. 11.300 Helmore v Smith (1887) 35 Ch D 449 .................................................................................... 15.190 Henderson v Radio Corp Pty Ltd [1960] SR (NSW) 576 ............................................. 12.380, 12.400 Henderson v Radio Corpn Pty Ltd [1969] RPC 218 ................................................................. 12.390 Henjo investments Pty Ltd v Collins Marrickville Pty Ltd (No 1) (1988) 39 FCR 546; 79 ALR 83 ......................................................................................................................... 11.240, 12.100 Henriksen v Tallon Limited [1965] RPC 434 .............................................................................. 10.70 Herbert Morris Ltd v Saxelby [1916 1 AC 688 ............................................................ 15.190, 15.370 Hexagon Pty Ltd v Australian Broadcasting Commission (1975) 7 ALR 233 ................................. 6.40 Hick’s Trade Mark, Re (1897) 22 VLR 636 ............................................................................... 13.180 Hickton’s Patent Syndicate v Patents & Machine Improvements Co Ltd (1909) 26 RPC 339 ..... 9.190 Hill v Evans (1862) 4 De GF and J 288 ...................................................................................... 9.570 Hivac Ltd v Park Royal Scientific Instruments Ltd [1946] 1 Ch 169; [1946] 1 All ER 350 .......... 15.190 Hogan v Koala Dundee Pty Ltd (1988) 12 IPR 508 ..................................................... 12.320, 12.370 Hogan v Pacific Dunlop Ltd (1988) 12 IPR 225 .............................................................. 12.10, 12.90 Home Box Office Inc v Channel 5 Home Box Office Ltd [1982] FSR 449 ................................. 12.210 Hornblower v Boulton (1799) 8 TR 95; 101 ER 1258 .................................................................. 9.40 Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 ..................................................................... 12.90, 12.100, 12.160, 12.310 Howard (1946) 72 CLR 175 .................................................................................................... 13.420 Howard Auto Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175 ............................ 13.390 Hubbard v Vosper [1972] 2 QB 84; [1972] 1 All ER 1023 ............................................. 6.330, 15.420 Hudson’s Trade Marks, Re (1886) 32 Ch D 311 ...................................................................... 13.180 Humpherson v Syer (1887) 4 RPC 407 ..................................................................................... 9.500 Hutchence v South Sea Bubble Co Pty Ltd (1986) 64 ALR 330 ................................................ 14.250

I ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc (1999) 45 IPR 577 ....................................... 9.500 ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 .................. 9.580 IF Asia Pacific v Galbally (2003) 59 IPR 43 .................................................................. 15.120, 15.140 IG Farbenindustrie AG’s Patent (1930) 47 RPC 289 ................................................................... 9.600 ITW AFC Pty Ltd v Loi and Tran Pty Ltd [2008] FCA 552 ............................................................ 11.90 IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14 ................................................... 4.60 Icon Plastics Pty Ltd [2007] ADO 2 ......................................................................................... 14.150 Imperial Chemical Industries Ltd (Clark’s) Application [1969] RPC 574 ................................... 10.320 Imperial Group Ltd v Philip Morris & Co Ltd [1982] FSR 72 .............................. 13.60, 13.70, 13.760 Improver Corporation v Remington Consumer Products Ltd [1990] FSR 181 ................. 11.60, 11.80 Independent Management Resources Pty Ltd v Brown (1986) 9 IPR 1 ...................................... 15.40 Initial Services Ltd v Putterill [1968] 1 QB 396; [1967] 3 All ER 145 ............................ 15.420, 15.440 Inland Revenue Comrs v Muller & Co’s Margarine Ltd [1901] AC 217 ......................... 12.60, 12.390 Innovative Agriculture Products v Cranshaw (1996) 35 IPR 643 ................................................ 9.800 Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 ................................... 9.560 Interfirm Comparison Pty Ltd v Law Society of NSW [1975] 2 NSWLR 104 ................ 15.120, 15.170 Interlego AG v Croner Trading Pty Ltd [1992] FCA 624; [1993] AIPC 90-956; (1992) 111 ALR 577; 25 IPR 65; 39 FCR 348 .................................................................. 14.70, 4.320, 12.250 Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 ................................................................ 10.240 International Business Machines Corp v Commissioner of Patents (1991) 33 FCR 218 .............. 9.400 International Business Machines Corp’s Application (1980) FSR 564 ......................................... 9.400 Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) BV (1977) 138 CLR 534 .................................................................................................................... 5.430, 6.250 Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd (2010) 85 IPR 525; [2010] FCA 108 .................................................................................................................. 9.860, 11.170 Irvine v Talksport [2002] 2 All ER 414 ......................................................................... 12.370, 12.390 xix

Intellectual Property: Commentary and Materials

Irvine Talksport Ltd [2003] 2 All ER 881; [2003] EWCA Civ 423 ............................................... 12.390 Irving’s Yeast-Vite Ltd v Horsenail (1934) 150 LT 402 .............................................................. 13.390

J JB Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406 ................................ 13.620 JB Williams Co v H Bronnley & Co Ltd (1909) 26 RPC 765 ...................................................... 12.120 JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 ............................................... 11.410 JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2006) 154 FCR 348 ............................................ 9.660 JT International SA v Commonwealth [2012] HCA 43; 250 CLR 1 .................................. 2.220, 13.10 Jafferjee v Scarlett (1937) 57 CLR 115 ........................................................................ 12.140, 13.520 James A Jobling & Co Ltd v James McEwan & Co Pty Ltd [1933] VLR 168 ............................... 13.420 Jamieson v American Dairy Queen Corp (1989) 18 IPR 101 .................................................... 13.190 Jellinek’s Application, Re (1946) 63 RPC 59 ................................................................ 13.165, 13.490 John Bulun Bulun v R & T Textiles Pty Ltd (1998) 41 IPR 513 ......................................... 5.220, 5.230 John Haig & Co. Ltd. v. Forth Blending Co. Ltd .(1953) 70 R.P.C. 259 ...................................... 12.40 Johnson v Agnew [1980] AC 367 ............................................................................................ 15.450 Johnson & Johnson v Kalnin (1993) 26 IPR 435 ...................................................................... 13.520 Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 ......... 12.110, 13.640, 13.650 Johnson’s Patent, Re (1937) 55 RPC 4 ...................................................................................... 9.130 Joos v Commissioner of Patents (1972) 126 CLR 611 ................................................................ 9.430 Joseph Bancroft & Sons Co v Registrar of Trade Marks (1957) 99 CLR 453 ............................. 13.510 Joy Music Ltd v Sunday Pictorial Newspapers (1920) Ltd [1960] 2 QB 60 ................................... 6.20 Julie Breen v Cholmondeley W Williams (1996) 186 CLR 71 ........................................................ 3.70 Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155; 65 IPR 86 ................................................. 9.560

K KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) 71 IPR 615 ............. 9.660, 11.60, 11.80, 11.90 Kabushiki Kaisha Sony Computer Entertainment v Stevens (2002) 55 IPR 497 .......................... 7.100 Kabushiki Kaisha Sony Computer Entertainment v Stevens (2003) 57 IPR 161 .......................... 7.100 Kalamazoo (Aust) Pty Ltd v Compact Business Systems P/L (1985) 84 FLR 101 .............. 4.170, 4.180 Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 5 ............................ 4.60 Kauzal v Lee (1936) 58 CLR 670 ............................................................................................. 10.220 Keech v Sandford (1726) 2 Eq Ca Ab 741; 22 ER 629 ............................................................. 15.190 Keith Henry & Co Pty Ltd v Walker (1958) 100 CLR 342 ......................................................... 15.190 Keller v LED Technologies Pty Ltd [2010] FCAFC 55; (2010) 185 FCR 449; (2010) 268 ALR 613; (2010) 87 IPR 1; [2010] AIPC 92-384 ......................................................................... 14.140 Kendall Co, The v Mulsyn Paint and Chemicals (1963) 109 CLR 300 ......................... 13.210, 13.520 Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30 ......................... 13.440 Kenrick v Lawrence (1890) 25 QBD 99 ................................................................... 5.80, 4.320, 6.20 Kestos v Kempat (1935) 53 RPC 139 ............................................................................. 14.40, 14.70 Kettles and Gas Appliances Ltd v Anthony Hordern & Sons Ltd (1935) 35 SR (NSW) 108 ....... 12.210 Kiku Trade Mark [1978] FSR 246 ............................................................................................ 13.420 Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 .......... 10.80, 10.90, 11.70 Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415 ................................................... 13.500 King v Milpurrurra (1996) 66 FCR 474 ..................................................................................... 7.210 King Features Syndicate Inc v O & M Kleeman Ltd [1941] AC 417 ................... 6.120, 6.250, 14.250 Kirchner & Co v Gruban [1909] 1 Ch 413; [1908-10] All ER Rep 242 ..................................... 15.190 Kirin-Amgen v Hoechst Marion Roussel Ltd [2005] RPC 9; (2004) 64 IPR 444 ................ 11.70, 11.80 Klissers Bakeries v Harvest Bakeries (1986) 5 IPR 533 .................................................................. 6.50 Knight v Beyond Properties Pty Ltd (2007) 242 ALR 586 ......................................................... 12.230 Knott Investments Pty Ltd v Winnebago Industries, Inc [2013] FCAFC 59 .................. 12.430, 12.440 Knott Investments Pty Ltd v Winnebago Industries, Inc (No 2) [2013] FCAFC 117 ..... 12.430, 12.440 Kodak Ltd’s Trade Mark, Re (1903) 20 RPC 337 ...................................................................... 13.390 Komesaroff v Mickle (1986) 7 IPR 295 ...................................................................................... 4.360 xx

Table of Cases

Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 48 IPR 257 .... 14.10, 14.140, 14.310 Krakowski v Eurolynx Properties Ltd (1995) 183 CLR 563 ....................................................... 11.240 Krisarts SA v Briarfines Ltd [1977] FSR 577 .................................................................................. 6.20 Kuntstreetwear Pty Ltd’s Trade Mark Application (2007) 73 IPR 438 ....................................... 13.500

L LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 ............................................................ 14.250 LED Builders v Eagle Homes (1999) 44 IPR 24 .......................................................................... 4.320 LED Builders v Masterton Homes (NSW) Pty Ltd (1994) 30 IPR 447 ............................................ 6.40 LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941; (2008) 80 IPR 85; [2009] AIPC 92-330 ...................................................................................................................... 14.140 L’Oreal’s Application [1970] RPC 565 ....................................................................................... 9.370 Labelmakers Group Pty Ltd v LL Force Pty Ltd (No 2) [2012] FCA 512 ....................... 15.180, 15.230 Lac Minerals Ltd v International Corona Resources Ltd (1989) 16 IPR 27 ................................ 15.250 Ladbroke v William Hill [1964] 1 WLR 273 ....................................................................... 4.170, 6.50 Lamb v Evans [1893] 1 Ch 218 ............................................................................................... 15.180 Lane Fox v Kensington & Knightsbridge Electric Lighting Co [1892] 3 Ch 424; (1892) 9 RPC 413 ........................................................................................................ 9.180, 9.190, 9.840 Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 ........................................................ 10.240 Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29 ............. 3.130, 3.150, 6.140 Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (No 2) (2010) 87 IPR 357 ....... 6.600, 6.610 Leather Cloth Co v American Leather Cloth Co (1865) 11 HL Cas 523; 11 ER 1435 .................. 12.20 Lee and Commissioner of Patents, Re [2011] AATA 818 ........................................................... 11.450 Leicestershire County Council v Michael Faraday & Partners Ltd [1941] 2 KB 205 ...................... 3.70 Lenard’s Application (1954) 71 RPC 190 .................................................................................. 9.200 Leng v Andrews [1909] 1 Ch 763 ........................................................................................... 15.190 Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23; 67 FCR 126 .................................. 10.240; 10.320 Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 .................................................... 10.160 Levi Strauss v Kimbyr Investments Ltd (1994) 28 IPR 149 ....................................................... 12.110 Liardet v Johnson Hil V 1778 ...................................................................................................... 8.10 Liebig’s Extract of Meat Co’s Trade Mark, Re (1902) 22 NZLR 165 ......................................... 13.390 Lincoln Industries Ltd v Wham-O Manufacturing Co (1984) 3 IPR 115 .......................... 4.300, 4.330 Lindner v Murdoch’s Garage (1950) 83 CLR 628; [1950] ALR 927 .......................................... 15.400 Lion Laboratories Ltd v Evans [1984] 2 All ER 417 ................................................................... 15.410 Littlewoods Organisation Ltd v Harris [1978] 1 All ER 1026 ..................................................... 15.370 Liverpool Electric Cable Co case (1928) 46 RPC 99 ................................................................. 13.310 Livron case (1937) 54 RPC 327 ............................................................................................... 13.310 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274; 62 IPR 461 ............................................................................................................ 10.20, 10.290, 10.330 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 ...... 9.650, 9.730; 9.760 Lomas v Winton Shire Council (2002) FCAFC 413 .................................................................. 13.220 Lomas v Winton Shire Council (2003) AIPC 91-839 ................................................................ 13.520 London Armoury Co Ltd v Ever Ready Co (Great Britain) Ltd [1941] 1 KB 742 .......................... 12.60 Longworth v Emerton (1954) 82 CLR 539 ..................................................................... 9.590; 9.800 Lord Ashburton v Pape [1913] 2 Ch 469 ................................................................... 15.170, 15.180 Lorenzo & Sons v Roland Corporation (1992) 23 IPR 376 ........................................................... 3.70 Lotus Development Corp v Vacolan Pty Ltd (1989) 16 IPR 143 ................................................. 5.430 Louth v Diprose ((1992) 175 CLR 621) ....................................................................................... 3.70 Lubrano v Gollin & Co Pty Ltd (1919) 27 CLR 113 ................................................................. 12.160 Lubrizol Corp v Esso Petroleum Ltd [1998] RPC 727 ............................................................... 11.300 Lumley Life Ltd v IOOF of Victoria Friendly Society (1989) 16 IPR 316 .................................... 12.230 Ly v The Queen [2014] FCAFC 175 ......................................................................................... 13.730 Lyngstad v Anabas Products Ltd [1977] FSR 62 ....................................................................... 12.370 Lyon v Goddard (1893) 10 RPC 121; 11 RPC 354 ..................................................................... 9.840 xxi

Intellectual Property: Commentary and Materials

M MGM Studios, Inc v Grokster, Ltd 545 US 913 (2005) .............................................................. 7.230 MID Sydney Pty Ltd v Australian Tourism Co Limited (1998) 90 FCR 236 ................................ 13.520 Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725 ...................................................... 12.120 Maeder v Busch (1938) 59 CLR 684 ........................................................................................... 9.40 Maglificio Calizificio Torinese SpA’s App (1982) 52 AOJP 1764 ................................................ 13.500 Magnolia Metal Co v Tandem Smelting Ltd (1900) 17 RPC 477 ............................................... 12.10 Magnolia Metal Co’s Trade Mark [1897] 2 Ch 371 ................................................................. 13.340 Majestic Selections Pty Ltd v Bushland Flora [2016] APBRO 1 ................................................... 16.40 Malone v Metropolitan Police Commissioner [1979] 1 All ER 256; [1979] 1 WLR 700 ............. 15.420 Mangrovite Belting Ltd v J C Ludowici & Son Ltd (1938) 61 CLR 149 ..................................... 13.420 Marco Polo Foods Pty Ltd v Benino Fine Foods (Aust) Pty Ltd (2005) 67 IPR 179 .................... 13.500 Marconi v British Radio Telegraph & Telephone Co Ltd (1911) 28 RPC 181 .............................. 11.30 Mareva Naviera SA of Panama v International Bulk Carriers SA [1980] 1 All ER 213 ................... 6.540 Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 ............ 13.420, 13.430, 13.600, 13.640 Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 104 FCR 61 ..... 12.80, 12.90, 12.290, 12.310, 12.420 Mars GB Ltd v Cadbury Ltd [1987] RPC 387 ........................................................................... 13.520 Martin v Scribal Pty Ltd (1954) 92 CLR 17 .............................................................................. 10.240 Martin & Biro Swan Ltd v H Millwood Ltd [1956] RPC 125 ..................................................... 10.240 Martin Engineering Co v Nicaro Holdings Pty Ltd (1991) AIPC 90-799 ..................................... 9.850 Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 ............................ 9.860, 10.240 Maxim’s Ltd v Dye [1978] 2 All ER 55 ..................................................................................... 12.190 Maxwell v Hogg (1867) LR 2 Ch App 307 .............................................................................. 12.290 Maxwell v Murphy (1957) 96 CLR 261 ..................................................................................... 7.190 Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 166 FCR 312 ........... 13.740 McCormick & Company Inc v McCormick [2000] FCA 1335 ..................................... 13.510, 13.530 McCorquodale v Masterson [2004] FCA 1247 ........................................................................ 13.510 McCulloch v Lewis A May (Produce Distributors) Ltd [1947] 2 All ER 845; 65 RPC 58 ............ 12.380, 12.390 McWilliam’s Wines Pty Ltd v McDonald’s System of Australia Pty Ltd (1980) 33 ALR 394 ....... 12.160, 13.50 Measures Bros Ltd v Measures [1910] 1 Ch 336 ........................................................ 15.190, 15.240 Mecklermedia Corp v DC Congress GmbH [1998] Ch 40 ....................................................... 13.630 MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2013] RPC 27 ....................................... 10.350 Melbourne v Terry Fluid Controls Pty Ltd (1994) 28 IPR 302 ................................................... 10.240 Mense v Milenkovic [1973] VR 784 ........................................................................................ 15.120 Merchandising Corporation of America v Harpbond [1983] FSR 32 ......... 4.250, 4.280, 4.290, 12.90 Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31; 68 IPR 511 ............... 9.170, 9.510 Mercy’s Application (1955) AOJP 938 ..................................................................................... 13.500 Merryweather & Sons v Moore [1892] 2 Ch 518; [1891-94] All ER Rep 563 ........................... 15.190 Meth v Norbert Steinhardt & Son Ltd (1963) 107 CLR 187 .................................................... 11.420 Metric Resources Corp v Leasemetrix Ltd [1979] FSR 571 ....................................................... 12.210 Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228; 1A IPR 181 .... 9.350, 9.570, 9.580 Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 ............... 13.80, 13.190, 13.400 Microcell case (1959) 102 CLR 232 .......................................................................................... 9.130 Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 ........................................ 7.210 Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 ....................................... 13.440 Milirrpum v Nabalco Pty Ltd (1971) 17 FLR 141 ..................................................................... 17.310 Millar v Taylor (1769) 98 ER 201 ................................................................................................. 3.20 Milpurrurru v Indofurn (1994) 54 FCR 240; 30 IPR 209 .......... 6.70, 6.80, 6.90, 6.550, 6.560, 17.30, 17.100 Mineral Resources, Minister for v Newcastle Newspapers Pty Ltd (1997) 40 IPR 403 .............. 15.250, 15.290, 15.410 Mining Equipment “Minquip” Pty Ltd v Alfagamma Australia Pty Ltd (2005) 64 IPR 237 ........ 14.110 Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 ..... 9.350, 9.680, 9.700, 11.30 Mitchell v Brown (1880) 6 VLR 168 ................................................................................. 5.80, 5.110 Mobil Oil Australia Ltd v Guina Development [1996] 2 VR 34; (1995) 33 IPR 82 ..................... 15.350 xxii

Table of Cases

Modena Trading Pty Ltd v Cantarella Bros Pty Ltd [2013] FCAFC 110; 215 FCR 16 .... 13.410, 13.740 Mogul Steamship Co v McGregor Gow & Co [1892] AC 25 ....................................................... 8.20 Monckton v Pathe Freres Pathephone Ltd [1914] 1 KB 395 ...................................................... 6.270 Montana Wines Ltd v Villa Maria Wines Ltd (1984) 2 IPR 203 .................................................. 13.620 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 ...... 3.70, 13.210, 13.220, 15.10, 15.230, 15.240, 15.280 Moorgate Tobacco Company Ltd v Philip Morris Ltd (1980) 145 CLR 457 .............................. 12.210 Moorhouse v Angus & Robertson (No 1) Pty Ltd (1980) FSR 231 ............................................... 3.70 Morgan v Seaward (1837) 2 M & W 544 .................................................................................. 9.780 Morgan & Co v Windover & Co (1890) 7 RPC 131 .................................................................. 9.450 Morison v Moat (1851) 68 ER 492 .......................................................................................... 15.190 Moser v Marsden (1893) 10 RPC 350 ....................................................................................... 9.130 Multisteps Pty Ltd v Source and Sell Pty Ltd (2013) 214 FCR 323 ............................................. 9.760 Munchies Management Pty Ltd v Belperio (1988) 84 ALR 700 ................................................ 12.110 Murray v King (1984) 55 ALR 559 ............................................................................................ 5.110 Musitor BV v Tansing (1994) 29 IPR 203 ................................................................................. 13.640 Mustad (O) & Son v Dosen [1964] 1 WLR 109; [1963] 3 All ER 416 ........................................ 15.150 My Kinda Bones [1984] FSR 289 ............................................................................................. 12.210 My Kinda Town Ltd v Soll (1983) RPC 15 ............................................................................... 12.110 Mölnlycke AB v Procter & Gamble Ltd [1992] FSR 549 ........................................................... 10.110

N NP Generations Pty Ltd v Feneley (2001) 52 IPR 563 ................................................................ 15.40 NSI Dental Pty Ltd v University of Melbourne (2006) 69 IPR 542 .............................................. 9.680 NV Philips Gloeilampenfabricken v Mirabella International Pty Ltd (1995) 183 CLR 655; 32 IPR 449 ................................................................................................................................ 9.140 NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513; 44 FCR 239 .............................................................................................. 9.60, 9.150, 9.870, 10.240 NV Philips’ Gloeilampenfabrieken Application (1954) 71 RPC 192 ............................................ 9.200 NZ Olympic and Commonwealth Games Association v Telecom NZ (1996) 35 IPR 55 ............. 12.10 National Biscuit Co’s Application, Re [1902] 1 Ch 783; 19 RPC 281 ........................................ 13.390 National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 61 IPR 420 .............................................................................................................................. 12.230 National Phonograph Co of Australia v Menck [1911] AC 336 ................................................ 11.120 National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 ........................................... 9.30, 9.40, 9.50, 9.60, 9.130, 9.180, 9.190, 9.430, 9.440, 9.450 National Surgical Pty Ltd v McPhee [2010] FCA 992; 87 IPR 602 ...... 15.40, 15.330, 15.340, 15.380, 15.400 Native Guano Co v Sewage Manure Co (1889) 8 RPC 125 ....................................................... 12.60 Nature’s Blend Pty Ltd v Nestle Australia Ltd [2010] FCA 198 ................................................. 13.330 Nature’s Blend Pty Ltd (ACN 126 406 488) v Nestle Australia Ltd (2010) 272 ALR 487 ........... 13.680 Neilson v Minister of Public Works (NSW) (1914) 18 CLR 423 .................................................. 9.180 Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 ............................. 9.870, 10.240 Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ............................ 13.530 Network Ten Pty Ltd v TCN Channel Nine [2004] HCA 14; (2004) 59 IPR 1 ......... 1.70, 4.440, 4.450, 6.30, 6.220, 7.20, 7.30, 7.40 Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2005] HCA Trans 842 ................................. 6.240 New England Biolabs, Inc v H Hoffmann-La Roche AG (2005) 63 IPR 524; [2004] FCA 1651 .... 10.160 New England Country Homes Pty Ltd v Moore (1998) 45 IPR 186 ........................................... 4.320 New South Wales Dairy Corporation v Murray-Goulburn Co-operative Co Ltd (1989) 86 ALR 549 .................................................................................................................................... 13.760 New South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1990) 171 CLR 363 ......................................................................................................... 13.530, 13.550 New York University v Nissin Molecular Biology Institute Inc (1994) 29 IPR 173 ...................... 11.130 New Zealand Post Ltd v Leng [1999] 3 NZLR 219 .................................................................. 13.630 Newall & Elliot, Re (1858) 4 CB (NS) 269; 140 ER 1087 ........................................................... 9.590 Newbery v James (1817) 35 ER 1011 ........................................................................................ 15.50 Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545; 91 ALR 513 ........ 9.500, 9.570, 10.240, 11.60, 11.70 xxiii

Intellectual Property: Commentary and Materials

Nichols v Universal Pictures Corporation 45 F (2d) 119 (1930) ................................................. 6.110 Nigel Louez Graphic Design Pty Ltd, Application by (1989) 15 IPR 570 .................................... 14.70 Nine Network Australia Pty Ltd v Australian Broadcasting Corporation (1999) 48 IPR 333 ........ 4.210, 6.420 Nintendo Co Ltd v Centronics Systems Pty Ltd (1991) 23 IPR 119 ............................................ 4.520 Nintendo Co Ltd v Centronics Systems Pty Ltd (1994) 28 IPR 431 ............................................ 4.520 No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 ........................................ 10.70, 10.80 Nodoz Trade Mark, Re [1962] RPC 1 ......................................................................... 13.760, 13.770 Noel Leeming Television Ltd v Noel’s Appliance Centre Ltd (1985) 5 IPR 249 ........................... 12.90 Nomad v Heyring [1992] APO 15 ........................................................................................... 10.280 Nora Beloff v Pressdram Ltd [1973] 1 All ER 273 ....................................................................... 5.160 Norbert Steinhardt & Son Limited v Meth (1961) 105 CLR 440 ............................................. 13.630 Nordenfelt v Maxim Nordenfelt Guns & Ammunition Co Ltd [1894] AC 535 .......................... 15.400 Northern Territory v Collins (2008) 235 CLR 619 ....................................................... 11.180, 11.200 Norwich Pharmacal Co v Commissioners of Customs & Excise [1974] AC 133 ....................... 15.240 NutraSweet Australia Pty Ltd v Ajinomoto Co Inc (2005) 67 IPR 381 ......................................... 9.680

O O’Brien v Komesaroff (1982) 41 ALR 255 ....................................................................... 4.170, 5.110 Occupational and Medical Innovations Ltd v Retractable Technologies Inc (2007) 73 IPR 312 .................................................................................................................................... 11.410 Oceanroutes (Australia) Pty Ltd v M C Lamond (1984) AIPC 90-134 ......................................... 5.160 Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43 ............................................................... 9.870 Olin Chemical Pty Ltd v Pace Chemical & Swimming Pool Equipment Pty Ltd (unreported, Supreme Court, NSW, Needham J, 22 December 1978) .................................................... 12.210 Olin Corp v Super Cartridge Co Pty Ltd (1977) 51 ALJR 525; 14 ALR 149; 180 CLR 236 ........ 10.330, 11.30, 11.70 Olin Corporation v Super Cartridge Co Pty Ltd (1975) 49 ALJR 135 ........................................ 10.330 Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 ..................... 9.700 Organon Laboratories Ltd’s Application [1970] RPC 574 ........................................................... 9.370 Orkin Exterminating Co Inc v Pestco Co of Canada Ltd (1985) 19 DLR (4th) 90 ..................... 12.210 Otto v Linford (1882) 46 LT 35 ................................................................................................. 9.180 Oxford University Press v Registrar of Trade Marks (1990) 24 FCR 1 ....................................... 13.440 Ozi-Soft Pty Ltd v Wong (1988) 10 IPR 520 ................................................................... 5.430, 5.440 Ozi-Soft Pty Ltd v Wong (1988) 12 IPR 487 .............................................................................. 5.430

P PAKI Logistics GmbH v OHIM (General Court of the European Union) .................................... 13.500 Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553; 14 IPR 398 .............. 11.240, 12.80, 12.310, 12.320 Pacific Film Laboratories Pty Ltd v Commissioner of Taxation [1970] HCA 36; (1970) 121 CLR 154 ......................................................................................... 3.50, 3.60, 3.70, 3.90, 15.420 Pacific Publications Pty Ltd v IPC Media Pty Ltd (2003) 57 IPR 28 ........................................... 13.520 Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 ..................................................... 9.350 Palser v Grinling [1948] AC 291 ................................................................................................ 13.70 Parish v World Series Cricket Pty Ltd (1977) 16 ALR 172 ......................................................... 12.140 Parison Fabrics Ltd’s Application (1949) 66 RPC 217 .............................................................. 13.360 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191; 42 ALR 1 ............ 1.100, 1.110, 1.120, 12.50, 12.80, 12.100, 12.110, 12.120, 12.130, 12.140, 12.160, 14.310 Parker Knoll Ltd v Knoll International Ltd [1962] RPC 265 ....................................................... 12.210 Parker and Son (Reading) Ltd v Parker [1965] RPC 323 .......................................................... 12.210 Parkington & Co Ltd’s Application, In Re (1946) 63 RPC 171 ................................................. 13.530 Patent Gesellschaft AG v Saudi Livestock Transport & Trading Co (1996) 33 IPR 426 .............. 10.240 Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1996) 33 IPR 426 ............. 9.820 Patents, Commissioner of v Emperor Sports Pty Ltd (2006) 149 FCR 386 ................................. 9.660 Patents, Commissioner of v Lee (1913) 16 CLR 138 .................................................................. 9.390 Patents, Commissioner of v Microcell Ltd (1959) 102 CLR 232 ...................................... 9.120, 9.130 Patents, Commissioner of v RPL Central Pty Ltd [2015] FCAFC 177 ............................... 9.420, 9.440 xxiv

Table of Cases

Paul’s Retail Pty Ltd v Lonsdale Australia Ltd [2012] FCAFC 130 ................................. 13.690, 13.720 Paul’s Retail Pty Ltd v Sporte Leisure Pty Ltd (2012) 202 FCR 286; [2012] FCAFC 51 .............. 13.720 Payton & Co Ltd. v Snelling, Lampard & Co Ltd (1899) 17 RPC 48 .......................................... 12.40 Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 33 IPR 161 ...................................... 12.115 Performing Right Society v Harlequin Record Shops [1979] FSR 233 ......................................... 6.160 Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 ............................. 7.270 Perry v Truefitt (1842) 6 Beav 66; 49 ER 749 ................................................................. 12.10, 12.60 Pessers and Moody v Haydon & Co (1909) 26 RPC 58 .................................................... 9.90, 9.100 Peter Hanlon’s Application [2011] ATMO 45 ........................................................................... 13.500 Pfizer v Ministry of Health [1965] AC 512; [1965] RPC 261 ........................... 11.130, 11.120, 11.150 Pfizer Inc v Commissioner of Patents [2004] NZCA 104; (2004) 60 IPR 624 ................................ 9.80 Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 68 IPR 1 ..................... 9.680, 10.150, 10.160 Pharmacia Corp v Merck & Co Inc [2002] RPC 775 .................................................................. 9.700 Philippart v William Whiteley Ltd [1908] 2 Ch 274 .................................................................. 13.390 Philips Electronics BV v Remington Consumer Products [1998] RPC 283 ................................... 13.20 Philmac Pty Ltd v Registrar of Trade Marks (2002) 126 FCR 525 ............................................. 13.470 Phipps v Boardman [1967] 2 AC 46 ............................................................................................ 3.70 Phonographic Performance Company of Australia Ltd [2010] ACopyT 1 ................................... 5.390 Photocure ASA v Queen’s University at Kingston (2005) 216 ALR 41; 64 IPR 314; [2005] FCA 344 ................................................................................................... 9.680, 10.160, 11.70, 11.80 Pianotist Company Ltd’s Application (1906) 23 RPC 774 ........................................................ 13.520 Pinefair Pty Ltd v Bedford Industries Rehabilitation Assoc Inc (1998) 87 FCR 458 ....... 11.130, 11.150 Pink v J A Sharwood & Co Ltd (1913) 30 RPC 725 .................................................................. 12.310 Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd [1979] RPC 410 ....................................... 13.640 Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670; [1977] HCA 56 ...... 13.760 Pirrie v York Street Flax Spinning Co Ltd (1894) 11 RPC 429 ..................................................... 9.130 Plix Products Ltd v Frank M Winstone (Merchants Ltd) (1984) 3 IPR ......................................... 3.100 Polaroid Corp v Hannaford & Burton Ltd [1974] 1 NZLR 368 ................................................. 12.250 Pollard v Photographic Co (1888) 40 Ch D 348 ..................................................................... 15.170 Polo/Lauren Co LP v Ziliani Holdings Pty Ltd (2008) 80 IPR 531 ............................................... 4.530 Polwood Pty Ltd v Foxworth Pty Ltd (2008) 165 FCR 527; 75 IPR 1 ........................................ 11.450 Populin v HB Nominees Pty Ltd (1982) 41 ALR 471; 59 FLR 37 ......................... 10.240, 11.30, 11.80 Postum, In re [1906] Board of Trade ....................................................................................... 13.500 Powell v Glow Zone Products Pty Ltd (1996) 36 IPR 343 ........................................................ 13.640 Pracdes Pty Ltd v Stanilite Electronics Pty Ltd (1995) 35 IPR 259 ............................................... 9.870 Prebble v Reeves [1910] VR 88 ............................................................................................... 15.190 Prestige Group (Australia) Pty Limited v Dart Industries Inc . (1990) 26 FCR 197 ........................ 9.60 Primary Health Care Ltd v Commissioner of Taxation [2010] FCA 419 ......... 3.80, 3.90, 5.110, 5.120 Primary Health Care Ltd v Commonwealth [2016] FCA 313 ......................... 13.290, 13.300, 13.510 Prince Albert v Strange (1849) 1 N & T 1 ............................................................................... 15.170 Prince Albert v Strange (1849) 2 De G & Sm 652; 64 ER 293 .......... 15.100, 15.190, 15.240, 15.290 Prince Albert v Strange (1849) 47 ER 1302 ............................................................................... 15.10 Prince PLC v Prince Sports Group Inc (1997) 39 IPR 225 ......................................................... 11.410 Print Investments Pty Ltd v Art-vue Printing Pty Ltd (1983) 1 IPR 149 ........... 15.120, 15.180, 15.260 Printers & Finishers Ltd v Holloway [1964] 3 All ER 731; [1965] RPC 239 ..... 15.120, 15.150, 15.180, 15.190, 15.260 Prior v Lansdowne Press Pty Ltd [1977] VR 65; (1975) 12 ALR 685 ....................... 5.90, 5.100, 6.470 Pro-Football, Inc v Blackhorse 112 F Supp 3d 439 .................................................................. 13.500 Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179 ............................ 9.760 Pugh v Riley Cycle Co Ltd [1912] 1 Ch 613 .............................................................................. 14.40

Q Quigley & Co Inc’s Application (1973) 43 AOJP 3375; [1977] FSR 373 ..................................... 9.390

R R v Wheeler (1819) 2 B & Ald 345; 106 ER 392 .......................................................................... 9.40 R & C Products Pty Limited v S C Johnson & Sons Pty Limited (1993) 42 FCR 188 ................... 12.80 xxv

Intellectual Property: Commentary and Materials

R Johnston & Co v Archibald Orr Ewing & Co (1882) 7 App Cas 219 ..................................... 12.440 RA Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 6 IPR 279 ......................................................... 5.430 RCA Corp v John Fairfax & Sons Ltd (1981) 52 FLR 71 ............................................................ 11.170 RD Werner v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 ......................................... 9.690 RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513; 25 FCR 565 ........ 9.60, 9.150, 11.270 REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 .................................................................. 13.650 RJ Lea Ltd [1913] 1 Ch 446; (1913) 30 RPC 216 ..................................................................... 13.310 Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 ....................................................... 11.30 Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448 .......................................................... 13.520 Ramsay v Master Locksmiths Association of Australasia Ltd (2004) 64 IPR 94 ............................ 14.70 Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR 481 ....... 11.220, 11.240 Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (2008) 77 IPR 449 ......................... 9.860, 9.870 Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC (No 2) (2006) 71 IPR 46 ................ 9.680 Rank Film Production Ltd v Dodds (1983) 2 IPR 113 ................................................................. 6.160 Ranks Hovis McDougall’s Application (1976) 46 AOJP 3915 ........................................... 9.210, 9.230 Rantzen’s Application, Re (1946) 64 RPC 63 ............................................................................... 9.40 Re International Business Machines Corporation v Commissioner of Patents [1991] FCA 625 .... 9.410 Re Press-Form Pty Ltd and Kelrit Investments Pty Ltd v Henderson’s Ltd [1993] FCA 46 .......... 14.305 Re Taco Bell Pty Limited v Taco Company of Australia Inc (1981) 60 FLR 60 ............................ 12.180 Rebeschini v Miles Laboratories (Aust) Ltd (1982) 1 IPR 159 ..................................................... 5.110 Reckitt & Colman (Aust) Ltd v Boden (1945) 70 CLR 84 ......................................................... 13.490 Reckitt & Colman Ltd v Borden Inc & Ors [1990] RPC 341; [1990] 1 All ER 873; [1990] 1 WLR 491; (1990) 17 IPR 1 ........................................................................... 12.40, 12.50, 12.210 Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd [2001] FCA 1228 ........................ 12.115 Reddaway v Banham [1896] 65 LJ QB 381; [1896] AC 199 ......... 12.20, 12.30, 12.40, 12.60, 12.440 Rediffusion Simulation Ltd v Link-Miles Ltd [1993] FSR 369 .................................................... 10.150 Redrock Holdings Pty Ltd & Hotline Communications Ltd v Adam Hinkley (2001) 50 IPR 565 ................................................................................................................ 5.160, 5.200, 5.210 Registered Trade Mark “Yanx”, Re; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 ............................................................................................. 12.140, 13.180, 13.210, 13.510 Registered Trade Marks of John Batt & Co, Re [1898] 2 Ch 432; [1899] AC 428 ..................... 13.180 Registrar for Trade Marks v Woolworths (1999) 45 IPR 411; 93 FCR 365 ...... 13.240, 13.510, 13.520, 13.650 Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 ................................... 13.310, 13.440 Registrar of Trade Marks, The v Muller (1980) 144 CLR 37 ..................................................... 13.440 Rehm Pty Ltd v Webster’s Security Systems (International) Pty Ltd (1988) 81 ALR 79; 11 IPR 289 ................................................................................................. 9.870, 10.320, 10.330, 11.70 Reid & Sigrist Ltd v Moss & Mechanism Ltd (1932) 49 RPC 461 ................................ 15.190, 15.370 Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205; 25 IPR 119 ....... 9.320, 9.850, 9.860, 10.150, 11.180, 11.200 Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 ............................ 9.420, 9.440 Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588; (2008) 173 FCR 450; (2008) 79 IPR 214; [2008] AIPC 92-319 ................................................................ 14.140, 14.150 Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589; (2008) 79 IPR 236 ..... 14.140 Reynolds v Herbert Smith (1902) 20 RPC 123 .......................................................................... 9.180 Riviera Leisurewear Pty Ltd v J Hepworth & Son Plc (1987) 9 IPR 305 ..................................... 13.190 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 .............................. 7.330, 7.340 Roadshow Films Pty Ltd v iiNet Ltd [2011] FCAFC 23; (2011) 89 IPR 1 ..... 7.10, 7.250, 7.260, 7.270, 7.280 Roadshow Films Pty Ltd v iiNet Ltd [2012] HCA 16 ............................................... 7.10, 7.280, 7.290 Roadshow Films Pty Ltd v iiNet Ltd (No 3) (2010) 83 IPR 430 ....................................... 7.250, 7.260 Robb v Green [1895] 2 QB 315; [1895-99] All ER Rep 1053 ............. 15.40, 15.180, 15.190, 15.240, 15.370 Robin Ray v Classic FM plc [1998] FSR 622 ............................................................................. 11.440 Roger Bullivant v Ellis [1978] FSR 172 ....................................................................................... 15.40 Rolls Royce Ltd’s Application [1963] RPC 251 ............................................................................. 9.80 “Roman Holiday” Trade Mark [1964] RPC 129 ....................................................................... 13.510 Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 ..................................................... 9.870 xxvi

Table of Cases

Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 177 ALR 231; 49 IPR 225 .................................................................................. 7.210, 9.680, 11.70, 11.80 Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 .............. 10.240 Royal Children’s Hospital, The v Robert Alexander [2011] APO 94 ............................................. 5.190

S S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 ......... 12.100, 12.130, 12.310 SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ........................................... 13.220 Sabre v Amadeus Global Travel [2004] APO 21 ....................................................................... 10.280 Saccharin Corp v Anglo-Continental Chemical Works Ltd (1900) 17 RPC 307 ........... 11.130, 11.140, 11.150, 11.160 Saccharin Corp Ltd v Chemicals & Drugs Co Ltd (1900) 17 RPC 28 ......................................... 9.390 Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 65 IPR 605 .......................... 11.60, 11.70, 11.80 Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120 .............. 4.530, 14.90, 14.110 Salter’s Application, Re (1923) 40 RPC 402 ............................................................................. 13.390 Saltman Engineering Co v Campbell Engineering Co (1948) 65 RPC 203; [1963] 3 All ER 413 ....................................................................... 15.60, 15.90, 15.150, 15.180, 15.240, 15.310 Samuel Reitzman v Grahame-Chapman & Derusuit Ltd (1950) 68 RPC 25 ................................. 9.40 Samuelson v Producers Distributing Co Ltd (1932) 48 RPC 580 ............................................. 12.400 Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2016] FCA 236 .................................................................................................................. 9.870, 11.220 Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994-1995) 30 IPR 479 ......................... 10.240 Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 ...................................... 12.160, 13.600 Scandinavian Tobacco Group Eersel BC v Trojan Trading Company Pty Ltd [2016] FCAFC 91 ...................................................................................................................................... 13.720 Schering Biotech Corp’s Application [1993] RPC 249 ............................................................. 10.340 Schering Chemicals Ltd v Falkman Ltd [1981] 2 WLR 848 ...................................................... 15.440 Schott Musik International GMBH v Colossal Records (1996) 36 IPR 267 .................................. 4.220 Schroeder Music Publishing Co Ltd v Macauley [1974] 1 WLR 1308 ......................................... 5.290 Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85 .............................................................. 4.530 Seager v Copydex Ltd [1967] 1 WLR 923; [1967] RPC 349 ............... 15.60, 15.260, 15.270, 15.280, 15.300, 15.320, 15.310 Searle (GD) v Commissioner of Patents (1987) 8 IPR 376 ......................................................... 9.870 See Universal Music & Ors v Australian Competition and Consumer Commission [2003] FCAFC 193 .......................................................................................................................... 5.450 Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1996) 35 IPR 161 .............................. 4.510, 4.520 Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1998) 39 IPR 577 ......................................... 5.320 Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd [2005] FCAFC 144; (2005) ALR 569 ........................................................................................................... 5.80, 5.160, 5.310 Seven Up Co v OT Ltd (1947) 75 CLR 203 ................................................... 13.180, 13.190, 13.210 Shanton Apparel Ltd v Thornton Hall Manufacturing Ltd (1989) 17 IPR 311 ............................. 6.250 Sharwood v Fuddruckers Inc (1989) 15 IPR 188 ..................................................................... 13.440 Sheldon & Hammond Pty Ltd v Metrokane Inc (2004) 135 FCR 34 .......................................... 4.540 Shell Co of Australia v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 ...... 13.210, 13.620, 13.640, 13.650 Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 ................... 13.180, 13.200, 13.220 Shell Refining Co’s Patent, Re [1960] RPC 35 ............................................................................ 9.600 Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC 202 .................. 12.100, 12.210 Sibley v Grosvenor (1916) 21 CLR 469 ................................................................................... 11.240 Siddons Pty Ltd v Stanley Works Pty Ltd (1991) 29 FCR 14 ..................................................... 12.160 Sir Titus Salt Co’s case [1894] 3 Ch 166 .................................................................................. 13.340 Sirdar Rubber Co Ltd v Wallington Weston (1907) 24 RPC 539 ............................................... 11.110 Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331 ............... 13.80, 13.190 Smith Kline & French Laboratories Ltd v Attorney-General (NZ) (1991) 22 IPR 143 ................ 11.130 Smith Kline & French Laboratories Ltd v Attorney-General [1989] 1 NZLR 385 ....................... 15.280 Smith Kline & French Laboratories Ltd v Attorney-General (New Zealand) [1991] 2 NZLR 560 .................................................................................................................................... 11.150 Smith Kline & French Laboratories Ltd, Re [1989] 2 WLR 397 ................................................. 15.280 xxvii

Intellectual Property: Commentary and Materials

Smith Kline and French Laboratories (Aust) Ltd v Secretary, Department of Community Services and Health (1990) 17 IPR 545; (1990) 22 FCR 73 ............. 3.70, 15.110, 15.280, 15.410, 15.430, 15.450 Smith Kline and French Laboratories (Aust) Ltd v Secretary, Department of Community Services and Health (1991) 20 IPR 643 ................................................................. 15.270, 15.280 Smith Kline and French Laboratories (Australia) Limited v Registrar of Trade Marks (1967) 116 CLR 628 ...................................................................................................................... 13.440 Snoid v Handley (1981) 38 ALR 383 ....................................................................................... 12.160 Soares v Australian Postal Corporation [2016] ATMO 10 ......................................................... 13.170 Solar Thompson Engineering Co Ltd v Barton [1977] RPC 537 ............................................... 11.110 Solio Case [1898] AC 571 ....................................................................................................... 13.420 Sony Corporation of America v Universal City Studios Inc 464 US 417 (1984) .......................... 7.170 Sony Kabushiki Kaisha, Re (1987) 9 IPR 466 ........................................................................... 13.400 South Wales Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1990) 171 CLR 363 ............................................................................................................................. 13.540 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 ............. 13.165, 13.490, 13.520, 13.530, 13.650 Southorn v Reynolds (1865) 12 LT 75 ....................................................................................... 12.60 Spalding’s Case (1915) 84 LJ Ch 449 ........................................................................................ 12.60 Speed Seal Products Ltd v Paddington [1986] 1 All ER 91 ............................................ 15.60, 15.300 Sporoptic Pouilloux SA v Arnet Optic Illusions Inc (1995) 32 IPR 430 ...................................... 13.520 Sports Café Ltd v Registrar of Trade Marks (1999) 42 IPR 552 ................................................. 13.520 Stack v Brisbane City Council (1995) 32 IPR 69 ...................................................................... 11.370 Stack v Brisbane City Council (1999) 47 IPR 525 ...................................................................... 10.70 Standard Cameras Ltd’s Application (1952) 69 RPC 125 ......................................................... 13.380 Stannard v Reay [1967] FSR 140 ............................................................................................. 12.290 Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71; (1996) 66 FCR 577 ......... 9.510, 10.240 Star Industrial Co Ltd v Yap Kwee Kor (tlas New Star Industrial Co) [1976] 2 FSR 256 ............ 12.210, 12.310 Star Micronics Pty Ltd v Five Star Computers Pty Ltd (t/as Computerfair) (1990) 18 IPR 225 .................................................................................................................................... 12.410 Starbucks (HK) Ltd v British Sky Broadcasting Group plc (No 2) [2015] 3 All ER 469; [2015] UKSC 31; [2015] 1 WLR 2628 ............................................................................................ 12.180 State Street Bank & Trust Co v Signature Financial Group 149 F 3d 1368 (1998) ..................... 9.430 State for Immigration and Ethnic Affairs, Minister of v Teoh (1995) 183 CLR 273 ...................... 2.120 Stauffer Chemical Company’s Application, Re (1977) RPC 33 ................................................. 10.320 Stephenson, Jordan & Harrison Ltd v McDonald [1952] 69 RPC 10 ............................. 5.160, 15.260 Sterling Engineering Co Ltd v Patchet [1955] AC 534 ............................................................. 11.440 Stevens v Kabushiki Kaisha Sony Computer Entertainment [2005] HCA 58; (2005) 65 IPR 513 ..................................................................................... 3.30, 6.280, 7.10, 7.90, 7.110, 7.140 Stevenson Jordan & Harrison v McDonald & Evans [1952] 1 TLR 101 ..................................... 15.180 Stork Restaurant Inc v Sahati 166 F 2d 348 ............................................................................. 12.210 Stovin-Bradford v Volpoint Properties Ltd [1971] Ch 1007 ........................................................ 5.110 Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd (2014) 110 IPR 82 ............................ 9.760, 9.870 Sun World International Inc v Registrar, Plant Breeder’s Rights (1997) 39 IPR 161 ..................... 16.10 Sun World International Inc v Registrar, Plant Breeder’s Rights [1998] FCA 1260 ....................... 16.10 Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd (1961) 180 CLR 98 ............................ 9.510 Suyen Corporation v Americana International Ltd [2010] FCA 638; (2010) 187 FCR 169 ........ 13.170 Sydney Cellulose Pty Ltd v Ceil Comfort Home Insulation Pty Ltd (2002) 53 IPR 359 .............. 11.420 Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ........... 7.210, 12.115

T TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (2001) 50 IPR 335 ................. 6.370, 6.390, 6.400 TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 65 IPR 571 ...... 6.220, 6.230, 6.240 Taco Bell Pty Ltd v Taco Co of Australia Ltd (1981) 60 FLR 60 ................................................. 12.200 Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 2 TPR 48; 42 ALR 177 ......... 12.90, 12.100, 12.160, 12.200, 12.210 Talbot v General Television [1980] VR 224 ................................................................................ 15.70 Tam, In Re 808 F 3d 1321 ...................................................................................................... 13.500 Tastee Freez’s Application [1960] RPC 255 .............................................................................. 13.440 xxviii

Table of Cases

Tate v Thomas [1921] 1 Ch 503 ............................................................................. 4.190, 5.80, 6.40 Tavenor Rutledge Ltd v Trexapalm Ltd [1977] RPC 275 .......................................................... 12.370 Taverner Rutledge Ltd v Specters Ltd [1959] RPC 355 ............................................................ 13.640 Taxation, Commissioner of v Seven Network Ltd [2016] FCAFC 70 .......................................... 7.320 Taxation, Federal Commissioner of v Seven Network Ltd [2016] FCAFC 70 .............................. 7.320 Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1988) 84 ALR 437 .......................... 12.210 Telstra Corporation Ltd v Australasian Performing Right Association (1997) 38 IPR 294 .... 6.1606.170 Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd (2002) 51 IPR 257 ....................... 7.50 Telstra Corporation Ltd v Phone Directories Co Pty Ltd (2010) 85 IPR 571 .................................. 7.50 Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2010] FCAFC 149; (2010) 90 IPR 1 .... 4.100, 4.110, 7.20 Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2014] FCA 568 ................................. 12.270 Telstra Corporation Ltd v Phone Directories Co Pty Ltd (2015) 237 FCR 388; [2015] FCAFC 156 .................................................................................................................................... 13.290 Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia Ltd (2003) 57 IPR 453 ........ 12.80, 12.90 Tenodi v Blue Mountains City Council [2011] NSWLEC 1183 .................................................. 17.160 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 .................................. 12.160, 12.230 Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd [1960] RPC 128 .................... 15.150, 15.310, 15.320 Terrapin Ltd v Builders Supply Co (Hayes) Ltd [1967] RPC 375 ............................................... 15.300 Terry Yumbulul v Reserve Bank of Australia [1991] FCA 332; (1991) 21 IPR 481 ........................ 17.90 Thai World Import & Export Co Ltd v Shuey Shing Ply Ltd (1989) 17 IPR 289 ......................... 12.310 The Australian Wine Importers Ltd, Re (1889) 41 Ch D 278 .................................................... 13.490 Thomas v Brown and Anor (Aboriginal Flag Case) (1997) 37 IPR 207; [1997] 215 FCA ............. 3.100 Thomas Marshall (Exports) v Guinle [1979] Ch 227 ................................................... 15.120, 15.130 Thomas Marshall (Exports) Ltd v Guinle [1978] 3 All ER 193 ..................................................... 15.40 Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 ................................... 11.220 Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305 ................................... 13.310, 13.420, 13.440 Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 ............................................................ 9.650 Titan Group Pty Ltd v Steriline Manufacturing Pty Ltd (1990) 19 IPR 353 ............................... 15.300 Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ................................... 13.530 Tolkien Estate Ltd v Saltalamacchia [2016] FCA 944 .................................................................... 6.90 Tolmark Homes v Paul (1999) 46 IPR 321 ................................................................................. 4.320 Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 59 IPR 318; [2003] FCA 901 ............................................................................................................................. 13.520 Townsend Controls Pty Ltd v Gilead (1989) 16 IPR 469 ............................................... 9.870, 11.420 Trade Mark “Holly Hobbie”, Re (1984) 1 IPR 486 .......................................................... 13.80, 13.90 Trade Mark “Orlwoola”, Re (1909) 26 RPC 850 ...................................................................... 13.510 Transfield Pty Ltd v Arlo International Ltd (1980) 144 CLR 83 ................................................. 11.490 Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd (1999) 43 IPR 481 ........... 13.710 Tropical Export Nursery v Shade Span Industry [1994] APO 62 ............................................... 10.280 Tullybelton [1979] AC 731 ..................................................................................................... 12.210 Turkovic v Triple Three Leisure Ltd (1993) 27 IPR 430 ............................................................... 13.80 Turner v General Motors (Australia) Pty Ltd [1929] HCA 22; 42 CLR 352 ................... 12.210, 12.440 Turner v Winter (1787) 1 Web PC 82; 99 ER 1274 .................................................................... 9.840 Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451 ........................................................................................................................... 12.80, 12.90 Tye-Sil Corp Ltd v Diversified Products Corp (1991) 20 IPR 574 .............................................. 10.240

U U And I Global Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd (1995) 32 IPR 494 .......... 11.420 US v Bottone 365 F 2d 389 (2nd Circuit 1966) ....................................................................... 15.220 US Surgical Corp v Hospital Products International Pty Ltd [1982] 2 NSWLR 761 ....... 12.110, 15.300 Unilin Beheer v Berry Floor [2004] EWCA (Civ) 1021; [2005] FSR 6 ......................................... 10.350 United Wire Ltd v Screen Repair Services (Scotland) Ltd [2000] 4 All ER 353 ........................... 11.110 Universal Music Australia Pty Ltd v Cooper (2005) 65 IPR 409 ................... 7.10, 7.150, 7.180, 7.190 Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (2005) 65 IPR 289 ..... 7.10, 7.150, 7.200, 7.210, 7.220, 7.230, 7.240 University of British Colombia v Conor Medsystems Inc (2006) 155 FCR 391; 70 IPR 248 ....... 11.460 xxix

Intellectual Property: Commentary and Materials

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 ....... 4.60, 4.70, 4.170 University of New South Wales v Moorhouse (1975) 133 CLR 1; (1975) 6 ALR 193 ...... 6.180, 6.260, 6.270, 11.170 University of Sydney v University of Wollongong (2016) 118 IPR 592; [2016] ATMO 17 ........ 13.290, 13.350 University of Western Australia v Gray (2008) 246 ALR 603; 76 IPR 222 .................................. 11.450 University of Western Australia v Gray (2009) 179 FCR 346; 82 IPR 206 .................................. 11.450 University of Western Australia v Gray [2009] FCAFC 116 .................................. 5.160, 5.170, 15.220 Urban Ventures Pty Ltd v Solitaire Homes Pty Ltd (2010) 90 IPR 289 ........................................ 6.580

V Vacuum Cleaner Parts Dyson Ltd v Quiltex (UK) Ltd (2005) 65 IPR 188 .................................. 14.230 Valensi v British Radio Corporation [1973] RPC 337 .................................................................. 10.70 Van Duzer’s case (1887) 34 Ch D 623 .................................................................................... 13.340 Vax Appliances Ltd v Hoover plc [1991] FSR 307 .................................................................... 10.320 Vehicle Monitoring Systems Pty Ltd v Sarb Management Group Pty Ltd (No 2) (2013) 101 IPR 496 ................................................................................................................................ 9.760 Venables and Anor v News Group Newspapers Ltd and Ors [2001] 1 All ER 908 ............ 15.10, 15.80 Verrocchi v Direct Chemist Outlet Pty Ltd [2015] FCA 234 ...................................................... 13.290 Vickers, Sons Ltd v Siddell (1890) 15 AC 496 ............................................................................ 9.690 Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 ............. 1.10, 4.60, 4.170, 15.170 Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 ................................................ 10.140 Virginia-Carolina Chemical Corp’s Application, Re [1958] RPC 35 ............................................... 9.40 Vokes v Heather (1945) 62 RPC 135 ....................................................................................... 15.190 Vokes Ltd v Heather (1945) 62 RPC 135 ................................................................................. 15.370

W W v Egdell [1990] 2 WLR 471 ................................................................................................. 15.450 W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182; [1956] HCA 15 ............. 13.760 W R Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) 25 IPR 481 ................................ 9.680 WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274 ...................................... 7.270 WEA Records Pty Ltd v Stereo FM Pty Ltd (1983) 1 IPR 6 ............................................................ 5.80 WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2006) 66 IPR 298 .............................. 9.860, 9.870 Wainwright v Home Office [2003] 4 All ER 969 ......................................................................... 15.10 Wake and Commissioner of Patents, Re [2014] AATA 43 .......................................................... 11.450 Walker v Alemite Corp (1933) 49 CLR 643 ............................ 10.240, 11.30, 11.110, 11.200, 11.220 Walter v Lane [1900] AC 539 ............................................................................................. 4.40, 5.80 Ward Group Pty Ltd v Brodie & Stone Plc (2005) 143 FCR 479 ..................... 12.220, 12.410, 13.630 Wardley Australia Ltd v Western Australia (1992) 175 CLR 514 ................................................ 12.110 Warman International v Envirotech Australia Pty Ltd (1986) 6 IPR 578 ............ 14.240, 14.250, 15.60 Warner (George) Laboratories Pty Ltd v Chemspray Pty Ltd (1967) 41 ALJR 75 ......................... 9.500 Washex Machinery Corporation v Roy Burton & Co Pty Ltd (1974) 49 ALJR 12 ............. 9.700, 9.850, 9.860 Waterford Glass Group Ltd, Re (1987) 9 IPR 339 .................................................................... 13.320 Waterlow Publishers Ltd v Rose (1990) 17 IPR 493 .................................................................... 6.110 Weir Pumps Ltd & CML Pumps Ltd v Central Electricity Generating Board (1983) 2 IPR 129 ..... 14.70 Weitmann v Katies Ltd (1977) 29 FLR 336 .............................................................................. 12.160 Weitmann v Katies Ltd [1977] ATPR 40,041 ............................................................................ 12.130 Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 ................................ 9.350, 10.240, 10.330 Welch Perrin Pty Ltd v Worrel (1961) 106 CLR 588 ................................................................... 11.30 Welch Perrin and Co Pty Ltd v Worrell (1961) 106 CLR 588 ...................................................... 9.860 Welcome Real-Time SA v Catuity Inc (2001) 113 FCR 110; 51 IPR 327; [2001] FCA 445 ........... 9.420, 9.430, 11.290, 11.300, 11.310 Weld-Blundell v Stephens [1919] 1 KB 520 ............................................................................. 15.420 Weld-Blundell v Stephens [1920] AC 956 ................................................................................ 15.420 Wellcome Foundation (1981) 148 CLR 262 .............................................................................. 9.700 xxx

Table of Cases

Wellcome Foundation Limited, The v VR Laboratories (Aust) Proprietary Ltd (1981) 148 CLR 262 ...................................................................................................................................... 9.730 Wellcome Foundation Ltd v Commissioner of Patents (1980) 145 CLR 520; 1A IPR 261 ........... 9.360, 9.370 Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd and Others (2004) 61 IPR 242 ...................... 13.680 Wessex Dairies Ltd v Smith [1935] 2 KB 80; [1935] All ER Rep 75 .............................. 15.190, 15.370 Western Australia v Ward (2000) 99 FCR 316 ............................................................................ 17.50 Western Australia v Ward (2002) 213 CLR 1; [2002] HCA 28 ................................................... 17.310 Wheatley v Bell [1982] 2 NSWLR 544 ..................................................................................... 15.260 Wilderman v FW Berk [1924] Ch 116 ...................................................................................... 11.160 William L Dawson v Hinshaw Music Inc (1990) 18 IPR 256 ....................................................... 6.140 Willow Lea Pastoral Co Pty Ltd, Re (1990) 20 IPR 180 ............................................................. 13.320 Wilson v Anderson (2002) 213 CLR 401 .................................................................................... 7.110 Wilson v Broadcasting Corp of New Zealand (1988) 12 IPR 173 ............................................... 15.70 Wilson v Weiss Art Pty Ltd (1995) 31 IPR 423 ................................................................. 5.260, 5.280 Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (1996) 34 IPR 367 .................... 9.870 Windsurfing International Inc v Petit [1984] 2 NSWLR 196; (1984) 73 FLR 224; 3 IPR 449 ...... 11.220 Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 ................................................... 13.770 Wineworths Group Ltd v Comite Interprofessionel Du Vin De Champagne (1991) 23 IPR 435 ...................................................................................................................................... 12.10 Wingate Marketing Pty Ltd v Levi Strauss Pty Ltd (1994) 16 ATPR 41-303; (1994) 49 FCR 89 .... 13.520, 13.640, 13.700, 13.760 Winner v Ammar Holdings Pty Ltd (1993) 25 IPR 273 ............................................................... 9.690 Wolanski’s Registered Design, Re (1953) 88 CLR 278 ............................... 14.10, 14.30, 14.40, 14.70 Wolf Mountain Coal Ltd Partnership v Netherlands Pacific Mining Co Inc (1988) 31 BCLR (2d) 16 .............................................................................................................................. 15.450 Wolverine World Wide, Inc v Khodar Ali Ahmed [2008] ATMO 93 ............................................ 13.500 Wombles Ltd v Womble Skips [1977] RPC 99 .......................................................................... 12.370 Woo-Suk Hwang’s Application [2004] AIPC 92-031 ................................................................... 9.110 Woodbridge Foam Corporation v AFCO Automotive Foam Components Pty Ltd (2002) 58 IPR 56 ................................................................................................................................ 11.260 Woodhouse UK Plc v Architectural Lighting Systems [2006] RPC 1 .......................................... 14.150 Woodward v Hutchins [1977] 1 WLR 760; [1977] 2 All ER 751 ............................................... 15.420 Woollen Mills; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 ...... 13.520 Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166 .............................................. 13.760 Woolworths Ltd v BP plc (2006) 150 FCR 134 ........................................................................ 13.470 Woolworths Ltd v BP plc [2006] FCAFC 132 ........................................................................... 13.470 Woolworths Ltd v Olson (2004) 63 IPR 258 .............................................................................. 15.40 World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181 ......................................................... 12.140 Worsley & Co v Cooper [1939] 1 All ER 290 ........................................................................... 15.240 Worthington Pumping Engine Co v Moore (1902) 20 RPC 41 ................................................ 11.440 Wright v Gasweld Pty Ltd (1990) 20 IPR 481 .......................................................................... 15.180

Y Yalding Manufacturing Co’s Application, Re (1916) 33 RPC 285 ............................................. Yanx case (1951) 82 CLR 199 ................................................................................................. Yates Circuit Foil Co v Electrofoils Ltd [1976] FSR 345 ............................................................. Yorkshire Copper Works case (1954) 71 RPC 150 ....................................................................

13.390 13.180 15.140 13.310

Z Zeccola v Universal City Studios Inc (Jaws Case) (1982) 67 FLR 225; (1982) 46 ALR 189 .......... 3.100, 4.190, 4.200, 4.420, 6.40, 6.110 Zippo Manufacturing Company v Zippo Dot Com Inc 952 F Supp 1119 ................................ 13.630

xxxi

TABLE OF STATUTES s 51(xviii): 1.80, 2.120, 8.100 s 51(xxix): 2.120 s 51(xxxi): 2.220 s 51(v): 2.120 s 51(viii): 13.10 s 53: 13.600 s 116: 17.310

COMMONWEALTH Acts Interpretation Act 1901: 9.460 s 2B: 9.480, 9.500 s 13: 13.260 Acts Interpretation Amendment Act 2011: 13.260

Competition and Consumer Act 2010: 1.100, 5.290, 5.450, 11.500, 12.10, 13.10, 15.10 s 2: 2.120 Pt IV: 11.490, 11.500 Sch 2: 5.290, 11.230, 12.90, 13.650, 13.790

Australian Consumer Law: 5.290, 12.10, 13.10, 13.680 s 18: 2.120, 11.230, 12.10, 12.90, 12.150, 12.170, 12.420, 15.60 s 29: 12.420, 13.790 Sch 2: 15.10

Copyright Act 1905: 2.120 s 4: 4.190

Australian Grape and Wine Authority Act 2013: 12.10, 13.320 s 40C: 12.10 s 40F: 12.10 Pt VIB: 13.320

Copyright Act 1911: 3.110 Copyright Act 1912: 2.120, 3.60, 4.10 s 7: 3.60 s 8: 3.60

Australian Grape and Wine Authority Regulations 1981 Sch 1: 12.10 Sch 2: 12.10 Australian Wine and Brandy Corporation Amendment Act 2010: 2.120 US Free Trade Agreement Implementation Act 2004: 2.120, 2.140, 4.10, 5.40, 5.10, 6.320, 7.60, 7.120, 7.190, 8.130, 9.820 s 116AF: 7.190 s 116AG(1): 7.190 s 116AH: 7.190 s 248(1): 5.10 s 248CA(1): 5.10 s 248CA(3): 5.10 Sch 8, item 5: 8.360 Broadcasting Services Act 1992: 4.30, 6.220 Business Names Registration Act 2011: 13.10 s 28: 13.10 Circuit Layouts Act 1989: 2.120, 4.510, 4.520, 14.160, 14.230, 14.320, 14.420 s 5: 14.330, 14.340, 14.360 s 8: 14.380 s 11: 14.390 s 17: 14.350 Circuit Layouts Regulations 1990 reg 3: 14.340 Commonwealth of Australia Constitution Act: 1.80, 13.600 s 50: 13.600

Copyright Act 1968: 2.120, 2.220, 3.10, 3.40, 3.50, 3.160, 3.180, 3.200, 4.10, 4.20, 4.30, 4.40, 4.60, 4.110, 4.140, 4.170, 4.190, 4.220, 4.240, 4.250, 4.380, 4.410, 4.490, 4.510, 4.520, 4.530, 5.10, 5.20, 5.30, 5.40, 5.80, 5.130, 5.140, 5.240, 5.250, 5.320, 5.370, 5.430, 5.460, 6.260, 6.340, 6.390, 6.450, 6.460, 6.465, 6.620, 7.20, 7.60, 7.70, 7.80, 7.120, 7.140, 7.145, 7.300, 7.320, 7.330, 14.70, 14.230, 14.250, 14.270, 14.310, 14.420, 15.30, 15.340, 17.20, 17.30, 17.40, 17.50, 17.80, 17.110, 17.160 s 8: 3.20, 17.110 s 8A(1): 5.240 s 10: 3.120, 4.470, 4.510, 7.80, 14.230 s 10(1): 3.70, 4.170, 4.190, 4.240, 4.300, 4.320, 4.330, 4.340, 4.350, 4.380, 4.410, 4.420, 4.440, 5.80, 5.90, 5.320, 6.330, 7.80, 7.100, 7.110, 7.140, 7.320 s 10(1)(a): 4.240 s 10(1)(b): 4.240 s 10(3)(c): 6.210 s 10(3)(n): 5.240 s 13: 3.70 s 13(2): 6.10 s 14: 6.70, 7.40 s 14(1): 6.50 s 17: 17.50 s 18: 17.50 s 21: 17.50 s 21(3): 14.230 s 22: 5.80 s 22(1): 4.40

xxxiii

Intellectual Property: Commentary and Materials

Copyright Act 1968 — cont s 22(2): 4.170 s 22(3): 4.40, 4.410 ss 22(3) to (6): 4.40 s 22(4): 5.50 s 22(6): 7.290 s 22(7)(f): 17.40 s 24: 7.320 s 25(4): 7.40 s 27: 6.160 ss 27(1) to (3): 17.210 s 28: 6.160 s 29(1)(e): 4.460 s 31: 3.70, 5.10, 6.150, 7.110 s 31(1): 3.10, 6.120, 6.150 s 31(1)(a): 5.10 s 31(1)(a)(i): 3.70 s 31(1)(a)(vi): 4.380, 4.470 s 31(1)(a)(iii): 6.160 s 31(1)(b): 5.10 s 32: 4.30, 4.120, 4.380 s 32(1): 4.30, 4.60 s 32(2): 4.30 s 32(3): 4.30 s 33(2): 4.500 s 33(3): 4.500 s 33(5): 4.500 s 34(1): 4.500 s 35(2): 5.80 s 35(4): 5.160 s 35(4)(c): 5.140 s 35(4)(d): 5.140 s 35(5): 3.70, 5.130 s 35(6): 3.70, 5.110, 5.160, 5.190, 5.240 s 35(7): 5.130 s 36: 3.70, 6.100 s 36(1): 6.10, 6.20, 6.100 s 36(1A): 6.20, 6.260 ss 36 to 39A: 6.10 s 37: 5.430, 6.10, 6.100, 6.150, 6.180, 6.250 s 37(1): 5.450 ss 37 to 39: 6.20 s 38: 6.10, 6.100, 6.150, 6.250 s 39: 6.20, 6.160 s 39(1): 6.10 s 39A: 6.260 s 39B: 6.320, 7.190 s 40: 5.370, 6.350 s 40(2): 6.330, 6.350 ss 40(3) to (7): 6.360 s 40(5): 6.350 ss 40 to 43: 6.340 s 41: 6.370, 17.50 s 41A: 6.390 ss 41 to 42: 6.330 s 42: 17.50 s 42(1)(b): 6.70 s 42(2): 6.70 s 43: 6.440, 17.50 s 43(1): 3.70 xxxiv

s 43B: 4.40 s 43C: 6.450, 6.460 s 44A: 6.250 s 46: 6.460 s 47A: 6.460 s 47D: 6.460 s 47E: 6.460 s 47F: 6.460 s 47J: 6.450 s 47AA: 6.460 ss 47AB to 47H: 4.380 ss 54 to 64: 5.300 s 65: 6.460 s 66: 4.350, 6.460 s 67: 6.460 s 70: 6.460 s 72: 5.290, 6.460 s 73: 6.460 s 74: 4.530, 14.280 s 74(1): 4.530 ss 74 to 77: 14.270, 14.310 ss 74 to 77A: 4.530 s 75: 4.530, 14.290, 14.310 s 76: 14.290 s 77: 4.530, 6.250, 14.250, 14.300, 14.305, 14.310 s 77(3): 14.310 s 77(4): 4.530 s 80: 4.490 s 84: 17.40 s 85: 4.40, 4.410, 5.10 ss 85 to 88: 4.40, 5.10, 7.110 ss 85 to 89: 5.10 s 86: 4.190, 4.420, 5.10 s 86(c): 7.290 s 87: 4.440, 5.10, 7.40 s 87(a): 7.30, 7.40 s 87(c): 7.30, 7.40 s 88: 4.460, 5.10 ss 89(1) to (3): 4.30 s 90: 4.30, 4.420 s 91: 4.30, 4.440, 6.220, 7.40 s 92: 4.30, 4.460 s 93: 4.500 s 94(1): 4.500 s 94(2): 4.500 s 95: 4.500 s 96: 4.500 s 97(1): 5.80 s 97(2): 5.130 s 97(3): 5.130 ss 97 to 100: 5.80 s 98(1): 5.80 s 98(2): 5.130 s 98(3): 5.130 s 99: 5.80 s 100: 5.80 ss 100A to 104B: 6.10 s 101: 7.40, 7.210, 7.220, 7.250, 7.300, 11.170

Table of Statutes

s 132AC: 6.620 ss 132AC(1): 6.620 s 132AC(3): 6.620 s 132AD: 6.620 ss 132AD to 132AJ: 6.620 s 132AE: 6.620 s 132AF: 6.620 s 132AG: 6.620 s 132AH: 6.620 s 132AI: 6.620 s 132AJ: 6.620 s 132AK: 6.620 s 132AK(2): 6.620 s 132AL: 6.620 s 132AM: 6.620 s 132AN: 6.620 s 132AO: 6.620 s 132AQ: 6.620 ss 132AQ to 132AT: 6.280, 6.620 s 132AR: 6.620 s 132AS: 6.620 ss 132APA to 132APE: 6.620 s 132APC: 6.620 s 132APD: 6.620 s 132APE: 6.620 s 135P: 5.400 s 135ZZB: 5.400 s 176: 4.30 s 176(2): 5.240 ss 176 to 179: 5.240 ss 176 to 183F: 5.240 s 178: 4.30 s 180(1): 4.500 s 180(1)(a): 5.240 s 180(1)(b): 4.490 s 180(2): 4.500 s 180(3): 4.490, 4.500 ss 180 to 181: 5.240 s 181: 4.490, 4.500 s 183(5): 5.250 s 183A(2): 5.250 s 187: 4.30, 4.500 s 188: 4.30 s 188(1): 4.500 s 188(3): 4.500 s 189: 5.40, 5.50 s 190: 5.20 s 193: 5.20 s 195AN: 5.30 s 195AN(3): 5.20 ss 195AO to 195AXL: 6.10 s 195AR: 5.20 s 195AS: 5.20 s 195AW: 5.20 ss 195AW to 195AWA: 5.260 s 195ABD: 5.40 s 195AHB(1): 5.40 s 195AHC(1): 5.40 s 195ANA: 5.30 s 196: 3.50, 5.270

Copyright Act 1968 — cont s 101(1): 6.10, 6.20, 6.100, 7.200, 7.260, 7.270 s 101(1A): 7.190, 7.210, 7.270, 7.280, 7.290, 7.330 s 101(1A)(a): 7.190, 7.290 s 101(1A)(b): 7.290 s 101(1A)(c): 7.190, 7.290 ss 101 to 102: 6.20 ss 101 to 103: 6.210 s 102: 6.10, 6.250 s 103: 6.10, 6.100, 6.250, 7.180 s 103A: 6.370 ss 103A to 103C: 6.340 s 103C: 6.350 s 103C(2): 6.350 s 103AA: 6.390 s 104: 6.440 s 104A: 6.460 ss 104 to 104AL: 6.340 s 105: 6.460 s 106: 6.460 s 107: 6.460 s 108: 6.460 s 109: 6.460 s 109A: 6.450 s 110AA: 6.450 s 111: 6.270, 6.450, 7.140 s 112E: 6.320, 7.190, 7.250, 7.270, 7.290, 7.300 s 115: 5.320, 6.470 s 115(2): 6.480, 6.500, 6.550, 6.580, 6.590, 17.100 s 115(3): 6.480 s 115(4): 5.100, 6.550, 6.580, 11.430 s 115A: 6.470, 7.145, 7.330 s 116: 5.320, 6.480, 6.550 s 116A: 7.80, 7.100, 7.140 s 116A(1): 7.110 s 116A(3): 7.110 s 116A(4): 7.110 s 116A(8): 7.110 ss 116A to 116D: 6.10, 6.280, 7.80 s 116B: 7.80 s 116C: 7.80 s 116D: 7.80 ss 116AA to 116AI: 6.320 ss 116AA to 116AJ: 7.120 ss 116AG to 116AI: 7.260 ss 116AK to 116D: 7.140 ss 117 to 125: 5.300, 5.320 s 119: 6.470 s 119(a): 5.320 s 120(1): 6.470 s 120(2): 6.470 s 132: 7.110 s 132(5B): 7.110 s 132(6A): 7.110 ss 132 to 133A: 7.80 ss 132AC: 6.620 xxxv

Intellectual Property: Commentary and Materials

Copyright Act 1968 — cont s 196(1): 5.270 s 196(2): 5.260, 5.270, 11.460 s 196(2)(b): 5.260 s 196(2)(c): 5.260 s 196(3): 5.270 s 196(4): 5.300 s 197: 5.270 s 197(3): 5.300 s 198: 3.50 s 200AB: 6.460 s 202: 6.630 s 202(1): 6.630 s 202A: 6.630 s 210(1): 4.10 s 248A: 4.30 s 248A(1): 17.40 s 248A(1)(f): 5.40 ss 248G to 248J: 6.10 s 248CA(1): 4.500 s 248CA(3): 4.500 Pt V: 6.620 Pt V, Div 2A: 7.80, 7.110, 7.140 Pt V, Div 2AA: 6.320, 7.120, 7.190 Pt V Div 5: 6.620 Pt IV: 4.140, 4.160, 4.220, 4.400, 5.130, 5.260, 6.210, 6.240, 6.340, 6.460, 7.40 Pt IV, Div 2: 7.40 Pt IX: 5.20, 5.40, 5.50 Pt VI: 5.370 Pt III: 4.140, 4.150, 6.210, 6.340 Pt III, Div 5: 6.260 Pt XIA: 4.190 Copyright Amendment Act 1980: 2.120, 6.260 Copyright Amendment Act 1984: 4.380 Copyright Amendment Act 1989: 2.120, 5.370 Copyright Amendment Act 2006: 2.120, 4.10, 6.390, 6.450, 7.60, 7.140 Copyright Amendment Act (No 1) 1998: 2.120 Copyright Amendment Act (No 2) 1998: 2.120 Copyright Amendment (Computer Programs) Act 1999: 2.120, 4.10, 6.460 Copyright Amendment (Digital Agenda) Act 2000: 2.120, 4.10, 4.440, 6.10, 6.260, 6.280, 6.460, 7.40, 7.60, 7.70, 7.80, 7.100, 7.140 s 3: 7.70, 7.190 Copyright Amendment (Film Directors’ Rights) Act 2005: 2.120, 4.10 Copyright Amendment (Moral Rights) Act 2000: 2.120, 4.10, 5.10, 5.20 ss 193 to195AB: 5.20 s 195AC to AH: 5.20

s 195AI to AW: 5.20 Copyright Amendment (Online Infringement) Act 2015: 2.120, 4.10, 7.60, 7.145, 7.300, 7.330 Copyright Amendment (Parallel Importation) Act 2003: 4.10, 5.450 Copyright Amendment (Re-enactment) Act 1993: 2.120 Copyright (International Protection) Regulations 1969: 4.30 Copyright Legislation Amendment Act 2004: 2.120, 4.10 Copyright Regulations 1969: 4.530 reg 17: 4.530, 14.305 Copyright (World Trade Organization Amendments) Act 1994: 2.120 Corporations Act 2001 s 182: 15.340 s 183: 15.340, 15.390 Crimes Act 1914 s 4AA: 6.620 Criminal Code Ch 9A: 6.620 Design Act 2003: 14.70 Design Regulations 2004 reg 2.01: 14.110 reg 4.06(d): 17.50 Designs Act 1906: 1.110, 2.120, 12.120, 14.10, 14.40, 14.50, 14.90, 14.110, 14.290 s 4: 14.40 s 17: 14.40 s 17(1): 12.120 s 18: 14.70 s 20: 14.120 s 26(2): 14.40 s 28(a): 14.40 Designs Act 2003: 2.120, 2.220, 4.510, 4.530, 14.10, 14.70, 14.160, 14.200, 14.210, 14.230, 14.260, 14.270, 14.290, 14.310, 14.420, 17.40, 17.50 s 5: 14.20, 14.70, 14.200 s 6: 14.20 s 7: 14.50, 14.60 s 10: 14.180 s 13: 14.10, 14.160 s 15(1): 14.80 s 15(2): 14.100, 14.110 s 15(2)(c): 14.110 s 16(1): 14.80 s 16(2): 14.80 s 17: 14.110 s 18: 14.310 xxxvi

Table of Statutes

Major Sporting Events (Indicia and Images) Protection Act 2014: 12.10

Designs Act 2003 — cont s 19: 14.90, 14.120, 14.130, 14.190 s 19(4): 14.140 ss 20 to 61: 14.160 s 29: 14.160 s 43: 14.160, 14.420 s 43(1): 17.50 s 43(1)(a): 17.50 s 46: 14.70, 14.230 s 47: 14.70 s 60: 14.160 s 71: 14.170, 14.180 s 71(4): 14.190 s 72(1): 14.200 s 73(2): 14.210 s 75(1): 14.210 s 75(2): 14.210 s 75(3): 14.210 s 83: 14.210 s 83A: 14.210 s 84: 14.210

Olympic Insignia Protection Act 1987: 14.160 Patent Law Treaty 2000: 8.220 Patent Regulations 1991 Pt 2: 8.190 Sch 5: 8.190 Patents Act 1903: 2.120, 8.100, 8.110, 9.40, 9.150 Patents Act 1907 s 93: 9.40 Patents Act 1949 s 101: 9.40

Designs (Consequential Amendments) Act 2003: 14.270 Designs Regulations 2004: 14.220

Patents Act 1969: 8.120

Environment Protection and Biodiversity Protection Act 1999: 17.200

Patents Act 1977 s 5: 10.350 s 5(2)(a): 10.350

Evidence Act 1995 s 79: 12.250 s 135: 12.270 Federal Trade Commission Act 1914: 12.140 Freedom of Information Act 1982 s 43: 15.200 s 45: 15.200 Income Tax Assessment Act 1936: 15.350 Income Tax Assessment Act 1997 s 373-10(1): 5.120 Intellectual Property Laws Amendment Act 1998: 8.340 Intellectual Property Laws Amendment Act 2006: 2.120, 4.10, 11.290, 11.310, 11.350, 11.430, 11.500 Intellectual Property Laws Amendment Act 2015: 2.120, 4.10 Intellectual Property Laws Amendment (Raising the Bar) Act 2012: 2.120, 4.10, 8.40, 8.130, 8.240, 8.270, 9.640, 9.820, 10.10, 10.40, 10.160, 10.300, 10.340, 11.330, 11.350, 13.240, 13.260 s 9: 9.800 s 40: 10.90 s 102: 10.160

Patents Act 1952: 2.120, 8.120, 9.40, 9.490, 9.500, 9.510, 9.530, 9.700, 11.490 s 6: 9.60 s 40: 10.150 s 40(1)(a): 10.150 ss 40(3) to (7): 10.130 s 100(d): 9.150 s 100(e): 9.150 s 112: 11.490

Patents Act 1990: 2.120, 2.220, 8.10, 8.40, 8.130, 8.150, 8.160, 8.170, 8.190, 8.200, 8.230, 9.40, 9.90, 9.220, 9.380, 9.530, 9.590, 9.640, 10.160, 10.340, 11.10, 11.170, 11.230, 11.290, 11.330, 11.350, 11.470, 14.10, 16.10, 16.220, 17.40, 17.190 s (1A)(a): 8.10 s 1: 9.470 s 40(2(a): 10.40 s 5(2)(a): 10.110 s 6: 8.250, 10.130 s 7: 9.650 s 7(1): 9.460, 9.470, 9.500 s 7(1)(a): 9.510 s 7(1)(b): 9.500, 9.520 s 7(2): 9.610, 9.620, 9.640, 9.650, 9.670, 9.690, 9.710, 9.720, 9.730, 9.740 s 7(3): 9.610, 9.620, 9.640, 9.650, 9.710, 9.730, 9.750 s 7(4): 9.630, 9.750 s 7(5): 9.750 s 7A: 9.820, 9.830 s 7A(3): 9.820 s 9: 9.780, 9.800, 9.810 s 9(a): 9.800 s 9(b): 9.800 s 13: 8.320, 11.10, 11.170, 11.200 s 13(1): 11.170

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Patents Act 1990 — cont s 14(1): 11.460 s 14(2): 11.460 s 15: 8.210, 11.440 s 16(1): 11.440 s 16(2): 11.440 s 17: 8.210, 11.440 s 18: 9.60, 9.140, 9.170 s 18(1): 8.200, 9.20, 9.30, 9.60, 9.120, 17.60 s 18(1)(a): 8.10, 9.320, 9.380, 9.400, 9.430 s 18(1)(b)(i): 9.450, 9.460 s 18(1)(b)(ii): 9.150, 9.450, 9.730 s 18(1)(c): 9.320 s 18(1)(d): 9.770 s 18(1A): 8.200, 9.20, 9.30 s 18(1A)(b)(i): 9.460 s 18(1A)(c): 9.320, 9.760 s 18(2): 9.20, 9.110, 9.210, 9.280, 9.290 s 18(3): 9.20, 9.210 s 18(4): 9.20 s 18(c): 9.820 s 20: 8.360 s 22A: 11.440 s 23: 9.590 s 24: 9.460 s 24(1): 9.590 s 24(1)(a): 9.590 s 24(1)(b): 9.590 s 25: 8.350 s 25(2): 10.80 s 27: 8.330 s 29: 8.240, 11.440 s 29(1): 8.210, 8.220 s 29(2): 8.220 s 29A: 8.230 s 29A(1): 8.230 s 29B: 8.230 s 29B(5): 8.200 s 30: 8.220 s 31: 8.210 s 32: 8.210, 11.440 s 33: 8.210 ss 33 to 36: 11.440 s 34: 8.210 s 35: 8.210 s 36: 8.210 s 40: 8.240, 8.270, 9.230, 9.540, 9.850, 10.10, 10.40, 10.50, 10.100, 10.230, 10.280, 10.290 s 40(1): 10.30, 10.40 s 40(2): 8.310, 8.360, 10.30, 10.120, 10.140, 10.180, 11.260 s 40(2)(a): 8.250, 10.40, 10.80, 10.100, 10.110, 10.130, 10.140, 10.150, 10.300, 10.340, 10.360 s 40(2)(b): 10.170, 10.190 s 40(2)(c): 10.170, 10.190 s 40(3): 8.310, 8.360, 10.170, 10.180, 10.190, 10.210, 10.220, 10.230, xxxviii

10.270, 10.280, 10.300, 10.310, 10.320, 10.330, 10.340, 11.260, 15.30 s 40(4): 10.170 s 40(5): 15.30 s 41: 8.250, 9.230, 10.130 s 42: 8.250, 9.230, 10.130 s 42(2A): 8.200 s 43: 8.200, 9.540 s 43(2): 8.200 s 44(2): 8.260 s 45: 8.260 s 45(1)(b): 9.490, 9.630 s 49: 8.260 s 50: 8.260, 9.30 s 50(1)(a): 9.90, 9.100, 9.110, 9.300 s 50(1)(b): 9.380 s 54: 8.290 s 54(3): 8.290 s 55: 8.290 s 56: 8.290 s 57: 11.10 s 57(1): 8.290 s 57(3): 8.290 s 59: 8.310 s 59(a): 11.440 s 59(b): 9.30, 9.490, 9.630 s 60: 8.310 s 61: 8.320 s 62: 8.290, 8.320 s 62(2): 8.290 s 65: 8.340 s 67: 8.340 s 68: 8.340 s 70: 8.340, 9.320 ss 70 to 79A: 8.340, 11.350 s 72(1)(c): 10.110 s 78(a): 11.350 s 78(b): 11.350 s 80: 8.350 s 81: 8.350 s 81(2): 8.350 s 81(3): 8.350 s 81(4): 8.350 s 83(1): 8.350 s 85: 8.350 s 97: 9.490, 9.630 s 98(b): 9.490, 9.630 s 100(1): 9.850 s 100(1)(g): 9.510 s 101A: 8.300, 9.490 s 101B: 8.300, 9.750 s 101B(2)(b): 9.30, 9.490 ss 101B(2)(d) to (g): 9.30 s 101B(2)(e): 9.380 s 101G: 9.490 s 101G(3)(b): 9.490 s 101M: 8.310, 9.750 s 101M(c): 9.490 s 102: 8.370 s 102(1): 8.370

Table of Statutes

Patents Act 1990 — cont s 102(2): 8.370 s 102(2A): 8.370 s 102(2B): 8.370 s 102(3): 8.370 s 104: 8.370 s 105: 8.370 s 106: 8.370 s 107: 8.370 s 116: 10.240 s 117: 9.290, 11.180, 11.190, 11.200, 11.220 s 117(1): 11.200 s 117(2): 11.200 s 117(2)(a): 11.200 s 117(2)(b): 11.200, 11.210 s 117(2)(c): 11.200 s 118: 11.380 ss 118 to 119C: 11.10 s 119: 11.290, 11.300, 11.310 s 119(1): 11.280, 11.300, 11.310 s 119(1)(b): 11.300 s 119(2): 11.280 s 119(3): 9.590, 11.310 s 119(4): 11.310 s 119A: 9.320 s 119A(1)(a): 11.350 s 119A(1)(b): 11.350 s 119A(2): 11.350 s 119B: 11.350 s 119C: 11.320, 11.330 s 120: 8.300 s 120(1): 11.10 s 120(1A): 11.10 s 120(2): 11.10 s 120(3): 11.10 s 120(4): 11.10 s 121: 8.360, 11.10 s 121A: 11.250 s 122: 11.430 s 123: 11.10, 11.260 s 123(1): 11.390 s 123(2): 11.390 s 123(3): 11.390 s 128: 11.400, 11.410 s 129: 11.400 s 129A: 11.400 s 130: 11.400 s 130(7): 10.350 s 131: 11.400 s 132: 11.400 s 133: 9.320, 11.490 s 133(1): 11.500 s 133(2): 11.500 s 134: 8.360 s 135: 11.500 s 137: 8.360 s 138: 8.300, 8.360, 9.380, 9.750 s 138(3): 11.10 s 138(3)(a): 11.440 s 138(3)(b): 9.30, 9.490, 9.630, 9.820

s 141: 8.220 s 142: 8.260 s 142(2)(e): 8.260 s 143: 11.360 s 144: 11.490 s 144(1): 11.490 s 144(1A): 11.490 s 144(4): 11.490 s 152: 8.290 s 152(1): 8.320 s 163: 11.370 s 165: 11.370 s 173: 8.290 s 173(3): 8.320 ss 187 to 189: 11.470 s 196: 11.460, 11.470 s 200(3): 8.190 s 223(1): 11.360 s 223(2): 11.360 s 223(2A): 11.360 s 223(7): 11.360 s 223(9): 11.360 s 223(10): 11.360 Ch 7: 9.450 Ch 12: 11.500 Ch 15: 8.290 Sch 1: 8.10, 8.170, 8.200, 8.210, 8.280, 9.30, 9.120, 9.460, 9.470, 9.610, 9.620, 9.740, 11.10, 11.140, 11.200, 11.210, 11.410, 11.480 Patents Amendment Act 1978: 8.120 Patents Amendment Act 1979: 8.120 Patents Amendment Act 2001: 2.120, 8.130, 9.490, 9.640 Patents Amendment (Innovation Patents) Act 2000: 2.120, 8.130, 8.180, 9.750 s 198: 8.190 s 200: 8.190 ss 201 to 204: 8.190 Patents Regulations 1991: 8.130, 8.160 reg 4.2(3: 8.290 reg 1.4: 8.200 reg 1.5: 10.130 reg 2.2D: 9.590 regs 2.2 to 2.2C: 9.590 reg 3.1: 8.220 reg 3.1A: 8.210 reg 3.2B: 8.280 reg 3.5: 8.220 reg 3.5A: 8.220 reg 3.12: 9.540 reg 3.15: 8.260 reg 3.16: 8.260 reg 3.16(2): 8.260 reg 4.2: 8.290 reg 4.3: 8.290 reg 5.4: 8.310

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s 43(1)(a): 16.190 s 43(1)(b): 16.190 s 43(1)(e): 16.190 ss 43(1) to (6): 16.60 s 43(2): 16.190 s 43(5): 16.190 s 43(6): 16.190 s 43(8): 16.70 s 44: 16.120, 16.130 s 44(1): 16.140 s 44(2): 16.150 s 45: 16.160 s 53: 16.160 s 54(2)(a): 16.190 s 55: 16.160 s 56: 16.200 s 56(3): 16.200 s 57(1): 16.200 s 57(2): 16.200 s 58: 16.10 s 61: 16.80 s 72: 16.70

Patents Regulations 1991 — cont regs 5.4 to 5.9: 8.310 reg 5.6: 8.310 reg 5.8: 8.310 reg 6.2: 8.320 reg 10.2A: 8.370 reg 10.2B: 8.370 reg 10.2C: 8.370 reg 10.3: 8.370 reg 10.5(2): 8.370 reg 13.4: 8.260 reg 19.1: 11.460 reg 22.21: 11.360 Ch 5: 8.310 Ch 10: 8.370 Pt 2: 10.130 Div 2: 8.200 Sch 3: 8.220 Patents (World Trade Organization Amendments) Act 1994: 8.130 Patents, Designs & Trade Marks Act 1883 s 46: 9.40

Plant Breeder’s Rights Amendment Act 2002: 2.120

Plant Breeder’s Rights Act 1994: 2.120, 9.220, 15.30, 16.10, 16.40, 16.70, 16.80, 16.180, 16.200, 16.220 s 3: 16.20, 16.30, 16.40, 16.220 s 3(1): 16.190 s 4: 16.20 s 5: 16.30 s 5(1): 16.190 s 6: 16.220 s 11: 16.20, 16.160, 16.170 s 12: 16.20 s 13: 16.20 s 14: 16.20 s 15: 16.20 s 16: 16.170 s 17: 16.170 s 18: 16.170 s 19(1): 16.20 s 22: 16.70 s 24: 16.70 s 24(1): 16.190 s 24(3): 16.70 s 24(4): 16.70 s 25: 16.190 s 26: 16.70, 16.80, 16.100, 16.120 s 26(2): 16.80, 16.90, 16.190 s 30: 16.100 s 34: 16.100, 16.120 s 34(1): 16.100 s 34(2): 16.100 s 34(4): 16.100, 16.110 s 35: 16.120 s 37: 16.120 s 39: 16.120 s 43: 16.40, 16.50, 16.70 s 43(1): 16.190

Plant Variety Rights Act 1987: 2.120, 16.10 Privacy Act 1988: 15.210 Prohibition of Human Cloning Act 2002: 9.110, 9.300 s 20: 9.110 Public Interest Disclosure Act 2013: 15.350 Racial Discrimination Act 1975 s 18C: 13.500 Registered Designs Act 1949: 14.250 Resale Royalty Right for Visual Artists Act 2009: 2.120, 5.410, 5.460, 17.40 ss 6 to 11: 5.470 s 11: 5.460 Div 5: 5.410, 5.420 Research Involving Human Embryos Act 2002: 9.300 Restrictive Trade Practices Act 1956: 15.420 Sydney 2000 Games (Indicia and Images) Protection Act 1996: 12.10 Taxation Administration Act 1953 Pt IVC: 3.90, 5.120 Telecommunications Act 1997 s 87: 6.320 Therapeutic Goods Act 1989: 9.320 Tobacco Plain Packaging Act 2011: 2.120, 2.210, 2.220, 13.10 xl

Table of Statutes

Pt IX: 13.550

Trade Mark Regulations 1995 reg 4.15: 13.10 reg 8.2: 13.740 Sch 2: 13.10

Trade Marks Act 1995: 2.120, 2.220, 12.10, 12.220, 13.10, 13.20, 13.190, 13.240, 13.260, 13.320, 13.330, 13.440, 13.480, 13.640, 13.670, 13.720, 17.40, 17.50, 17.280 s 44(3(b): 13.770 s 6: 13.20, 13.120, 13.270, 13.280, 13.620, 13.750 s 6(1): 13.130 s 7: 13.60 s 7(1): 13.60 s 7(3): 13.270, 13.280 s 7(4): 13.760 s 8: 13.60, 13.70, 13.270, 13.280 s 8(3): 13.60 s 8(4): 13.60 s 8(5): 13.60 s 9(1): 13.380 s 10: 13.480, 13.520, 13.590, 13.640 s 14: 13.165 s 17: 13.20, 13.130, 13.330, 13.590, 13.640, 13.760 s 18: 13.10 s 18(1): 13.680 s 19: 13.120 s 20: 13.590 s 21: 13.10 s 22: 13.70 s 23: 13.760 s 24: 13.400, 13.480, 13.740 s 25: 13.740 s 25(1): 13.310 s 26: 13.70, 13.310 s 26(1): 13.70, 13.310 s 26(1)(a): 13.70 s 26(2): 13.310 s 27: 13.180, 13.240 s 27(1): 13.170 s 28: 13.170 s 29: 13.250 s 31: 13.240 s 32: 13.70, 13.180 s 33: 13.240, 13.260, 13.440 s 33(4): 13.240 s 34: 13.240 s 35: 13.240 s 38: 13.740 s 39: 13.240, 13.480, 13.600 s 39(2): 13.10 s 40: 13.240, 13.480 s 41: 13.110, 13.140, 13.240, 13.260, 13.290, 13.300, 13.350, 13.400, 13.440, 13.480 s 41(1): 13.260, 13.280 s 41(2): 13.260, 13.470 s 41(3): 13.260, 13.270, 13.300, 13.470 s 41(4): 13.260, 13.270, 13.290 s 41(5): 13.260, 13.270, 13.300, 13.470

Trade Marks Act 1905: 2.120, 13.140 s 16: 13.110 s 16(1)(c): 13.390 s 16(1)(d): 13.430 s 16(2): 13.420 s 20: 13.110 s 21: 13.110 s 25: 13.490 s 28: 13.550 s 114: 13.500 Pt VII: 13.10 Trade Marks Act 1938: 13.70 Trade Marks Act 1948: 13.550 Trade Marks Act 1955: 13.120, 13.130, 13.140, 13.210, 13.310, 13.320, 13.360, 13.390, 13.540, 13.640, 13.710 s 4: 13.530 s 6(1): 13.210 s 6(3): 13.520 s 9(1)(a): 13.380 s 9(1)(e): 13.380 s 14: 13.140 s 22(1)(b): 13.550 s 23: 13.760 s 24: 13.110, 13.550 s 24(1)(c): 13.550 s 24(d): 13.110 ss 24 to 39: 13.550 s 25: 13.550 s 26(2)(a): 13.420 s 28: 13.480, 13.500, 13.520, 13.530, 13.540, 13.550, 13.560, 17.270 s 28(a): 13.540, 13.550, 13.560 s 28(b): 13.560 s 28(c): 13.560 s 28(d): 13.560 s 33: 13.480 s 34: 13.530, 13.550 s 34(1): 13.530 s 40(1): 13.210 s 41: 13.420 s 58(1): 13.640 s 61: 13.540 s 62(1): 13.640 s 62A: 13.80 ss 73 to 81: 13.550 s 74(4): 13.80 s 82: 13.550 s 88(1)(a): 13.420 Pt 4: 13.530 Pt 4, Div 2: 13.530 Pt 5: 13.530 Pt IV: 13.550 Pt X: 13.550 xli

Intellectual Property: Commentary and Materials

ss 85 to 88: 13.740 ss 85 to 89: 13.740 s 86: 13.740 ss 86 to 88: 13.740 s 87: 13.740 s 87(c): 13.740 s 88: 13.740 s 88(1): 13.740 s 88(2): 13.740 s 88(2)(a): 13.500, 13.560, 13.740 s 88(2)(b): 13.740 s 88(2)(c): 13.540, 13.740 s 88(2)(e): 13.740 s 88A: 13.740 s 89: 13.540, 13.560, 13.740 s 89(1): 13.530, 13.740 s 89(2)(a): 13.740 s 89(2)(b): 13.740 s 92: 13.740, 13.750 s 92(1): 13.750 s 92(3): 13.750 s 92(4): 13.750 s 92(4)(b): 13.760 s 92(4)(b)(ii): 13.760 ss 92 to 105: 13.750 s 94(1)(b)(ii): 13.770 s 100(1)(c): 13.760 s 100(2): 13.770 s 100(3)(a): 13.760 s 100(3)(c): 13.770 s 101(1): 13.750 s 101(2): 13.770 s 101(3): 13.750 s 102: 13.750, 13.770 s 106(1): 13.200 s 114: 13.490 s 120: 13.440, 13.480, 13.590, 13.640 s 120(1): 13.590, 13.650, 13.670 s 120(2): 13.590, 13.640, 13.670 s 120(3): 13.590, 13.640, 13.670 s 120(3)(b): 13.640 s 120(3)(c): 13.640 s 120(4): 13.590 s 122: 13.610 s 122(1): 13.650, 13.680 s 122(1)(a): 13.670, 13.680 s 122(1)(a)(i): 13.650, 13.680 s 122(1)(b): 13.670 s 122(1)(b)(i): 13.650 s 122(1)(c): 13.670 s 122(1)(d): 13.670 s 122(1)(e): 13.670 s 122(1)(f): 13.670 s 122(1)(g): 13.670 s 122(1)(fa): 13.670 s 122(2): 13.670 ss 122 to 124: 13.670 s 123: 13.670, 13.690, 13.710, 13.720 s 123(1): 13.710 s 124: 13.510, 13.670

Trade Marks Act 1995 — cont s 41(6): 13.260, 13.290, 13.300, 13.350, 13.470 s 41(b): 13.550 s 42: 13.10, 13.240, 13.300, 13.350, 13.480, 13.500 s 42(a): 13.500, 17.50 s 42(b): 13.500, 13.570 s 43: 13.240, 13.300, 13.350, 13.480, 13.490, 13.510, 13.580 s 44: 13.165, 13.240, 13.480, 13.490, 13.510, 13.520, 13.530, 13.550, 13.570 s 44(1): 13.510, 13.530 s 44(1)(a)(i): 13.520 s 44(2): 13.510 s 44(3): 13.510, 13.530 s 44(4): 13.510 s 50: 13.600 s 52: 13.240 s 52A: 13.240 s 53: 13.600 s 54A(2): 13.240 s 56: 13.530 ss 56 to 8: 13.260 s 57: 13.240, 13.500, 13.530 s 58: 13.170, 13.220, 13.240, 13.570, 13.740 s 58(3): 13.550 s 58A: 13.240, 13.510 ss 58 to 62: 13.530 s 59: 13.170, 13.240, 13.570, 13.750 s 60: 13.240, 13.350, 13.480, 13.490, 13.510, 13.520, 13.530, 13.570, 13.580 s 60(a): 13.530 s 60(b): 13.530 s 61: 13.240, 13.320, 13.480 s 62: 13.240 s 62A: 13.100, 13.140, 13.170, 13.190, 13.240, 13.480, 13.570, 13.580 s 64: 13.340 s 65: 13.470 s 72: 13.180, 13.200, 13.240 s 75: 13.240 s 75(2): 13.240 s 77: 13.240 s 78: 13.740 s 79: 13.240 s 81: 13.740 s 82: 13.740 s 83: 13.740 s 84: 13.740 s 84A: 13.740 s 84A(2): 13.740 s 84A(3): 13.740 s 84A(4): 13.740 s 84B: 13.740 s 84D: 13.740 s 85: 13.740 xlii

Table of Statutes

Trade Marks Act 1995 — cont s 126: 13.730, 13.740 s 126(2): 13.730 s 127: 13.730 s 128: 13.670 s 129: 13.730 s 137(4): 13.640 s 148(1): 13.730 s 162: 13.780 s 164: 13.780 s 166: 13.780 s 173: 13.790 s 175: 13.790 ss 175 to 181: 13.790 s 185: 13.800 s 190: 13.750 s 192(1): 13.750 s 192(3): 13.750 s 207: 13.140 s 234: 13.560 s 234(2): 13.540 s 234(d): 13.540 Pt 9: 13.750 Pt 13: 13.730 Pt 14: 13.730 Pt 15: 13.780 Pt 16: 13.790 Pt 17: 13.800 Pt 17A: 13.810 Pt 19: 13.140 Trade Marks Amendment Act 2006: 2.120, 13.80, 13.510 Trade Marks Amendment (Madrid Protocol) Act 2000: 2.120 Trade Marks Amendment (Tobacco Plain Packaging) Act 2011: 2.120 Trade Marks Regulations 1995 reg 3.1: 13.150 reg 4.15: 13.240 reg 5.7: 13.240 reg 5.8: 13.240 reg 5.13: 13.240 reg 5.14: 13.240 reg 5.15: 13.240 Sch 1: 13.150 Sch 2: 13.240 Trade Practices Act 1974: 1.100, 5.290, 6.600, 12.10, 13.10, 13.330, 15.420 s 45: 5.450 s 46: 5.290, 5.450 s 46A: 5.290 s 47: 5.450 s 48: 5.290 s 51(3): 5.290 s 52: 1.100, 2.120, 11.230, 11.240, 12.10, 12.80, 12.90, 12.100, 12.110, 12.115, 12.120, 12.130, 12.140, 12.150,

12.160, 12.200, 12.230, 12.310, 12.420, 15.60, 15.420, 17.120, 17.140, 17.160 s 52(1): 1.100, 12.140 s 53: 12.310, 12.420, 15.420 s 53(3b): 17.120 s 53(c): 12.80, 12.310 s 53(d): 12.80, 12.310 s 53(eb): 17.120 s 80: 12.120 s 82: 11.240, 12.100, 12.110 s 87: 12.110 s 155: 15.420 Pt V: 12.160, 17.110 Pt IV: 5.290 US Free Trade Agreement Implementation Act 2004: 2.120, 2.140, 4.10, 5.40, 5.10, 6.320, 7.60, 7.120, 7.190, 8.130, 9.820 s 116AF: 7.190 s 116AG(1): 7.190 s 116AH: 7.190 s 248(1): 5.10 s 248CA(1): 5.10 s 248CA(3): 5.10 Sch 8, item 5: 8.360 Wine and Brandy Corporation Amendment Act 1993: 12.10

NEW SOUTH WALES Consumer Protection Act 1969: 12.140 Patents Act 1852-95: 8.100 Trade Marks Act 1865: 12.10

NORTHERN TERRITORY Biological Resources Act 2006: 17.210 Public Interest Disclosure Act 2008: 15.350

QUEENSLAND Patents, Designs and Trade Marks Act 1884 s 72: 13.500 Trade Marks Act 1864: 12.10

SOUTH AUSTRALIA Trade Marks Act 1863: 12.10 Whistleblowers Protection Act 1993: 15.350

TASMANIA Merchandise Marks Act 1864: 12.10

VICTORIA Copyright Act 1869 s 51: 17.50 xliii

Intellectual Property: Commentary and Materials

Patents Act 1890: 8.100

Literary Copyright Act 1842: 4.490

Trade Marks Registration Act 1876 s 2: 13.110 s 8: 13.500

Lord Cairns’ Act: 12.400

Whistleblowers Protection Act 2001: 15.350

Merchandise Marks Acts 1887-1953: 12.60

Merchandise Marks Act 1862: 12.10

Ornamental Designs Act 1842: 14.10

WESTERN AUSTRALIA

Patents Act 1949: 2.120, 8.120 s 4(3)(b): 10.150 s 32(1)(h): 10.150

Aboriginal Heritage Act 1972: 15.10 Designs and Trade Marks Act 1884 s 30: 13.500

Patents Act 1977: 9.320, 10.340 s 2(2): 9.650 s 14: 10.110 s 14(3): 10.100 s 64: 11.300

NEW ZEALAND Trade Marks Act 2002: 17.270 s 3(c): 13.500, 17.270 s 17(1)(b): 17.270 s 17(1)(c): 13.500, 17.270 s 97A: 13.720 s 178: 17.270

Patents Law Amendment Act 1852 (15 & 16 Vict c 65): 8.90 Patents and Designs Act 1907 s 25(2)(h): 10.80 Patents and Designs Act 1932: 8.360 s 3: 10.80

UNITED STATES Digital Millennium Copyright Act: 7.160

Patents, Designs & Trade Marks Act 1883 (46 & 47 Vict c 57): 8.90, 8.100, 12.10, 14.10

Innovative Design Protection Act s 3523: 14.10

Registered Designs Act 1949: 14.250 s 77: 14.250

Innovative Design Protection and Piracy Prevention Act s 3728: 14.10

Sale of Goods Act 1893: 3.60 Statute of Anne 1710: 3.20, 4.490, 7.20

Lanham Act 1946: 13.500

Statute of Monopolies 1623: 8.10, 8.20, 8.30, 9.30, 9.40, 9.50, 9.70, 9.90, 9.130, 9.180, 9.430, 9.510, 9.840 s 6: 8.10, 8.170, 9.40, 9.430, 9.450

Lanham Act 1948 s 2(a): 13.500 National Stolen Property Act: 15.220

Trade Mark Registration Act 1875: 12.10

Plant Patent Act 1932: 16.10

Trade Marks Act 1875: 12.30

Plant Variety Protection Act 1970: 16.10

Trade Marks Act 1905: 13.600 s 9(5): 13.420

Sonny Bono Copyright Term Extension Act 1998: 4.490

Trade Marks Act 1938: 13.70 s 8(a): 13.680 s 9(3): 13.420 s 26: 13.760

Uniform Trade Secrets Act: 15.200

UNITED KINGDOM Copyright Act 1842: 3.20

Trade Marks Registration Act 1875 s 6: 13.500 s 10: 13.110

Copyright Act 1911: 2.120, 3.20, 4.10, 5.80 Copyright of Designs Act 1839 (2 & 3 Vict c 17): 14.10

Utility Designs Act 1843: 14.10

Designing & Printing of Linens (etc) Act 1787 (27 Geo 3, c 38): 14.10

TREATIES AND CONVENTIONS

Designs Registration Act 1839: 14.10

1883 Paris Convention for the Protection of Industrial Property: 13.10

Human Rights Act 1998: 15.10 s 12: 15.210

Agreement Establishing the World Trade Organisation xliv

Table of Statutes

Pt VII, Arts 68 to 73: 2.70

Agreement Establishing the World Trade Organisation — cont Art II.2: 2.30 Annex 1C: 2.30

Anti-Counterfeiting Trade Agreement: 1.120 Australia–US Free Trade Agreement: 2.120, 4.40, 4.490, 7.120, 7.140, 8.80 Art 17.1: 2.150 Art 17.4.7: 7.120, 7.140 Art 17.4.8: 7.120 Art 17.11: 7.130 Art 17.11.29: 7.120 Art 17.11.29(xii): 7.120 Ch 17: 2.140, 7.130

Agreement between The Government of Hong Kong and the Government of Australia for the Promotion and Protection of Investments: 2.230 Agreement on Trade-Related Aspects of Intellectual Property Rights: 1.30, 1.40, 2.10, 2.20, 4.10, 4.30, 8.80, 8.130, 12.10, 13.10, 15.10, 16.10 s 5: 17.170 Arts 1 to 4: 2.80 Art 2.1: 2.240 Art 3: Art 3.1: 2.240 Arts 3 to 5: 2.40 Art 4: Art 7: 1.40, 2.40, 2.80 Art 8: 2.40, 2.80 Arts 9 to 14: 1.30, 2.50 Art 15: 13.20 Art 15.4: 2.240 Arts 15 to 21: 1.30, 2.50 Art 16.1: 2.240 Art 16.3: 2.240 Art 18.13: 2.170 Art 18.16: 2.170 Arts 18 to 37: 2.170 Art 20: 2.240 Art 22.2(b): 2.240 Arts 22 to 24: 1.30, 2.50 Art 24.3: 2.240 Arts 25 to 26: 1.30, 2.50 Art 27: 9.10, 9.20 Art 27.3(b): 17.170 Arts 27 to 34: 1.30, 2.50 Arts 35 to 38: 1.30, 2.50 Arts 37 to 54: 2.170 Art 39: 1.30, 15.10 Art 39(1): 15.10 Art 39.3: 2.50 Art 39(3): 15.10 Arts 39 to 40: 2.50 Art 40: 1.30 Art 41: 7.130 Arts 57 to 70: 2.170 Art 64: 2.70 Art 71.1: 17.170 Pt I: 2.40 Pts I to IV: Pt V, Art 63: 2.70 Pt II: 2.50, Pt IV: Pt IV, Art 62: 2.70 Pt VI, Arts 65 to 67: 2.70 Pt III: 2.60, Pt III, Arts 41 to 61: 2.60

Berne Convention for the Protection of Literary and Artistic Works (1886): 1.15, 1.30, 2.10, 2.150, 3.20, 4.30, 4.490, 5.20, 5.260 Art 2: 1.15, 1.20 Art 6: Art 6(1): 5.260 Art 6bis: 2.50, 5.20 Art 14ter: 5.460 Brussels Act (1948) of the Berne Convention: 4.10 Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977): 2.150, 8.250, 10.130 Convention Establishing the World Intellectual Property Organization: 1.30, 2.90 Art 2(viii): 1.30 Art 5: 2.90 Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite: 2.150 Convention for the Protection of Industrial Property: 13.810 Convention on Biological Diversity: 2.10, 17.180 Art 8(j): 1.120, 2.10, 17.180 European Convention on Human Rights: 15.10 Arts 8 to 10: 15.210 European Patent Convention: 9.320 Art 84: 10.340 Art 87(1): 10.350 Framework Convention on Tobacco Control: 2.210 Art 11: 2.210 Art 13: 2.210 General Agreement on Tariffs and Trade 1994: 1.30, 2.20, 2.240 Art III:4: 2.240 Hague Agreement Concerning the International Deposit of Industrial Designs: 14.220 xlv

Intellectual Property: Commentary and Materials

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks: 2.150

Hague Agreement Concerning the International Registration of Industrial Designs: 2.150 International Convention for the Protection of New Varieties of Plants: 2.50, 2.90, 2.150, 16.10, 16.210 s 4: 16.210 Art 6: 16.40

Rome Convention for the Protection of Performers, Producers and Broadcasting Organizations (1928): 1.30 Singapore–Australia Free Trade Agreement: 14.220

International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations: , 2.10 Art 1(b): Art 5, para 3: Art 6, para 2:

Statute of Uses 1535: 15.100 Strasbourg Agreement Concerning International Patent Classification 1971: 8.150 Technical Barriers to Trade: 2.240 Art 2.1: 2.240 Art 2.2: 2.240

International Covenant on Economic, Social and Cultural Rights (1966): 2.10 International Union for the Protection of New Varieties of Plants: 2.50, 2.90

Trade Marks Amendment (Tobacco Plain Packaging) Act 2011: 2.120

Marrakesh Agreement Establishing the World Trade Organization: 2.20, 9.10 Annex 1C: 2.20, 2.80

Trademark Law Treaty: 2.150 Trans-Pacific Partnership Agreement: 8.80, 8.140

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks: 13.120, 13.810

Treaty on Intellectual Property in Respect of Integrated Circuits (1989): 2.30 United Nations Commission on International Trade Law (UNCITRAL) Arbitration Rules 2010: 2.230

Paris Convention for the Protection of Industrial Property: , 1.30, 2.150, 8.200, 8.230, 11.380, 14.10, 14.220 Art 1: 1.30 Arts 1 to 12: Art 19:

United Nations Declaration on the Rights of Indigenous Peoples: 17.10 Art 11: 17.10 Art 31: 17.10 Vienna Convention on the Law of Treaties: 2.20

Paris Convention for the Protection of Industrial Property (1883): 2.10, 8.90 Art 10: 15.10

WIPO Copyright Treaty: 2.10, 2.90, 2.150, 3.160, 7.70

Patent Cooperation Treaty: 2.90, 2.150, 8.230

WIPO Performances and Phonograms Treaty: 2.10, 2.90, 2.150, 3.160, 5.40

Patent Law Treaty: 2.90, 2.150

xlvi

INTRODUCTION

PART1

CHAPTER 1 Introduction to Intellectual Property [1.10] [1.15]

WHAT IS INTELLECTUAL PROPERTY? ....................................................................... 3 International conventions and agreements ............................................................ 4 [1.20]

[1.40]

Berne Convention for the Protection of Literary and Artistic Works ............................................................................ 4

WHY DO WE HAVE IP RIGHTS AND LAWS? ............................................................. 7 [1.50] [1.70]

Integrating Intellectual Property Rights and Development Policy ................................................................... 9 Network Ten v TCN Channel Nine ............................................ 11

[1.80]

SCOPE OF IP PROTECTION IN AUSTRALIA ........................................................... 12

[1.100]

An alternative route for IP protection .................................................................... 15

[1.90] [1.110]

Grain Pool of WA v Commonwealth of Australia ......................... 12 Parkdale Custom Built Furniture v Puxu ..................................... 15

[1.120]

FUTURE OF IP RIGHTS ............................................................................................. 17

[1.130]

SCOPE OF THIS BOOK ............................................................................................ 19

WHAT IS INTELLECTUAL PROPERTY? [1.10] An overly simplistic answer that belies the complexity of the subject matter and the parameters of what might or might not be included, might well be that intellectual property (IP) is the expression or manifestation of the creative juices of man’s intellect – the product of the “sweat of the brow”. The answer is somewhat akin to stating that Jane Austen’s Pride and Prejudice is about two things: namely “pride” and “prejudice” – correct but hardly helpful. IP is not a single, cohesive entity, however, but a generalisation that encompasses “special heads of protected interests” (as pointed out by Dixon J in Victoria Park Racing and Recreational Grounds v Taylor (1937) 58 CLR 479). IP encompasses a vast and diverse range of subject matter that is constantly growing and expanding, as societal and technological developments increase the ways and means of effective communication and interaction, and business and trade expand the exploitative commercial opportunities of the range and types of subject matter. On occasion, societal and technological advances, notably in the digital environment, test the capacity of current IP regimes to keep pace with those advances. Hence IP, or rather the special heads that are encompassed within the term, is thus subject to constant scrutiny and thus dynamic and constantly evolving. Nevertheless, our description of IP contains three crucial characteristics: namely, the intangible in the creativity; the tangible in the expression/manifestation; and the property characteristic. Hand-in-hand with the term “intellectual property” are the rights ascribed to it. And IP rights could be described as the rights derived from the laws – mainly statutory, but also common law – governing those abovementioned “special heads of protected interests”. These rights are essentially exclusive, monopolistic rights in the sense that they exclude or prevent [1.10]

3

Intellectual Property: Commentary and Materials

others from using or exploiting the subject matter of the right without the authorisation of the creator (or owner of the right), usually for a specified period of time. The rights of attribution and creator integrity – otherwise known as moral rights – are a fairly recent addition to the exploitative regime and thus still somewhat subordinate to the protected interests. The above brief outline still does not really answer our initial question of what IP actually is.

International conventions and agreements [1.15] IP is commonly understood in terms of generalisations that are described by inclusive lists, rather than defined by precise and practical terms. Hence, an understanding, to any reasonable degree, of breadth and specificity requires reference to both international descriptors, such as the multilateral conventions and IP chapters of bilateral and regional trade agreements, and domestic statute and case law. It is relatively easy to name specific items that would be included in any list of forms of IP protection, but somewhat more difficult to formulate a general and universal concept around which they can all be grouped. The average layman is likely to be able to name and have a general understanding of the “Big Three” of IP – namely, copyright, patents and trade marks – but may have more of a challenge in identifying and explaining the other “special heads”. In the first instance, therefore, a working description of what is generally accepted as being within the ambit of IP is perhaps best achieved by reference to universally agreed or authoritative (albeit non-exclusive) lists. The term “intellectual property rights” originally applied to the rights that protected literary and artistic creations. In its modern formulation, the term embraces what is called industrial or commercial property, as well as literary and artistic property. These two separate and disparate streams established their international foundations in the late 19th century, but still retain their respective identities and legal standing today. In operational terms, they have coalesced into the broader collective of IP benchmarks enshrined in the international agreements of major global fora for the protection of IP rights, namely the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO). The scope of literary and artistic works can be seen in the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), the first, and principal, international Convention dealing with their protection, concluded in 1886. Article 2 provides as follows, in [1.20].

Berne Convention for the Protection of Literary and Artistic Works [1.20] Berne Convention for the Protection of Literary and Artistic Works Article 2 Article 2 Protected Works (1)

4

The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing,

[1.15]

Introduction to Intellectual Property

CHAPTER 1

Berne Convention for the Protection of Literary and Artistic Works cont. painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science. … (3)

Translations, adaptations, arrangements of music and other alterations of a literary or artistic work shall be protected as original works without prejudice to the copyright in the original work.

(4)

It shall be a matter for legislation in the countries of the Union to determine the protection to be granted to official texts of a legislative, administrative and legal nature, and to official translations of such texts.

(5)

Collections of literary or artistic works such as encyclopedias and anthologies which, by reason of the selection and arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections. …

(7)

Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works.

(8)

The protection of this Convention shall not apply to news of the day or to miscellaneous facts having the character of mere items of press information.

[1.30] The Paris Convention for the Protection of Industrial Property (Paris Convention),

concluded in 1883, is the counterpart of the Berne Convention in the area of industrial property and the other foundation stone of the international IP system. It applies to industrial property in the broadest sense: inventions, trade marks, industrial designs, utility models (a form of patent under the laws of some countries), trade names and geographical indications (indications of source and appellations of origin). Article 1 of the Paris Convention describes the scope of the industrial property it covers: (2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition. (3) Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour. (4) Patents shall include the various kinds of industrial patents recognized by the laws of the countries of the Union, such as patents of importation, patents of improvement, patents and certificates of addition, etc. [1.30]

5

Intellectual Property: Commentary and Materials

The Convention Establishing the World Intellectual Property Organization (WIPO Convention), concluded in 1967, defines the collective scope of IP. The WIPO Convention declares that WIPO’s objectives are the promotion of the protection of IP throughout the world and the administration of a number of Conventions and agreements concerning IP. The term “intellectual property” is described, as distinct from defined, in Article 2(viii) as including the rights relating to: • literary, artistic and scientific works, • performances of performing artists, phonograms, and broadcasts, • inventions in all fields of human endeavor, • scientific discoveries, • industrial designs, • trademarks, service marks, and commercial names and designations, • protection against unfair competition, and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

The final sentence in the WIPO definition leaves the door open for the development and emergence of new forms of agreed IP rights, or variations on common established rights – the imperative for such flexibility being strikingly demonstrated with the rapid and dramatic emergence of the digital environment into our everyday lives and the move of IP into that new medium. IP rights are a major tool of world trade. Since 1995 and the establishment of the WTO as the successor to the post-war General Agreement on Tariffs and Trade (GATT), 1 and the adoption of the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the parameters of IP law has largely been shaped by global trade imperatives, in which the driving concern has moved on from a focus on the acknowledgement of IP creation to the expansion, exploitative protection and enforcement of IP rights. Intellectual property has been formalised as a major commodity in the world trade basket, and the enforcement of IP rights has become a powerful weapon in that trade. TRIPS has become the most significant multilateral agreement over the full range of IP rights. As one agreement in the system of agreements that make up the WTO, TRIPS links IP rights to the General Agreement on Tariffs and Trade (GATT) or WTO rights and obligations. IP issues on the agenda for WTO’s peak body, the biennial Ministerial Meetings, intertwine IP and public health, compulsory licensing of patented drugs, generic pharmaceuticals and agrochemicals, geographical indications in general and the “higher level of protection” for wines and spirits, patents and plants, biodiversity and traditional knowledge, and dispute settlement mechanisms. (See Chapter 2 for further discussion on TRIPS and the international context of IP rights.) Hence, with the exception of the provision for moral rights found in the Berne Convention, it is not surprising that the definition of IP rights in TRIPS does not vary greatly in substance from the subject matter identified in the Berne and Paris Conventions. The TRIPS definition includes: 1

6

The General Agreement on Tariffs and Trade (GATT) was an international treaty that came into force on 1 January 1948. Its objective was to aid global economic recovery following World War II by reducing the barriers to international trade through reduction of tariffs, quotas and subsidies. GATT remained a key element of international trade agreements until it was replaced by the creation of the World Trade Organization on 1 January 1995. Negotiations to replace GATT with the WTO commenced in 1986 (the “Uruguay Round”), with IP rights figuring prominently in those negotiations. [1.30]

Introduction to Intellectual Property

CHAPTER 1

• copyright and related rights (TRIPS Articles 9 – 14); • trade marks (including service marks) (Articles 15 – 21); • geographical indications (or appellations) of origin (Articles 22 – 24); • industrial designs (Articles 25 – 26); • patents (including plant varieties rights) (Articles 27 – 34); • layout-designs (topographies) of integrated circuits (Articles 35 – 38); and • undisclosed information (including trade secrets) (Article 39). TRIPS allows for the protection of new plant varieties to be either subsumed within the patents regime or to be the subject of sui generis legislation. It also addresses the issue of control of anti-competitive practices in contractual licences, by allowing WTO members to legislate to control abuses of IP rights that have an adverse effect on competition in a market (Article 40). TRIPS was built upon the main WIPO treaties that existed and had become generally entrenched as exemplars of IP understanding and example at the time it was formulated – that is, the Berne Convention, the Paris Convention, and the Rome Convention for the Protection of Performers, Producers and Broadcasting Organizations (1928) (Rome Convention) – and extended them. It is a minimum standards treaty and members may provide more, but not less, generous protection. The global trade environment has experienced phenomenal growth since the creation of the WTO and the introduction of TRIPS. A complex network of regional and bilateral trade agreements has developed outside the multilateral fora of the WTO and WIPO and the balance that such organisations can provide between the sometime conflicting demands of developed countries and the needs of developing and least-developed countries. The issue of protection of IP rights continues to be a core element in such regional and bilateral trade agreements on a global scale. What changes in this context is not so much what is protected as IP since this has already been largely settled through the Berne, Paris and Rome Conventions, TRIPS and the establishment of WIPO. Instead, the extension occurs through the dimension of the protection and the nature and standards of the enforcement pressures.

WHY DO WE HAVE IP RIGHTS AND LAWS? [1.40] IP rights, in principle at least are meant to strike a balance between the interests of the original creator, the interests of the creator’s competitor(s), the interests of the investor, and the interests of the public at large. The debate in all specific instances about whether such balance should be tilted more or less in favour of the individual creator always contains various types of arguments, such as the:

• moral argument – a moral conception of IP focuses on the legitimacy of a person being rewarded for their creativity or the “sweat of [their] brow”, and, equally, on the illegitimacy of a person “reaping what [he or she] has not sown”, or getting a “free ride” through improper use or exploitation of another person’s effort; • societal argument – society requires creativity and its expression by its members for society’s own development and advancement, and for the improvement and enhancement of the quality of life of all its members. Society has an economic interest in new ideas, inventions, innovations; [1.40]

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• economic argument – an economic view does not focus on the morality or otherwise of improperly using another person’s work. Rather, it asserts that if the person who creates these ideas gets no benefit from them, economic growth will be hindered: this will provide a strong disincentive to innovation or new ideas. Proponents of high standards of IP rights argue strongly that these rights are necessary to stimulate economic growth that, in turn, contributes to poverty reduction. They argue that by stimulating invention and new technologies, agricultural or industrial production increases, domestic and foreign investment is promoted, technology transfer is facilitated, and public health benefits by the availability of, and access to, medicines on a global scale to combat disease. The principles and systems for high standards of protection can and should apply equally to developed, developing and least developed countries. Opponents of this view argue the opposite position with equal vigour. They claim that IP rights do little to stimulate invention in developing countries, because the necessary human and technical capacity is generally absent. IP rights are ineffective at stimulating research to benefit poor countries because their people will not be able to afford the products even if they are developed. IP rights limit the option of technological learning through imitation. They allow foreign firms to drive out domestic competition by obtaining patent protection, and to service the market through imports, rather than domestic manufacture. Moreover, they increase the costs of essential medicines and agricultural inputs, which badly affects poor countries and their people, particularly farmers. 2 WIPO proffers the following grounds as to the desirability and necessity for a robust system of protection for IP rights: What are intellectual property rights? Intellectual property rights are like any other property right. They allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation. These rights are outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions. Why promote and protect intellectual property? There are several compelling reasons. First, the progress and well-being of humanity rest on its capacity to create and invent new works in the areas of technology and culture. Second, the legal protection of new creations encourages the commitment of additional resources for further innovation. Third, the promotion and protection of intellectual property spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life. An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being. The intellectual property system helps strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all. 3

There arises the challenge of identifying, reaching and maintaining the appropriate balance between these divergent and, at times, clashing views on IP, and the promotion and protection of its associated rights. This necessary balancing act is explained in the mission and objectives of TRIPS. The general goals of TRIPS, as detailed in the Preamble, include: • reduction of distortions and impediments to international trade; 2 3

8

Commission on Intellectual Property Rights (UK), Integrating Intellectual Property Rights and Development Policy (2002), p 1. “What is Intellectual Property”, World Intellectual Property Organisation, WIPO Publication No. 450(E), p 3, at http://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf [1.40]

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• promotion of effective protection for IP rights, while ensuring that measures to protect these rights do not become barriers to legitimate trade; • recognition of the underlying public policy objectives of national systems for the protection of IP, including developmental and technological objectives, and, in particular, the special needs of least-developed countries in trying to create a sound and viable technological base. The objectives detailed in Article 7 of TRIPS are that protection and enforcement of IP rights should contribute to the promotion of technological innovation, and the transfer and dissemination of technology to the mutual advantage of producers and users of technological knowledge in a manner that is conducive to social and economic welfare and a balance of rights and obligations.

Integrating Intellectual Property Rights and Development Policy [1.50] Commission on Intellectual Property Rights (UK), Integrating Intellectual Property Rights and Development Policy (2002), pp v, 6–8 Perhaps there is something about the era we live in that has encouraged blind adherence to dogma. This has affected many walks of life. It certainly has affected the whole area of intellectual property rights. On the one side, the developed world side, there exists a powerful lobby of those who believe that all IPRs [(IP rights)] are good for business, benefit the public at large and act as catalysts for technical progress. They believe and argue that, if IPRs are good, more IPRs must be better. On the other side, the developing world side, there exists a vociferous lobby of those who believe that IPRs are likely to cripple the development of local industry and technology, will harm the local population and benefit none but the developed world. They believe and argue that, if IPRs are bad, the fewer the better. The process of implementing TRIPS has not resulted in a shrinking of the gap that divides these two sides. Rather it has helped to reinforce the views already held. Those in favour of more IPRs and the creation of a “level playing field” hail TRIPS as a useful tool with which to achieve their objectives. On the other hand those who believe that IPRs are bad for developing countries believe that the economic playing field was uneven before TRIPS and that its introduction has reinforced the inequality. So firmly and sincerely held are these views that at times it has appeared that neither side has been prepared to listen to the other. Persuasion is out, compulsion is in. Whether IPRs are a good or bad thing, the developed world has come to an accommodation with them over a long period. Even if their disadvantages sometimes outweigh their advantages, by and large the developed world has the national economic strength and established legal mechanisms to overcome the problems so caused. Insofar as their benefits outweigh their disadvantages, the developed world has the wealth and infrastructure to take advantage of the opportunities provided. It is likely that neither of these holds true for developing and least developed countries. … The Nature of Intellectual Property Rights Some see IP rights principally as economic or commercial rights, and others as akin to political or human rights. The TRIPS agreement treats them in the former sense, while recognising the need to strike a balance between the rights of inventors and creators to protection, and the rights of users of technology (Article 7 of TRIPS). The Universal Declaration of Human Rights has a broader definition recognising “the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author”, balanced by “the right … to share in scientific advancement and its benefits”. The crucial issue is to reconcile the public interest in accessing new knowledge and the products of new knowledge, with the public interest in stimulating invention and creation which produces the new knowledge and products on which material and cultural progress may depend. [1.50]

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Integrating Intellectual Property Rights and Development Policy cont. The difficulty is that the IP system seeks to achieve this reconciliation by conferring a private right, and private material benefits. Thus the (human) right to the protection of “moral and material interests” of “authors” is inextricably bound up with the right to the private material benefits which result from such protection. And the private benefit to the creator or inventor is derived at the expense of the consumer. Particularly where the consumer is poor, this may conflict with basic human rights, for example, the right to life. And the IP system, as manifested in TRIPS, does not allow – except in rather narrow ways – discrimination between goods essential to life or education, and other goods such as films or fast food. We therefore consider that an IP right is best viewed as one of the means by which nations and societies can help to promote the fulfilment of human economic and social rights. In particular, there are no circumstances in which the most fundamental human rights should be subordinated to the requirements of IP protection. IP rights are granted by states for limited times (at least in the case of patents and copyrights) whereas human rights are inalienable and universal. For the most part IP rights are nowadays generally treated as economic and commercial rights, as is the case in TRIPS, and are more often held by companies rather than individual inventors. But describing them as “rights” should not be allowed to conceal the very real dilemmas raised by their application in developing countries, where the extra costs they impose may be at the expense of the essential prerequisites of life for poor people. Regardless of the term used for them, we prefer to regard IPRs as instruments of public policy which confer economic privileges on individuals or institutions solely for the purposes of contributing to the greater public good. The privilege is therefore a means to an end, not an end in itself. Thus in terms of assessing the value of IP protection, it may be compared to taxation. Hardly anybody claims that the more taxation there is, the better. However, there is a tendency among some to treat more IP protection as self-evidently a good thing. More taxation might be desirable if it delivers public services that society values more than the direct and indirect cost of taxation. But less can also be beneficial, for instance if excessive taxation is harming economic growth. We think there are very analogous questions for intellectual property. How much of it is a good thing? How should it be structured? How does the optimal structure vary with sectors and levels of development? Moreover, even if we get the level and structure of protection right, to balance the incentive to invention and creation against the costs to society, we also have to worry about the distribution of gains. [Footnotes omitted.]

[1.60] Arguably, except for the moral rights recognition provision within copyright, protection is directly linked with commercial exploitation. Without the commercial value of the item being protected, IP protection becomes meaningless. In the matter of Computer Edge Pty Ltd and Anor v Apple Computer Inc and Anor (1986) 6 IPR 1, before the High Court of Australia, Deane J opined (at 32): Those matters and considerations include the determination of the appropriate boundary between patent law with its requirement of novelty and its fixed and more limited period of protection, and copyright law, with its limited requirement of originality and its much greater period of protection. They also include the resolution of the competing legitimate claims of different interests – the claim of an author, a designer or an inventor to the protection of his work and the claims of the public to the unrestricted use of information, technology and other material. The assessment and balancing of those matters and considerations and the question 10 [1.60]

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whether some, and if so what, extension of copyright protection to a new field to which existing legislative provisions are inapplicable is warranted are matters for the Parliament and not for the courts.

While Computer Edge revolved around patent infringements, his Honour’s remarks apply generally with equal force to other areas of IP and their protection. But such is the dimension of possible commercial gain or loss at stake, that unauthorised use of an IP right belonging to another is clothed in emotive language designed to cast the perpetrator in the most negative and unseemly light. Hence even infringers (let alone offenders) are designated “pirates” and their infringing acts are “acts of piracy”. Unauthorised copies or alternative or generic versions of protected goods are described as “counterfeit” or “pirated” goods. The notion of “piracy”, in the classical sense, can evoke images of acts of extreme and ultimate cruelty – rape, murder, pillage, arson, victims forced to “walk the plank”, and so forth. But the term “piracy” has been adopted by the IP rights industry generally to describe infringements of any degree – whether civil or criminal – of IP rights. With the use of such emotive imagery, there is a danger that the sound social, moral and legal basis for the enforcement of the protection of IP rights becomes overwhelmed by commercial strategy and spin-doctoring. There is also a risk that using the same emotive language to describe both fake goods which may represent a loss of commercial revenue and fake goods which constitute a real and serious threat to personal life and limb and/or public health generally – such as pharmaceuticals coloured with toxic road-marking paint or brake linings made from compressed grass cuttings – diminishes the overall IP rights enforcement imperative and commitment.

Network Ten v TCN Channel Nine [1.70] Network Ten Pty Ltd v TCN Channel Nine [2004] HCA 14 High Court of Australia MCHUGH ACJ, GUMMOW AND HAYNE JJ: … 14. Counsel for Nine invoked a well-known statement made in University of London Press Ltd v University Tutorial Press Ltd. This was a case of infringement of copyright in an original literary work and Peterson J applied “the rough practical test that what is worth copying is prima facie worth protecting”. But later authorities correctly emphasise that, whilst copying is an essential element in infringement to provide a causal connection between the plaintiff’s intellectual property and the alleged infringement, it does not follow that any copying will infringe. The point was stressed by Laddie J when he said: Furthermore many copyright cases involve defendants who have blatantly stolen the result of the plaintiff’s labours. This has led courts, sometimes with almost evangelical fervour, to apply the commandment “thou shalt not steal”. If that has necessitated pushing the boundaries of copyright protection further out, then that has been done. This has resulted in a body of case law on copyright which, in some of its further reaches, would come as a surprise to the draughtsmen of the legislation to which it is supposed to give effect. Professor Waddams, speaking of the use of terms such as “piracy”, “robbery” and “theft” to stigmatise the conduct of alleged infringers of intellectual property rights, describes “the choice of rhetoric” as “significant, showing the persuasive power of proprietary concepts”. He also remarks:

[1.70]

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Network Ten v TCN Channel Nine cont. Against the merits of enlarging the property rights of one person or class of persons must always be set the loss of freedom of action that such enlargement inevitably causes to others. [Footnotes omitted.]

SCOPE OF IP PROTECTION IN AUSTRALIA [1.80] The term “intellectual property” was not especially current in common law jurisdictions at the time of Federation in Australia. The Federal power to enact IP laws was enshrined in the Constitution in rather specific terms, with s 51(xviii) granting Parliament, subject to the Constitution, power to make laws for the peace, order, and good government of the Commonwealth with respect to “[c]opyrights, patents of inventions and designs, and trade marks”. This degree of specificity has led to a consideration of the constitutional limits of the provision. In Grain Pool of WA v Commonwealth of Australia [2000] HCA 14 at [41], the High Court supported a generous interpretative approach to s 51(xviii) of the Constitution, supporting “fresh rights in the nature of copyright, patents of inventions and designs and trade marks” (emphasis added). Given the High Court’s support for “fresh rights” and the importance of treaty-making to contemporary IP law reform, constitutional challenges are likely to remain uncommon.

Grain Pool of WA v Commonwealth of Australia [1.90] Grain Pool of WA v Commonwealth of Australia [2000] HCA 14 High Court of Australia GLEESON CJ, GAUDRON, MCHUGH, GUMMOW, KIRBY, HAYNE AND CALLINAN JJ: … 16. The general principles which are to be applied to determine whether a law is with respect to a head of legislative power such as s 51(xviii) are well settled. They include the following. First, the constitutional text is to be construed “with all the generality which the words used admit”. Here the words used are “patents of inventions”. This, by 1900, was “a recognised category of legislation (as taxation, bankruptcy)”, and when the validity of such legislation is in question the task is to consider whether it “answers the description, and to disregard purpose or object”. Second, the character of the law in question must be determined by reference to the rights, powers, liabilities, duties and privileges which it creates. Third, the practical as well as the legal operation of the law must be examined to determine if there is a sufficient connection between the law and the head of power.1 Fourth, as Mason and Deane JJ explained in Re F; Ex parte F: In a case where a law fairly answers the description of being a law with respect to two subject matters, one of which is and the other of which is not a subject matter appearing in s 51, it will be valid notwithstanding that there is no independent connection between the two subject matters. Finally, if a sufficient connection with the head of power does exist, the justice and wisdom of the law, and the degree to which the means it adopts are necessary or desirable, are matters of legislative choice. 17. In a passage in the joint judgment of the court in Nintendo Co Ltd v Centronics Systems Pty Ltd upholding the validity of the Circuit Layouts Act 1989 (Cth) (the Circuit Layouts Act), the court attended to the first of these matters, the construction of the terms of s 51(xviii) with the generality admitted by the words used. Their Honours said: 12 [1.80]

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Grain Pool of WA v Commonwealth of Australia cont. The grant of Commonwealth legislative power which sustains the [Circuit Layouts Act] is that contained in s 51(xviii) of the Constitution with respect to “Copyrights, patents of inventions and designs, and trade marks”. It is of the essence of that grant of legislative power that it authorises the making of laws which create, confer, and provide for the enforcement of, intellectual property rights in original compositions, inventions, designs, trade marks and other products of intellectual effort. In the present case, the plaintiff contends that the final phrase in this passage should not be read so as to treat as sufficient to attract this head of power any product of intellectual effort. Those supporting validity contend that the legislation here is valid without such a wide reading of the power. That which constitutes the invention for the Varieties Act is “the origination” of the “new plant variety” (s 5(a)) and for the Breeder’s Rights Act it is “the breeding” of the plant variety (s 10(b)). It will be necessary to return to these submissions. 18. What is of immediate significance for present purposes is the reference in Nintendo by their Honours to R v Brislan; Ex parte Williams and Jones v Commonwealth (No 2). Those authorities dealt with the inherent scope for expansion of the application of the power with respect to postal, telegraphic, telephonic “and other like services” in s 51(v) of the Constitution. This serves to emphasise a point of significance in the present case. Later developments in scientific methods for the provision of telegraphic and telephonic services were contemplated by s 51(v). Likewise, it would be expected that what might answer the description of an invention for the purpose of s 51(xviii) would change to reflect developments in technology. 19. Consistently with the general principles which we have identified above, an appropriate approach to the interpretation of s 51(xviii) is that appearing in what was then the dissenting judgment of Higgins J in Attorney-General (NSW) v Brewery Employees Union of NSW (the Union Label case). Higgins J observed that trade marks were “artificial products of society”. Further, while “we are to ascertain the meaning of ‘trade marks’ as in 1900”, trade marks usage in 1900 “gives us the central type; it does not give us the circumference of the power” with respect to trade marks provided for by s 51(xviii). The centre of the thing named – trade marks – was to be taken with the meaning as in 1900 to find the circumference of the power. However, it would be “a mistake to treat the centre as the radius”. 20. Higgins J continued: Power to make laws as to any class of rights involves a power to alter those rights, to define those rights, to limit those rights, to extend those rights, and to extend the class of those who may enjoy those rights. In the same clause of s 51, power is given to make laws with respect to “copyrights” (rights of multiplying copies of books, etc); with respect to “patents” (rights to make or sell inventions); and with respect to “trade marks” (rights to use marks for the purposes of trade). The power to make laws “with respect to” these rights, involves a power to declare what shall be the subject of such rights. In the second place, although we are to interpret the words of the Constitution on the same principles of interpretation as we apply to any ordinary law, these very principles of interpretation compel us to take into account the nature and scope of the Act that we are interpreting – to remember that it is a Constitution, a mechanism under which laws are to be made, and not a mere Act which declares what the law is to be (original emphasis). … 22. The judgment of the court in Nintendo and those of Higgins J and Gibbs CJ, delivered across the lifespan of the court, exemplify the first of the general principles of constitutional interpretation to

[1.90]

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Grain Pool of WA v Commonwealth of Australia cont. which reference has been made. They reflect what the foundation members of the court had intended by their adoption in Baxter v DCT (NSW) of a passage of the judgment of Story J delivering the opinion of the court in Martin v Hunter’s Lessee. In that well-known statement with respect to the interpretation of the United States Constitution, Story J had stressed that the legislative powers of the Congress were expressed “in general terms”, so as “to provide [not] merely for the exigencies of a few years, but … to endure through a long lapse of ages, the events of which were locked up in the inscrutable purposes of Providence”. 23. These words do not suggest, and what follows in these reasons does not give effect to, any notion that the boundaries of the power conferred by s 51(xviii) are to be ascertained solely by identifying what in 1900 would have been treated as a copyright, patent, design or trade mark. No doubt some submissions by the plaintiff would fail even upon the application of so limited a criterion. However, other submissions, as will appear, fail because they give insufficient allowance for the dynamism which, even in 1900, was inherent in any understanding of the terms used in s 51(xviii). KIRBY J: … 130. There is one further consideration which suggests that the reference to the categories of legal rights contained in s 51(xviii) should be given a specially broad interpretation, released from the conceptions of 1900. If, as this court has held, the feature which links the rights provided in s 51(xviii) is the “enforcement of, intellectual property rights in original compositions, inventions, designs, trade marks and other products of intellectual effort”, there are special reasons why no narrow approach to the power, found by worrying about the conceptions common in 1900 or otherwise, should be imposed on this particular paragraph. 131. A universal feature of the twentieth century has been the dynamic progress and momentum of science and technology. The principal inventions of the century, which include flight, applied nuclear fission, informatics and biogenetics were all undiscovered, and for the most part unconceived, in 1900. Yet the Constitution certainly envisaged that the Commonwealth was entering an age of special technological inventiveness. So much can be seen in the specific provision of the post and telecommunications power in such wide terms. 132. Given the objects of the head of power, which include the facilitation and protection of intellectual inventiveness within Australia, it would be specially destructive of the achievement of those objects if the grant of power were to be attached – even as a primary reference point – to the particular notions which, up to 1900, “copyrights, patents of inventions and designs and trade marks” had been protected by the law. I do not believe that such an approach is necessary. It is certainly not desirable. The provision of copyright protection of genetically modified organisms had certainly never been contemplated before 1900. This is for the very good reason that the science and technology of genetic modification was unknown at that time. It is unnecessary now to decide whether copyright law does or could extend to genetically modified organisms. It is sufficient to note that the issue is one of lively intellectual debate. 133. To the full extent that the language of the Constitution warrants and that other important values which it upholds permit, meaning should be given to a provision such as s 51(xviii) in a way that allows the section to respond to the very great variety of inventiveness that may be considered by the Federal Parliament to necessitate protection for the “products of intellectual effort”. The future directions of such inventiveness are unknowable and likely to outstrip even our present vivid imaginations. Whether in particular contexts special and even new forms of such protection are

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Grain Pool of WA v Commonwealth of Australia cont. desirable is a matter for argument and dispute. But power being present, the proper place for that debate ordinarily to occur is in the parliament and in the Australian community which helps to shape the parliament’s decisions. [Footnotes omitted.]

An alternative route for IP protection [1.100] Another route that has been utilised in the search for the protection of IP rights

outside the traditional heads of protection, has been by way of actions to enjoin breaches of the Trade Practices Act 1974 (Cth) s 52(1) and its superseding legislation, Competition and Consumer Act 2010 (Cth). That provision proscribed conduct engaged in by persons in trade or commerce “that is misleading or deceptive or … likely to mislead or deceive”. Such actions were encouraged by the identification of an additional jurisdiction in the Federal Court of Australia to hear general law actions based on a common substratum of fact with those actions that could be brought under the Trade Practices Act 1974 (Cth) and by the subsequent cross-vesting of jurisdiction in IP matters between the State Supreme Courts and the Federal Court. However, the scope of s 52 to supplement the traditional IP causes of action was circumscribed at an early stage by the High Court in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, following (see further discussion of Parkdale at [12.120] and [12.140]).

Parkdale Custom Built Furniture v Puxu [1.110] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 High Court of Australia [Puxu Pty Ltd (Puxu), since June 1978, manufactured and sold under the name “Post and Rail” furniture of a distinctive appearance and design known as the “Contour” range. The furniture had been designed and sold by Puxu’s predecessors in business since late 1976 or early 1977. It was advertised quite widely and had an established reputation, but the design had not been registered under the Designs Act 1906 (Cth), as amended. From June 1978, Parkdale Custom Built Furniture Pty Ltd (Parkdale) manufactured and sold under the general names “Parkdale Custom Built Furniture” and “Custom Built Furniture” furniture known as the “Rawhide” range. The furniture made by Parkdale closely resembled that made by Puxu.] MASON J: [205] The relationship of s 52(1) with established statutory regimes dealing with related topics gives rise to an important question. Can it be inferred from the detailed treatment of limited monopolies of intellectual and industrial property in specific statutes that s 52(1) should be read down if it otherwise could facilitate the creation of new monopolies not subject to the limitations imposed by those statutes? In my view there are sound reasons for not construing s 52 in that way. Clearly there is here no question of infringement of a trade mark. As a general proposition the Trade Marks Act 1955 (Cth) is concerned with deception or confusion to the public as to the source of goods, whilst the Trade Practices Act is concerned with deception of the public as consumers of goods or services. Likewise, the operation of s 52 is not restricted by the common law principles relating to passing off. If, as I consider, the section provides the public with wider protection from deception than the common law, it does not follow that there is a conflict between the section and the common law. The statute provides an additional remedy. [1.110]

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Parkdale Custom Built Furniture v Puxu cont. To obtain a monopoly in a particular design under the Designs Act it is not sufficient merely to have a period of undisturbed [206] use. The necessary registration is only possible for a “new or original design, which has not been published in Australia before the lodging of an application for its registration” (s 17(1)). A certificate of registration remains in force for a limited period (s 26). Importantly a registered design is open to public inspection (s 27) so that others can assess whether they could be infringing the copyright in a registered design. Thus the statute seeks a balance between limited monopoly rights for traders with a novel design on the one hand and the stimulus of competition aided by access to information on the other hand. Similarly the Patents Act 1952 (Cth) seeks to balance competing interests in connection with the grant of letters patent for a particular invention. Essentially, in return for the disclosure of his invention a patentee receives a limited monopoly at the expiration of which the invention is available to the public at large. The case made by the respondent as a competing trader here is that it is entitled to an injunction to restrain the appellant from producing and selling goods which very closely resemble the respondent’s product. Its claim in substance is that s 52 gives it the rights which it would have had if it had a registered design for the furniture. On the other hand the appellant’s case is that to forbid a manufacturer to manufacture a product because it too closely resembles a competitor’s earlier product without subjected the resulting monopoly for the earlier product to the limitations imposed by the Designs Act, would be to create a monopoly in a design in circumstances in which that Act does not confer a monopoly. This, the appellant urges, is a result which would scarcely have been intended. Mr Staff QC for the respondent submits that the Patents Act and the Designs Act are directed to a field of obligations and rights quite different from s 52. In one sense this is so. It is the object of the two statutes to create private property rights. They confer exclusive or monopoly rights in patents and designs respectively and prescribe the conditions according to which these rights come into existence. With s 52 it is different. Its primary purpose is not to create private property rights but to regulate the conduct of traders by prohibiting them from engaging in conduct which misleads or deceives consumers. Enforcement of this statutory prohibition may enable trader A to prevent trader B from manufacturing or marketing goods which closely resemble those of trader A because the marketing of them will mislead or deceive the public, but this result, if it occurs, will be incidental to the enforcement of the prohibition – it is an unavoidable consequence of protecting the [207] public from misleading or deceptive conduct. When s 52 is viewed in this light, there is no very strong reason for saying that the generality of its language should be restricted on the ground that it runs counter to the policy and purposes of the Patents Act and the Designs Act. It would be otherwise if the policy and purpose of the two statutes were to prohibit all monopoly rights in patents and designs except those for which they provide. If the two statutes were anti-monopoly statutes then we might be justified in saying that the general words of s 52 should be read subject to the particular words of the Patents Act and the Designs Act – generalia specialibus non derogant. But it is not possible to say of them that they are anti-monopoly statutes – their object is to create exclusive rights. … BRENNAN J: [224] If s 52 of the Trade Practices Act authorised or required the granting of such an injunction, it would run counter to the intention of Parliament implied in the statutes which create or provide for the creation of monopolies. Those statutes define the conditions governing the creation of monopolies and thus chart the limits of the contemporary reservations from the freedom to manufacture and sell which the Statute of Monopolies assured. The notion that patent laws imply an intention to leave free the field of activity not covered by the grant of monopoly rights underlay the judgments of the Supreme Court of the United States in Sears, Roebuck & Co v Stiffel Co 376 US 225; 11 16

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Parkdale Custom Built Furniture v Puxu cont. Law Ed 2d 661 (1964) and in Compco Corp v Day-Brite Lighting Inc 376 US 234; 11 Law Ed 2d 669 (1964). The Court of Appeals for the Seventh Circuit in Sears, Roebuck had held that a likelihood of confusion as to the source of products was sufficient, without passing off, to attract an Illinois law proscribing unfair competition and to warrant the granting of injunctive relief. The Supreme Court, assuming that the State law had the operation thus attributed to it, denied the competence of a State legislature to encroach upon federal patent laws. These cases were explained in Goldstein v California 412 US 546 at 569-570; 37 Law Ed 2d 163 at 181 (1973): In regard to mechanical configurations, Congress had balanced the need to encourage innovation and originally of invention against the need to insure competition in the sale of identical or substantially identical products. The standards established for granting federal patent protection to machines thus indicated not only which articles in this particular category Congress wished to protect, but which configurations it wished to remain free. The application of state law in these cases to prevent the copying of articles which did not meet the requirements for federal protection disturbed the careful balance which Congress had drawn and thereby necessarily gave way under the Supremacy Clause of the Constitution. It would be surprising if Trade Practices Act were to alter the “careful balance” of the Patents Act and the Designs Act by a side-wind and, after four centuries, open the way to the creation of prescriptive monopolies for the manufacture of goods. In my view, it does not have that effect.

FUTURE OF IP RIGHTS [1.120] The “careful balance” referred to by Brennan J in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, above, is that which exists between the interests of IP owners, on the one hand, and the interests of users, or potential users, of material embodying the rights, on the other, which may include downstream innovators. The creation of IP involves intellectual effort, while its exploitation can entail substantial resource outlays. Producers need an incentive to make that effort and incur the costs of production, by receiving an appropriate return, usually through a period of exclusive rights to exploit the IP. There are many challenges to IP and the appropriate scope of protection is to be considered in the light of these challenges, which have recently included issues of competition policy, privacy, health, biodiversity and public policy. The custodians of traditional knowledge and those working on genetic resources are making new claims for enfranchisement. Marketers are increasingly requiring protection for well-known trade marks, geographic indications and domain names in circumstances where existing trade mark or copyright laws would not recognise proprietary rights. There are serious and subversive threats to the established order as the law continues to address the issues surrounding material on the internet. Here, open source, peer-to-peer file sharing systems and creative commons licensing assist in returning to users what encryption, private contractual arrangements and legislative reform may attempt to take away. Despite the perception by some critics that IP is at a “crisis point”, the belief that IP law is “outdated and obsolete” is challenged by those who see the law as able to draw on a long history of attempts

[1.120]

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to grant property status to intangibles. 4 This work challenges the notion that these laws have ever had clear, uncontested foundations or clear definitions of what ought to be protected, and to what extent. The focus of international discussions on digital technologies and the growth of computer networks (the “Digital Agenda”), which resulted in the WIPO “internet treaties”, illustrates the adaptation of IP law at both the national and international level. The distribution of information by means of digital technology is revolutionising the conditions of international trade and bringing into sharp focus the requirements of IP protection in a world with no physical boundaries. National differences in copyright protection are tolerable where physical objects embody the IP. But a film (or other material) loaded onto the internet will, in the absence of a technical barrier, be available instantly and in full all over the world. In the information technology industry, “incentive theories” that lead to restricted access to computer code by “downstream” developers are commonly challenged. The computing industry took off in the 1970s and 1980s with weak, if any, IP protection, but this did not lead to any shortage of innovation – rather, it was a very vibrant time for development. Thus, many argue that patents and copyright protection may hinder, rather than sponsor, these particular kinds of innovations. Justifying IP rights is a complicated and difficult business, and recourse to general theories without address to the specifics of particular categories, their individual histories and mixes of policy objectives is quite problematic. The politics of IP lawmaking is more contested now than at any other stage of the development of IP rights. This points to the fact that the “right” IP rights are perceived to have a much greater impact on the future growth of the economy and on balances of trade. Consideration of the “balance between owners and users” presupposes a world in which all creators, owners and users are equal in terms of capacity to create, disseminate and access the desired product or service comprising the IP. In fact, apart from differences between individuals and corporations, another consideration is “Australia’s ability to compete in world markets”, 5 where the value of our imports of copyright material far outweighs the value of exports. IP is not just about “incentives” and simple calculations of trade balances. Increasingly, there has been international focus on treaties that deal with justice, equity and development issues. For example Article 8(j) of the Convention on Biological Diversity establishes that: each contracting party will … subject to its national legislation, respect preserve and maintain knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity and promote their wider application with the approval and involvement of the holders of such knowledge, innovations and practices and encourage the equitable sharing of benefits arising from the utilisation of such knowledge, benefits and practices.

This can be the foundation for a capacity to impact on patents that seek to capitalise on traditional knowledge without engagement with traditional owners. In 2004, developing countries led by Brazil and Argentina launched an initiative to establish a Development Agenda in WIPO. The proposal notes: Technological innovation, science and creative activity in general are rightly recognised as important sources of material progress and welfare. However, despite the important scientific 4 5

B Sherman and L Bently, The Making of Modern Intellectual Property Law: The British Experience, 1760–1911 (Cambridge University Press, 1999), pp 1–5. A Mason, “Reading the Future” (1996) 9 AIPLB 13.

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CHAPTER 1

and technological advances and promises of the 20th and early 21st centuries, in many areas a significant “knowledge gap” as well as a “digital divide” continue to separate the wealthy nations from the poor … Intellectual property protection cannot be seen as an end in itself, nor can the harmonisation of intellectual property laws leading to higher protection standards in all countries, irrespective of their levels of development. 6

The proposal was accepted by WIPO’s General Assembly, and provided for new rounds of meetings seeking ways of addressing these issues and to reconcile IP protection with development agendas – a debate which is still continuing twelve years after its introduction. Domestically, the Australian IP context is undergoing a period of critical scrutiny and review that could possibly impact on its character in the future. Two impending regional agreements, namely the Anti-Counterfeiting Trade Agreement (ACTA) and the Trans-Pacific Trade Partnership (TPPA) both include substantial IP provisions, amongst other matters, leading to higher standards of protection and enforcement that will require incorporation into domestic laws. However, such is the rate of dynamic development in the IP “industry” both globally and regionally, it is quite conceivable that both agreements and the consequent flow-on into the domestic IP legislative regime, could be superseded before they come into force. ACTA, which was concluded by the 31 negotiating parties (including Australia) in October 2011, requires at least six ratifications to come into force, but at late 2016 has just one. The TPPA, which was signed by the 12 negotiating parties in February 2016 and incorporates a number of ACTA copyright provisions, is currently subject to intense United States domestic opposition which could also jeopardise its future. It is certainly an interesting time to be studying IP laws, where the nature of the rights and concept of balance, and the complexity of interests that might feature in such discussions, continues to broaden.

SCOPE OF THIS BOOK [1.130] This book combines a commentary on the generally accepted key elements of IP,

supported and illustrated by extracts of carefully selected and explanatory materials. It endeavours to assist the reader, whether academic and researcher, legal practitioner, law student, or interested reader, to grasp a broader understanding of the nature and the parameters of IP and its accompanying rights, as outlined above. It focuses on the Australian context and materials, while noting that this context must still take cognisance of, and exist within, a global environment. The book endeavours to maintain a targeted and manageable menu of expert commentary and source material. It attempts to strike a balance between length, number and diversity of extracted statutory and judicial sources. However, the book may still require further close reference to relevant legislation and case law. Hopefully, the material selected will arouse the reader’s interest to research further the issues explored here and the broader contexts of the material selected for inclusion. This book is divided into sections, which can be studied in any order. While each section is largely self-contained, it will soon become clear to the reader that there is a significant degree of interaction and overlap between these areas – such as between copyright and designs, trade marks and geographical indications, and again copyright and patents. Principles and 6

Proposal by Argentina and Brazil for the Establishment of a Development Agenda for WIPO, WIPO General Assembly Document WO/GA/31/11. [1.130]

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requirements in respect of enforcement and the provision of both civil and criminal procedures can apply across all areas of IP. It is no accident that the book commences with the international context of IP rights and protection regimes, since, in the current climate, national regimes are becomingly increasingly driven and shaped by the obligations enshrined in international and bilateral conventions, treaties and agreements and imposed upon those who accede to them. This section is followed by specific areas, which examine in turn: • copyright; • patents; • trade marks; • designs; • confidential information and trade secrets. • plant breeder’s rights; The concluding chapter of the book examines an area of IP that is hardly included within the conventional ambit of an IP protection system largely derived from the Eurocentric protectionist exploitative paradigm – namely, cultural heritage and traditional knowledge, or Indigenous cultural intellectual property (being the term more generally used in the Australian IP context).

20 [1.130]

CHAPTER 2 The International Context of Intellectual Property [2.10] [2.20] [2.30]

INTRODUCTION ...................................................................................................... 21 World Trade Organization and TRIPS ..................................................................... 23 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) ...................................................................................................................... 24 [2.40] Preamble and Part I .............................................................................. 25 [2.50] Part II ...................................................................................................... 26 [2.60] Part III Enforcement .............................................................................. 28 [2.70] Parts IV–VII ............................................................................................. 29 [2.80]

[2.90] [2.100]

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) ............................................................ 30 World Intellectual Property Organization (WIPO) ................................................ 32 Bilateral and regional trade agreements with IP provisions ................................ 34

[2.120]

AUSTRALIAN DOMESTIC CONTEXT ON IP .......................................................... 36

[2.130] [2.140]

AUSTRALIA’S REGIONAL IP-STRONG AGREEMENTS ............................................ 38 Australia–United States Free Trade Agreement ..................................................... 38 [2.150]

[2.160] [2.170] [2.180] [2.190] [2.200] [2.210]

Australia–United States of America Free Trade Agreement .............................................................................. The recent Korean, Japanese and Chinese Trade Agreements ............................ The Trans-Pacific Partnership Agreement (TPPA) .................................................. The Regional Comprehensive Economic Partnership .......................................... The Australian Productivity Commission inquiry into IP ...................................... Australian Government Productivity Commission ...............................................

39 40 40 43 44 45

[2.200] Main Key Points ..................................................................................... 45 The Australian tobacco plain packaging saga ....................................................... 46 [2.220] 1. The HCA judgment ........................................................................... 46 [2.230] 2. Claim under the Australia Hong-Kong BIT of 1993 ...................... 47 [2.240] 3. The Complaints before the WTO’s Dispute Settlement Body ...... 48 [2.250] 4. The Global interest ........................................................................... 49

INTRODUCTION [2.10] In the international context, intellectual property (IP) is essentially a trade issue, and its protection and exploitation by those states, corporations and individuals who enjoy or control rights over it, is a major weapon of world trade. Recognition, protection and enforcement of IP rights are firmly fixed in the multilateral and bilateral trade agendas of the major developed nations, with their dealings with each other and with developing and least-developed countries. Hence, IP protection and regulation regimes exist in a complex framework of international bodies, multilateral conventions and foreign relations. These multilateral conventions are generally minimum standards agreements; countries are not prevented from adhering to higher standards unilaterally or with other countries. [2.10]

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However, under the most-favoured-nation and national treatment provisions that exist in these treaties and conventions, the benefits or standards they set themselves or agree to with other individual countries must also be granted to all other signatories to those treaties and conventions. The major players in the multilateral forum for IP protection are the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO). The major international agreements specifically addressing IP protection include: • Berne Convention for the Protection of Literary and Artistic Works (1886) (Berne Convention); • Paris Convention for the Protection of Industrial Property (1883) (Paris Convention); • International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention) (1960); • WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (1995); • WIPO Copyright Treaty (WCT) (1996); • WIPO Performances and Phonograms Treaty (WPPT) (1996). But there are other players that are involved in the development of IP protection or that influence its development and future direction, including other UN agencies – United Nations Educational, Scientific and Cultural Organization (UNESCO), United Nations Development Programme (UNDP), United Nations Conference on Trade and Development (UNCTAD), International Centre for Trade and Sustainable Development (ICTSD), World Health Organization (WHO), and global financial institutions, such as the World Bank and the International Monetary Fund (IMF). Similarly, there are a significant number of major international conventions and treaties that address other global issues or issues to which IP has relevance, and which therefore encompass elements of IP. Two examples of theses related treaties are the Convention on Biological Diversity (1992) and the International Covenant on Economic, Social and Cultural Rights (1966). The Convention on Biological Diversity 1992, for example, has as its main objective the development of international and national strategies for the conservation and sustainable use of biological diversity. Its three primary goals are: • conservation of biological diversity (or biodiversity); • sustainable use of its components; and • fair and equitable sharing of benefits arising from genetic resources. Article 8(j) of the Convention on Biological Diversity 1992 provides that each contracting party shall: Subject to its national legislation, respect, preserve and maintain knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity and promote their wider application with the approval and involvement of the holders of such knowledge, innovations and practices and encourage the equitable sharing of the benefits arising from the utilization of such knowledge, innovations and practices …

In other words, it creates a moral imperative (if not an enforceable obligation) upon countries and corporations to consult with local communities and share equitably with them the financial rewards arising from their exploitation of local bio-resources and knowledge. The 22 [2.10]

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application of the principles of Article 8(j) and the Convention overall relates particularly, but not exclusively, to the patents area of IP. Australia became party to the Convention on 18 June 1993. But standards in these multilateral conventions are increasingly being overtaken by a complex network of bilateral and regional investment treaties and free trade agreements (FTAs).

World Trade Organization and TRIPS [2.20] The leading international body responsible for IP protection in the global context is the World Trade Organization (WTO). As a formal international body and the successor to GATT IV (the General Agreement on Tariffs and Trade IV), the WTO was created in 1995 by the Marrakesh Agreement Establishing the World Trade Organization, after more than a decade of negotiation by signatories to GATT IV. The Agreement was concluded on 15 April 1994, and the WTO came into effect on 1 January 1995. The WTO currently has 164 members (as at July 2016), including most of the world’s developed nations. Afghanistan (29 July 2016), the Seychelles (26 April 2015), and Yemen (26 June 2014) are the most recent members. Included amongst the members is the European Union. Another 23 states have observer status, most seeking membership. Andorra, Azerbaijan, Bahamas, Belarus, Bhutan, Bosnia and Herzegovina, Comoros, Equatorial Guinea, Ethiopia, Holy See (Vatican), Iran, Iraq, Lebanese Republic, Libya, Sao Tomé and Principe, Serbia, Sudan, Syrian Arab Republic, and Uzbekistan have all applied to join. The process of accession to the WTO requires an applicant state to demonstrate that they have established a domestic regime to the WTO standards in a number of key trade areas, including IP protection. The Marrakesh Agreement and its subordinate agreements, being international conventions and treaties, impose conditions upon its signatory parties in accordance with the requirements of the Vienna Convention on the Law of Treaties (VCLT). A key part of the creation of the WTO included the agreed settlement and introduction of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS):

• In formal terms, TRIPS constitutes Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization. • WTO accession or membership binds member states to adhere to TRIPS and its protection provisions in their national legislation. • TRIPS was the minimum-standards benchmark for IP protection standards in 1995, but it has since been overtaken by both WIPO treaties, as well as a complex network of bilateral and regional trade agreements, which invariably include chapters on enhancing IP rights protection. • Although a WTO agreement, TRIPS is administered by WIPO. In recent years, the standing of the WTO in the global arena has become somewhat eroded with its failure to reach consensus on a number of major trade issues, notably the reduction of trade barriers, agricultural tariffs, and public health and access to patented medicines. Commitment by WTO members to negotiate on these areas (which became known as the Doha Development Agenda) was reached at the WTO Fourth Ministerial Meeting in Doha, Qatar, in 2001. However, little progress has been made since 2001, and negotiations have largely stalled since 2008. [2.20]

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Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) [2.30] TRIPS constitutes Annex 1C of the Agreement Establishing the World Trade Organisation 1994 (the Marrakesh Agreement). It is an extensive agreement comprising 73 articles over seven major Parts. The Agreement covers eight major areas of intellectual property rights, namely:

• Copyright; • Trademarks; • Geographical indications; • Patents; • Industrial designs; • Layout designs of integrated circuits; • Protection of Undisclosed Information; • Control of Anti-Competitive Practices in Contractual Licences. TRIPS was concluded on 15 April 1994 and entered into force on 1 January 1995. In accordance with the requirements of Article II.2 of the Marrakesh Agreement, TRIPS is binding on all members of the WTO. TRIPS was created not with the view of establishing an entirely new regulation, but with the intention of supplementing and developing some sense of cohesion with the then existing major international conventions on IP protection, namely the Berne, Paris and Rome Conventions, and the Treaty on Intellectual Property in Respect of Integrated Circuits (1989) (Washington Treaty). TRIPS is based upon, and supplements, these conventions by providing additional obligations and a higher level of protection. The supplemented provisions become compulsory, even for WTO member countries that have not ratified the above conventions (except for the Rome Convention, which only continues to be binding on states that have joined it), by virtue of their WTO membership. However, nothing in TRIPS may derogate from any existing obligations that members may have to each other under the Paris, Berne, or Rome Conventions or the Washington Treaty. In terms of its coverage, TRIPS is still the most comprehensive multilateral agreement on IP rights, encompassing most types of rights, with the particular exceptions of plant breeders’ rights, utility models and traditional knowledge. The general goals of TRIPS, as enunciated in its Preamble, include the reduction of distortions and impediments to international trade, the promotion of effective and adequate protection of IP rights, and ensuring that measures and procedures to enforce IP rights do not themselves become barriers to legitimate trade. Although the Preamble recognises that IP rights are private rights, the underlying public policy objectives of national systems for the protection of IP, including developmental and technological objectives, are also recognised. The Preamble also acknowledges that least-developed countries require maximum flexibility in the domestic implementation of their laws and regulations in order to enable them to create a sound and viable technological base. It has been suggested that TRIPS was successfully advocated by the governments of the industrialised world in order to obtain worldwide protection for the innovations and 24 [2.30]

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technologies generated by their corporations. 1 Industrialised countries forced developing countries to negotiate an agreement on TRIPS with the clear objective of universalising the standards of IP protection that they had incorporated in their own domestic legislation once they had obtained a high level of technological and industrial capacity. A number of factors that converged during the 1980s and 1990s explain the priority given by some countries, notably the United States, to a far-reaching enhancement of the IP system worldwide, namely the: • growing importance of technology as a factor in international competition; • elimination or reduction of trade barriers in developing countries, which increased both the opportunity for direct exports from those countries and their attractiveness to multinational companies to gain access to those markets without the obligation for local investment or technology transfer; • erosion of US supremacy in manufacturing and technology by Japan and, subsequently, Asian “tiger-economies”, this being attributable to too-open policies in respect of technology transfer and innovation imitation. 2 The perception that this declining American competitiveness was largely due to losses from foreign piracy and counterfeiting was effectively promoted by US industry lobbies – particularly the pharmaceutical, software and recording industries – which convinced the US Government of the need to link trade and protection of IP rights to preserve US technology supremacy and the consequent economic advantage. Thus, TRIPS was not merely conceived as an instrument to combat counterfeiting and piracy, but also a component of a policy of “technological protectionism” by establishing international rules to counter a declining competitive position in world markets. 3 The adoption of TRIPS represented a major victory for industrialised countries and for their most active industry lobbies. It mirrored the standards of intellectual property rights protection that were suitable for industrialised countries at their then prevailing level of development. It thus has several serious and adverse implications for developing countries, as many of its protectionist provisions could place higher obstacles in the path of these countries in their endeavour to achieve technological progress. Preamble and Part I [2.40] The general goals of TRIPS, as enunciated in its Preamble, include the reduction of distortions and impediments to international trade, the promotion of effective and adequate protection of intellectual property rights, and ensuring that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade. Although the Preamble recognises that intellectual property rights are private rights, the underlying public policy objectives of national systems for the protection of intellectual property, including developmental and technological objectives, are also recognised. 1 2 3

C Correa, Intellectual Property Rights, the WTO and Developing Countries: The TRIPS Agreement and Policy Options (Zen Books, London, 2002), p 3. C Correa, Intellectual Property Rights, the WTO and Developing Countries: The TRIPS Agreement and Policy Options (Zen Books, London, 2002), pp 3-4. C Correa, Intellectual Property Rights, the WTO and Developing Countries: The TRIPS Agreement and Policy Options (Zen Books, London, 2002), pp 4-5. [2.40]

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Intellectual Property: Commentary and Materials

The Preamble also acknowledges that least-developed countries require maximum flexibility in the domestic implementation of their laws and regulations in order to enable them to create a sound and viable technological base. The Agreement’s public policy objectives are further enunciated in Part I by a declaration on the fundamental objective of TRIPS, and on the equally fundamental principles by which members should be guided formulating their laws relating to the Agreement. Article 7 Objectives provide that the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of both producers and users. Article 8 Principles recognise that members have the right to adopt measures necessary for the protection of public health and other public interest reasons in sectors of vital importance to their socio-economic and technological development. Such measures must still be consistent with TRIPS’ provisions. Part I also set out further general provisions and basic principles governing the protection of intellectual property rights. They establish minimum standards to be applied by all WTO members, these same standards also being the maximum standards that members are obliged to adopt. However members are not prevented from adopting greater protection than that required by TRIPS, provided that such protection does not contravene the TRIPS provisions. Members are also free to determine the appropriate method of implementing the TRIPS provisions within their own legal systems and practices. Articles 3 – 5 stipulate the fundamental obligations on national and most-favoured-nation (MFN) treatment of foreign nationals, which are common to all categories of intellectual property covered by the Agreement. These obligations cover not only the substantive standards of protection but also matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well as those matters affecting the use of intellectual property rights specifically addressed in the Agreement. National treatment provision forbids discrimination between a member’s own nationals and the nationals of other members, and requires the member to accord treatment no less favourable than that accorded to its own nationals. The MFN treatment obligation forbids discrimination between the nationals of other members by requiring that any advantage a member grants to the nationals of another member must be extended immediately and unconditionally to the nationals of all other members, even if such treatment is more favourable than that which the member gives to its own nationals. Part II [2.50] TRIPS Part II addresses each intellectual property right in succession, and sets out the

minimum standards of protection to be provided by each member. Each of the main elements of protection is defined, namely the scope of the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, any particular special provisions (such as the reversal of burden of proof in respect of process patents), and the minimum duration of protection. TRIPS sets these standards by requiring compliance with the substantive obligations of the major pre-existing conventions, and by adding a number of additional obligations on matters where the pre-existing conventions are silent or where they are seen by their proponents as being inadequate. 26 [2.50]

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Copyright (Articles 9 – 14). Parties are required to comply with the substantive provisions of the Berne Convention (Paris 1971 version), although they are not obliged to protect moral rights as stipulated in Article 6bis of that Convention. Protection is extended to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such. Computer programs, whether in source or object code, are protected as literary works, as are databases and other similar data compilations, whether in a machine-readable or other form, provided that they constitute intellectual creations because of the selection or arrangement of their contents. Rental rights for computer programs, and cinematographic works in certain circumstances, are established. Performers may prevent the unauthorised fixation, reproduction and broadcast of their live performance, although the right covers only aural and not audiovisual fixations. Producers of phonograms are entitled to exclusive reproduction and exclusive rental rights, while broadcasting organisations have the right to prohibit unauthorised fixation, reproduction, and re-broadcasting. Literary works are protected for the life of the author plus 50 years; performances and recordings are protected for 50 years; while broadcasts are protected for 20 years. Trade marks and service marks (Articles 15 – 21). The The fundamental principle of trademark protection is that any sign, or any combination of signs, capable of distinguishing the goods and services of one undertaking from others, must be eligible for registration as a trademark, provided that it is visually perceptible. Such signs may take the form of particular words, including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination thereof. Marks that have become well-known in a particular country shall enjoy additional protection. In addition, the Agreement lays down a number of obligations with regard to the use of trade marks and service marks, their term of protection (at least seven years with unlimited renewal), and their licensing or assignment. For example, requirements that foreign marks be used in conjunction with local marks would, as a general rule, be prohibited. Geographical indications (Articles 22 – 24). The geographical indications provisions represent a delicate balance between conflicting European interests seeking high levels of protection, particularly for wines and spirits, and North American interests which are more interested in limiting protection than extending it. All parties must provide means to prevent the use of any indication which misleads the consumer as to the origin of goods, and any use constituting an act of unfair competition. A higher level of protection is provided for geographical indications for wines and spirits, which are protected even where there is no danger of the public being misled as to the true origin. Exceptions are allowed for names that have already become generic terms. Provision is made for further negotiations to establish a multilateral system of notification and registration of geographical indications for wines. Industrial designs (Articles 25 – 26). TRIPS devotes just two articles to protection of industrial designs, less than the attention given to the additional protection for geographical indications attached to wines and spirits. Designs are protected for a period of 10 years. Owners of protected designs are able to prevent the manufacture, sale or importation of articles bearing or embodying a design that is a copy of the protected design. Patents (Articles 27 – 34). Members are required to make patents available for any invention, whether for a product or process, in all fields of technology without discrimination, provided that the invention is new, involves an inventive step, and is capable of industrial application. It also requires that patents be available and patent rights be enjoyable without [2.50]

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discrimination as to the place of invention, or whether products are imported or locally produced. Three exceptions are permitted to this basic rule on patentability, namely: • inventions contrary to ordre public or morality, including inventions dangerous to human, animal or plant life or health or seriously prejudicial to the environment; • diagnostic, therapeutic and surgical methods for the treatment of humans or animals; • plants and animals other than micro-organisms and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. The term of protection available shall extend for a period of 20 years from the date of filing of the patent application. Detailed conditions are set for compulsory licensing or governmental use of patents without the authorisation of the patent owner. Rights conferred in respect of patents for processes must extend to the products directly obtained by the process; under certain conditions, reversal of burden of proof may apply in respect of patented processes Plant varieties must be protectable either by patents or by a sui generis system, such as the provision of breeders’ rights by the International Union for the Protection of New Varieties of Plants (1961) (UPOV) established by the International Convention for the Protection of New Varieties of Plants (1961). Layout designs of integrated circuits (Articles 35 – 38). Members are required to provide protection on the basis of the Washington Treaty 1989. Protection must be available for a minimum period of 10 years. Trade secrets and know-how (Articles 39 – 40). Undisclosed information and trade secrets are deemed to be protectable under the rules of unfair competition. The protection does not confer any exclusive right, but provides the right (and the obligation) to prevent practices contrary to honest commercial practices with respect to both the disclosure and acquisition of undisclosed information. Persons and legal entities must be able to prevent information lawfully within their control from being acquired by, or disclosed to, others without their consent in a manner contrary to honest commercial practices, provided that such information: • is secret in that it is not generally known, either as a whole or in its various parts, to persons who would normally deal with that kind of information; • has commercial value because of its secret state; and • has been subject to reasonable steps by its owner to keep it secret. Article 39.3 makes a particular requirement to provide protection against unfair commercial use of undisclosed test or other data submitted as a condition for gaining market approval for new pharmaceutical or agricultural chemical products or for products which utilise new chemical entities. In respect of anti-competitive practices in contractual licences, consultations between governments must occur where there is reason to believe that licensing practices or conditions pertaining to IP rights constitute an abuse of these rights and have an adverse effect on competition. Remedies against such abuses must be consistent with the other provisions of the Agreement. Part III Enforcement [2.60] TRIPS Part III (Articles 41 - 61) sets out the obligations of member states to provide

procedures and remedies under domestic law to ensure that IP rights can be effectively enforced, by foreign right holders as well as by their own nationals. Procedures should permit effective action against infringement of IP rights but should be fair and equitable, not 28 [2.60]

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unnecessarily complicated or costly, and should not entail unreasonable time limits or unwarranted delays. They should include access to provisional measures, and allow for judicial review of final administrative decisions. There is no obligation to put in place a judicial system distinct from general law enforcement, or to give priority to the enforcement of IP rights in the allocation of resources or staff. The special requirements relating to members’ border measures constitute a significant proportion of the TRIPS enforcement obligations. They establish a scheme for suspension of the release into circulation of suspected counterfeit trademark or pirated copyright goods, either on application by a right holder or by ex officio action by border authorities. A footnote to Part III defines the term “counterfeit trademark goods” as “any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation”. The term “pirated copyright goods” is defined as “any goods which are copies made without consent of the rights holder in the country of production and which are made directly or indirectly from any article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation”. Finally, while IP infringements are generally civil matters members must provide for criminal procedures and penalties at least in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale. Remedies should include imprisonment and fines sufficient to act as a deterrent. Parts IV–VII [2.70] TRIPS Part IV (Article 62) addresses the acquisition and maintenance of IP rights and related inter partes procedures. Part V (Articles 63 and 64) provides for dispute settlement to take place under the integrated GATT dispute-settlement procedures as revised in the Uruguay Round. Part VI (Articles 65 – 67) deal with implementation. It envisages a one-year transition period for developed countries to bring their legislation and practices into conformity. Developing countries and countries in the process of transformation from a centrally planned economy into that of a market economy have a five-year transition period, and leastdeveloped countries have 11 years. Part VII (Articles 68 – 73) provides for the establishment of a Council for Trade-Related Aspects of Intellectual Property Rights to monitor the operation of the Agreement and countries’compliance with it. Subject to certain exceptions, the general rule is that the obligations in the Agreement apply to existing IP rights as well as to new ones.

[2.70]

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Intellectual Property: Commentary and Materials

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) [2.80] Marrakesh Agreement Establishing the World Trade Organization, Annex 1C: Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Articles 1 – 4, 7, 8 General Provisions and Basic Principles Article 1 Nature and Scope of Obligations 1.

Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.

2.

For the purposes of this Agreement, the term “intellectual property” refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II.

3.

Members shall accord the treatment provided for in this Agreement to the nationals of other Members. In respect of the relevant intellectual property right, the nationals of other Members shall be understood as those natural or legal persons that would meet the criteria for eligibility for protection provided for in the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits, were all Members of the WTO members of those conventions. 4 Any Member availing itself of the possibilities provided in paragraph 3 of Article 5 or paragraph 2 of Article 6 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for Trade-Related Aspects of Intellectual Property Rights (the “Council for TRIPS”).

Article 2 Intellectual Property Conventions 1.

In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).

2.

Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits.

Article 3 National Treatment (a)

4

5

30

Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection 5 of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the In this Agreement, “Paris Convention” refers to the Paris Convention for the Protection of Industrial Property; “Paris Convention (1967)” refers to the Stockholm Act of this Convention of 14 July 1967. “Berne Convention” refers to the Berne Convention for the Protection of Literary and Artistic Works; “Berne Convention (1971)” refers to the Paris Act of this Convention of 24 July 1971. “Rome Convention” refers to the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, adopted at Rome on 26 October 1961. “Treaty on Intellectual Property in Respect of Integrated Circuits” (IPIC Treaty) refers to the Treaty on Intellectual Property in Respect of Integrated Circuits, adopted at Washington on 26 May 1989. “WTO Agreement” refers to the Agreement Establishing the World Trade Organization. For the purposes of Articles 3 and 4, “protection” shall include matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well as those matters affecting the use of intellectual property rights specifically addressed in this Agreement. [2.80]

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Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) cont. Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreement. Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for TRIPS. (b)

Members may avail themselves of the exceptions permitted under paragraph 1 in relation to judicial and administrative procedures, including the designation of an address for service or the appointment of an agent within the jurisdiction of a Member, only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions of this Agreement and where such practices are not applied in a manner which would constitute a disguised restriction on trade.

Article 4 Most-Favoured-Nation Treatment With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members. Exempted from this obligation are any advantage, favour, privilege or immunity accorded by a Member: 1.

deriving from international agreements on judicial assistance or law enforcement of a general nature and not particularly confined to the protection of intellectual property;

2.

granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention authorizing that the treatment accorded be a function not of national treatment but of the treatment accorded in another country;

3.

in respect of the rights of performers, producers of phonograms and broadcasting organizations not provided under this Agreement;

4.

deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members.

… Article 7 Objectives The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Article 8 Principles

• Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement.

[2.80]

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Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) cont.

• Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.

World Intellectual Property Organization (WIPO) [2.90] The predecessor of the World Intellectual Property Organization (WIPO) was established originally in 1896 when the administering bodies of the Paris Convention and the Berne Convention joined together. WIPO in its present guise came into being following the entry into force of the Convention Establishing the World Intellectual Property Organization 1967 (WIPO Convention). WIPO has been a specialised self-funding agency of the United Nations since 1974. It currently (July 2016) has 189 member states (most of whom are also members of the WTO). WIPO describes itself as the global forum for intellectual property services, policy, information and cooperation. The WIPO Convention, Article 5, provides that membership is open to any state that is a member of the Paris Union for the Protection of Industrial Property, or of the Berne Union for the Protection of Literary and Artistic Works:

(ii)

or is a member of the United Nations, or of any of the United Nations’ Specialized Agencies, or of the International Atomic Energy Agency, or is a party to the Statute of the International Court of Justice;

(iii)

or is invited by the WIPO General Assembly to become a Member State of the Organization. WIPO administers TRIPS on behalf of the WTO, but also negotiates and brings into effect multilateral IP protection and management treaties in its own right. WIPO has largely created and now administers the following multilateral agreements, which can be broadly classified into three main groups according to their functions: IP protection treaties, classification treaties and global protection treaties.

TABLE 2.1 Treaties Administered by WIPO WIPO treaties Beijing (audiovisual performances Berne (literary works) Brussels (satellite signals) Geneva (phonograms) Madrid (indications of source) 32 [2.90]

Year into force Member states IP Protection Treaties Not yet in force 15

Australian accession -

1883 (1971)

183

1928

1974

37

1990

1971

79

1974

1891

36

-

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WIPO treaties Marrakesh VIP (visually impaired) Nairobi (Olympic symbol) Paris (industrial property) Patent Law Treaty (PLT) Rome (performers, producers, broadcasters) Singapore (trade marks) Trademark Law Treaty (TLT) Washington World Copyright Treaty (WCT) World Performances and Phonograms Treaty (WPPT) Locarno (designs) (9th ed) Nice (marks classification) (10th ed) Strasbourg (patent classes) Vienna (marks elements) Budapest (microorganisms) Hague (industrial designs) Lisbon (appellations of origin) Madrid Agreement (marks) Madrid Protocol (marks) Patent Cooperation Treaty (PCT)

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Year into force 2016

Member states 25

Australian accession 2015

1981

52



1883 (1979)

194

1925

2005

39

2009

1961

92

1992

2006

45

2009

1994

54

1998

not yet in force 2002

3 94

– 2007

2002

94

2007

Classification Treaties 1968 54



1957 (2012)

84

1961

1971

62

1975

1973

32



Global Protection Treaties 1977 80

1987

1925 (1999)

66



1958

28



1891 (1979)

55



1989

98

2001

1970

151

1980

[2.90]

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WIPO treaties International Convention for the Protection of New Plants (UPOV) (plant varieties)*

Year into force 1961 (1991)

Member states 74

Australian accession 1989

(as at 01/01/2017) *The International Union for the Protection of New Varieties of Plants (UPOV), established by the International Convention for the Protection of New Varieties of Plants, is an independent intergovernmental organisation having legal personality. Pursuant to an agreement concluded between WIPO and UPOV, the Director-General of WIPO is the Secretary-General of UPOV and WIPO provides administrative and financial services to UPOV. The WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT) deserve particular attention. These are commonly known as the “internet treaties”, since they are aimed at protecting copyright and neighbouring rights in the digital environment. The WCT and WPPT were approved by WIPO members in 1996. However, it took another six years until either treaty received the requisite minimum 30 accessions to enable them to come into force. The primary objective of both the WCT and WPPT is to establish and raise the level of international protection for copyright and related rights that were established before the development and widespread use of personal computers and the internet. The WCT supplements the Berne Convention and introduces new and far-reaching norms to protect the rights of authors of literary and artistic works within the digital environment. Similarly, the WPPT builds upon the Rome Convention, and serves to safeguard the interests of producers of phonograms and performers whose performances are fixed in phonograms. In particular, both treaties raise the minimum standards of global IP protection with respect to internet-based delivery of copyrighted works. Both treaties require signatories to provide a framework of basic rights to enable creators of protectable work to commercially exploit their creations and to control the way they are used and by others. Most importantly, the treaties ensure that the owners of those rights will continue to be protected when their works are disseminated through new technologies and communications systems such as the internet. The treaties thus clarify that existing rights continue to apply in the digital environment, and create new online rights. Australia became a member of WIPO in 1972, and a member of the WTO upon its establishment in 1995. Australia thereby acceded to TRIPS at the same time as it became a member of the WTO.

Bilateral and regional trade agreements with IP provisions [2.100] While TRIPS has set the minimum international standards for IP protection, the

nature of these standards and universal adherence to them has still created difficulties and challenges for developing countries, and least developed countries. It has also generated a considerable degree of frustration and dissatisfaction for a number of the major industrialised nations. In some respects, TRIPS has become somewhat superseded by the emergence of the new round of IP lawmaking in the post-TRIPS world. WTO has stumbled at its recent 34 [2.100]

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ministerial meetings on efforts to liberalise global trade, and to also inject a greater degree of equity and access into TRIPS. Failure to conclude the Doha Rounds after 13 years of rounds of largely fruitless negotiations, calls into question WTO’s continuing existence as the lead forum for the global trade agenda. At the same time, WIPO has been confronted with its own self-examination debate over proposals and counter-proposals which have the potential to significantly change its position and role in the global IP arena. The new “international standard” of IP protection in practical terms is fast becoming that which is defined by the terms enshrined in the latest bilateral or regional trade agreement which the United States and the EU in particular may have concluded. The “highest international standards” have become very much a dynamic formula in a bilateral context rather than the multilateral forums. Bilateral and regional trade and investment agreements, particularly free trade agreements (FTAs), have become the most common medium for developed countries to impose enhanced IP protection standards, or “TRIPS-plus” provisions as they have become popularly known outside the forums of the WTO and WIPO. The definition of “investment” in these agreements invariably includes intellectual property rights. These agreements typically contain extensive IP protection provisions, either under the broad “investment” definition or within specific IP provisions, which the major developed countries utilise to establish standards which exceed those enshrined in TRIPS. In so doing, they tend to remove or reduce the flexibilities provided by or permitted in TRIPS, or to even establish protection in new areas of IP rights that go beyond the parameters of TRIPS. The process of utilising trade and investment agreements to impose TRIPS-plus IP protection has been described as a process that constitutes “raising the bar” or a “global ratcheting” of IP protection benchmarks. 6 This process, which is seeing certain national intellectual property norms globalise upwards to those higher standards at a remarkable rate, is dependent upon the following key elements: • forum shifting – in which the standard-setting agenda is moved from fora in which difficulties are encountered in imposing TRIPS-plus standards (such as the WTO) to fora in which success is more likely to be achieved (such as bilateral and regional agreements); • co-ordinated bilateral and multilateral intellectual property protection strategies; and • entrenchment in bilateral and regional agreements of the principle of ever-increasing minimum protection standards. 7 The two major protagonists in this process of global enhancement and harmonisation through integration are the United States and the European Union. [2.110] Bilateral and regional trade and investment agreements are promoted by their

advocates as being stepping stones towards full integration of their participants into a global free market economy, by ensuring that governments implement the liberalisation, privatisation and deregulation measures of the globalisation agenda. These advocates argue that the introduction of free trade and the removal of regulations on investment that bilateral agreements generate will lead to economic growth, the reduction of poverty, increased living standards and employment opportunities. 6 7

P Drahos, “BITs and BIPs – Bilateralism in Intellectual Property” (2001) 4 Journal of World Intellectual Property 791 at 798–99. P Drahos, “BITs and BIPs – Bilateralism in Intellectual Property” (2001) 4 Journal of World Intellectual Property 791 at 798. [2.110]

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The critics of bilateral agreements, on the other hand, argue that the agreements merely allow transnational corporations more freedom to exploit workers and to shape the national and global economies of the junior partners to suit the corporations’ interests. Some commentators have argued at length that the self-interest mechanisms that are particular to the US-sponsored bilateral agreements – such as the conditions relating to the protection of IP rights, their enforcement, and the control or check mechanisms for managing the agreements – are tantamount to an intrusion into domestic lawmaking. Bilateral agreements have been critically painted as part of an insidious fast-expanding and bewildering web, popping up like hydra’s heads throughout the world, and constructing in patchwork fashion what the developed nations have not been able to impose through such international forums as the WTO, or through multilateral negotiations. 8 Bilateral agreements are also seen as insidious because they are invariably conducted in an unequal contest in closed sessions between unequal partners – mainly a developed country in contest with a developing, or least developed, country. As two commentators on bilateralism so colourfully, yet accurately, describe the outcome of such a scenario, “[b]ilateralism is like cooking an elephant and rabbit stew: however you mix the ingredients, it ends up tasting like elephant stew”. 9 It is estimated that there are currently almost 3,000 bilateral investment treaties in force globally.

AUSTRALIAN DOMESTIC CONTEXT ON IP [2.120] Since Federation, primary responsibility for IP laws has been vested in the

Commonwealth Parliament. Section 51(xviii) of the Australian Constitution gives the Commonwealth a concurrent power “to make laws for the peace, order, and good government of the Commonwealth with respect to (xvii) copyright, patents of inventions and designs, and trade marks”. This specificity has led to a consideration of the constitutional limits of the provision. The constitutionality of “Union” trade marks, performer’s rights, plant variety rights and plant breeder’s rights has been debated. This power has been significantly supplemented by the external affairs power s 51(xxix). The High Court interpretation of this power in, for example, Commonwealth v Tasmania (1983) 158 CLR 1 (Tasmanian Dams Case) and Minister of State for Immigration and Ethnic Affairs v Teoh (1995) 183 CLR 273 (Teoh Case) has been that it validates Commonwealth legislation enacted in accordance with international treaties to which Australia is a signatory. Thus, for example, the Commonwealth moral rights legislation is valid under the external affairs power even though moral rights are not specifically mentioned in s 51(xviii). In Grain Pool of WA v Commonwealth (2000) 202 CLR 479, the High Court supported a generous interpretative approach to s 51(xviii), supporting “fresh rights in the nature of copyright, patents of inventions and designs and trade marks” (emphasis added). The Court acknowledged the need to “make allowance for the dynamism which, even in 1900, was inherent in any understanding of the terms used in s 51(xviii)” (at 493). Potential to enact some IP legislation by relying upon the postal and telegraphic power (s 51(v)) and the external 8 9

36

A Choudry, Bilateral Trade and Investment Deals a Serious Challenge to Global Justice Movements, GRAIN (December 2003), available at http://www.grain.org/rights/tripsplus.cfm?id=2 (cited 2 June 2011). P Drahos and J Braithwaite, Information Feudalism: Who Owns the Knowledge Economy? (Earthscan, London, 2002), p 194. [2.120]

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affairs power (s 51(xxix)) was also acknowledged. Given the High Court’s support for “fresh rights” and the importance of treaty-making to contemporary IP law reform, constitutional challenges are likely to remain uncommon. In Australia, the various types of IP are protected by the following domestic laws: • Copyright Act 1968 (Cth), which replaced the earlier Copyright Act 1905 (Cth), and Copyright Act 1912 (Cth) (which was a simple translation of the Copyright Act 1911 (UK)). The Act has been extensively amended and expanded since its initial enactment, including by the following legislation: – Copyright Amendment Act 1980 (Cth); – Copyright Amendment Act 1989 (Cth); – Copyright Amendment (Re-enactment) Act 1993 (Cth) (performers’ rights); – Copyright (World Trade Organization Amendments) Act 1994 (Cth); – Copyright Amendment Act (No 1) 1998 (Cth); – Copyright Amendment Act (No 2) 1998 (Cth) (sound recordings); – Copyright Amendment (Computer Programs) Act 1999 (Cth); – Copyright Amendment (Digital Agenda) Act 2000 (Cth); – Copyright Amendment (Moral Rights) Act 2000 (Cth); – Copyright Legislation Amendment Act 2004 (Cth); – US Free Trade Agreement Implementation Act 2004 (Cth); – Copyright Amendment (Film Directors’ Rights) Act 2005 (Cth); – Copyright Amendment Act 2006 (Cth); – Copyright Amendment (Online Infringement) Act 2015 (Cth). • Patents Act 1990 (Cth), which replaced the original Patents Act 1903 (Cth), and the Patents Act 1952 (Cth) (again, largely based on the Patents Act 1949 (UK)); – Patents Amendment Act 2001 (Cth); – Patents Amendment (Innovation Patents) Act 2000 (Cth). • Trade Marks Act 1995 (Cth), which replaced the Trade Marks Act 1905 (Cth) (which was significantly expanded in 1948 and again in 1978); – Trade Marks Amendment (Madrid Protocol) Act 2000 (Cth); – Trade Marks Amendment Act 2006 (Cth); – Trade Marks Amendment (Tobacco Plain Packaging) Act 2011 (Cth)). • Circuit Layouts Act 1989 (Cth); • Plant Breeder’s Rights Act 1994 (Cth) (formerly the Plant Varieties Act 1987 (Cth)); – Plant Breeder’s Rights Amendment Act 2002 (Cth); • Designs Act 2003 (Cth), which replaced the Designs Act 1906 (Cth)). However, the statutory protection regime for IP rights extends beyond the above sui generis IP laws. For example, the Australian Consumer Law, s 18 (being part of Sch 2 of the Competition and Consumer Act 2010 (Cth) and replacing the Trade Practices Act 1974 (Cth), s 52), prohibits conduct by corporations in trade or commerce that is misleading or deceptive or is likely to mislead or deceive. The US Free Trade Implementation Act 2004 (Cth) [2.120]

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introduced a number of changes to the above Acts, particularly in the area of copyright, as part of the implementation of the Australia–US Free Trade Agreement (AUSFTA). Other legislation that applies across the board to IP rights generally, or which impacts directly on the above primary IP acts or key provisions thereof, include the following: • Intellectual Property Laws Amendment Act 2006 (Cth); • Australian Wine and Brandy Corporation Amendment Act 2010 (Cth); • Resale Royalty Right for Visual Artists Act 2011 (Cth); • Tobacco Plain Packaging Act 2011 (Cth) (and the associated Trade Marks Amendment (Tobacco Plain Packaging) Act 2011); • Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth); • Intellectual Property Laws Amendment Act 2015 (Cth).

AUSTRALIA’S REGIONAL IP-STRONG AGREEMENTS [2.130] According to the Department of Foreign Affairs and Trade (DFAT), Australia has 10

FTAs currently in force – with New Zealand, Singapore, Thailand, United States, Chile, the Association of South East Asian Nations (ASEAN) (with New Zealand), Malaysia, Korea, Japan and China. The countries covered by these FTAs account for 67 per cent of Australia’s total trade. Australia has also recently signed (in February 2016) the Trans Pacific Partnership Agreement (TPPA). The Government is currently going through the necessary domestic political and legislative processes required to ratify the Agreement and to bring it into force in Australia.

Australia–United States Free Trade Agreement [2.140] Formal negotiations on Australia’s proposed FTA with the United States (AUSFTA) commenced in November 2002. Five rounds of negotiation were conducted between March 2003 and February 2004. The finalised agreement was agreed at Washington on 8 February 2004, and tabled in the Australian Parliament on 8 March 2004. The implementing legislation, the US Free Trade Implementation Act 2004 (Cth), was passed by Parliament in August 2004, and entered into force on 1 January 2005. The Agreement consists of 23 chapters, several annexes and a range of side letters (exchanges of letters). The IP provisions are incorporated in Chapter 17 of the Agreement, which is one of its most substantial chapters. Key points in the chapter include:

• stronger protection for copyright owners, including: – agreement to implement the WIPO “Internet Treaties” (WCT and WPPT) by entry into force of the Agreement, being the latest global IP standards on the treatment of digital copyright material; – an expeditious process for allowing copyright owners to engage with internet service providers (ISPs) and subscribers to deal with allegedly infringing copyright material on the internet; – tighter controls on circumventing technological protection of copyright material, and a mechanism for examining and, as necessary, introducing public interest exceptions in relation to technological protection measures; 38 [2.130]

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– other measures in relation to circumvention tools; – agreement on standards of copyright protection; – increased term of protection for copyright material from life of creator plus 50 years to life of creator plus 70 years; • enhanced IP enforcement, including: – increased criminal and civil protection against the unlawful decoding of encrypted program carrying satellite TV signals; – agreed criminal standards for copyright infringement, and on remedies and penalties; – reinforcement of Australia’s existing framework for industrial property protection. In addition, the Agreement includes agreement to work to reduce differences in law and practices, in the area of patents, trademarks and designs, and to promote bilateral and regional cooperation with respect to enforcement of border measures. It also provides for the introduction of transparent procedures into the marketing approval process for pharmaceuticals products coming off patents.

Australia–United States of America Free Trade Agreement [2.150] Australia–United States of America Free Trade Agreement, Article 17.1: General Provisions • Each Party shall, at a minimum, give effect to this Chapter. A Party may provide more extensive protection for, and enforcement of, intellectual property rights under its law than this Chapter requires, provided that the additional protection and enforcement is not inconsistent with this Agreement. International Agreements 2.

Each Party affirms that it has ratified or acceded to the following agreements: • the Patent Cooperation Treaty (1970); • the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974); • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989); • the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1980); • the International Convention for the Protection of New Varieties of Plants (1991); • the Trademark Law Treaty (1994); • the Paris Convention for the Protection of Industrial Property (1967) …; and • the Berne Convention for the Protection of Literary and Artistic Works (1971) ….

3.

Further to Article 1.1.2 (General), the Parties affirm their rights and obligations with respect to each other under the TRIPS Agreement.

4.

Each Party shall ratify or accede to the WIPO Copyright Treaty (1996) and the WIPO Performances and Phonograms Treaty (1996) by the date of entry into force of this Agreement, subject to the fulfilment of their necessary internal requirements.

5.

Each Party shall make its best efforts to comply with the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (1999), and the Patent Law Treaty (2000), subject to the enactment of laws necessary to apply those provisions in its territory. [2.150]

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Intellectual Property: Commentary and Materials

Australia–United States of America Free Trade Agreement cont. National Treatment 6.

In respect of all categories of intellectual property covered in this Chapter, each Party shall accord to nationals of the other Party treatment no less favourable than it accords to its own nationals with regard to the protection and enjoyment of such intellectual property rights and any benefits derived from such rights. With respect to secondary uses of phonograms by means of analogue communications and free over-the-air radio broadcasting, however, a Party may limit the rights of the performers and producers of the other Party to the rights its persons are accorded in the territory of the other Party. (emphasis added)

[Note] … protection includes matters affecting the availability, acquisition, scope, maintenance, and enforcement of IP rights, as well as those matters affecting the use of IP rights specifically covered by this Chapter. … protection also includes the prohibition on circumvention of effective technological measures specified in Article 17.4.7 and management information specified in Article 17.4.8.

The recent Korean, Japanese and Chinese Trade Agreements [2.160] During 2014 and 2015, Australia entered into ground-breaking bilateral trade

agreements with South Korea (entered into force 12 December 2014) (KAFTA), Japan (entered into force 15 January 2015) (JAEPA), and China (entered into force 15 December 2015) (CHAFTA), all of which include rather brief chapters on IP rights and their administration, particularly when contrasted with the AUSFTA IP chapter. The KAFTA IP Chapter (21 pages, 13 articles) is arguably the more comprehensive of these three recent agreements. It reinforces the parties’ commitments made under TRIPS. Attention is given early to national treatment and to specific commitments on patents, trademarks, copyright and related rights, geographical indications and enforcement. Some attention is given to civil, administrative and judicial procedures and remedies, as well as border measures. Perhaps not surprisingly, copyright in the digital environment, including technological protection measures rights management, and the internet receives the lion’s share of attention. The JAEPA IP Chapter (nine pages, 16 articles) also reinforces and builds on the parties’ existing rights and obligations under TRIPS. Rather than advocating increased protections standards, it focusses on the promotion of transparency and administration of those regimes. In relation to copyright, it provides for protection against unauthorised circumvention technological protection measures and also addresses the protection of undisclosed information. The chapter includes brief requirements related to border measures, and states that criminal penalties must be sufficient to provide a deterrent to future infringements. The CHAFTA IP Chapter 11 pages, 24 articles) is essentially a restatement of the parties’ existing international obligations. It includes provisions on various issues including national treatment, enforcement, border measures, geographical indications and cooperation.

The Trans-Pacific Partnership Agreement (TPPA) [2.170] The Trans-Pacific Partnership Agreement (TPPA) is a comprehensive multilateral free

trade agreement involving 12 Pacific Rim countries, namely, Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, the United States and Vietnam. Negotiations commenced in 2008 and were completed on 5 October 2015. The Agreement was signed by the negotiating parties on 4 February 2016 in Auckland, New Zealand. 40 [2.160]

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According to its promoters, the TPPA will increase economic liberalisation and integration in the Asia-Pacific region, particularly as membership expands. Accordingly, it encompasses the broad spectrum of trade and investment areas, including trade in goods, rules of origin, trade remedies, sanitary and phytosanitary measures, technical barriers to trade, trade in services, intellectual property, government procurement and competition policy. Its declared goals are to strengthen and broaden the mutually-beneficial linkages between member economies; enhance regional and global competitiveness; support the creation of jobs and new economic opportunities; promote economic growth and development; support innovation and help to alleviate poverty; and ensure the greatest benefits for the member peoples. 10 The Agreement constitutes a voluminous and complex treaty, comprising 30 chapters, 2700 pages (6000 pages including Schedules and side letters). The TPPA is contentious because of some of its provisions and because of the secretive nature of the negotiations. The IP Chapter (Chapter 18) also proved to be both complex and controversial. While other negotiating parties have proffered proposals, much of the debate and contentious argument over the Chapter focussed upon the leaked US negotiating positions, although some of the more extreme claims of those positions did not last through to the final agreed text. Nevertheless the Chapter is still extensive, detailed and complex, comprising 75 pages, 83 clauses; 161 footnotes; 6 annexes, and side letters. The stated objectives of the IP Chapter is that protection and enforcement of IP rights should contribute to technological innovation promotion and the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. Hence measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, are permitted, but only if such measures are still consistent with the provisions of this Chapter. Similarly, parties may take measures to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology, but only if they are still consistent with the provisions of this Chapter. The Chapter is a minimum standards template. It restates commitment to TRIPs, the Berne and Paris Conventions and a range of WIPO treaties. It emphasises cooperation between the parties in domestic and international IP policy, IP administration and registration systems, and policies involving the use of IP for research, innovation and economic growth (art 18.13). In the area of trademarks (arts 18 – 37), the chapter strengthens registration rights and limits cancellation and revocation grounds, and broadens the scope of protection for registered marks, well-known marks, certification marks, collective marks and electronic marks. Geographical indications receive particular attention, making them secondary and subject to trademarks, and thus operating their status as enshrined in TRIPS. Hence the grounds for cancellation and revocation, particularly when in conflict with trademarks, are liberalised. In the area of patents (arts 37 – 54), the range of patentable inventions are expanded to include inventions claimed as at least one of the following: new uses of a known product, new 10

See Australian Government Department of Foreign Affairs and Trade, “Trans-Pacific Partnership Agreement: Latest News”, 17 May 2016, at http://www.dfat.gov.au/trade/agreements/tpp/pages/trans-pacificpartnership-agreement-tpp.aspx. [2.170]

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Intellectual Property: Commentary and Materials

methods of using a known product, or new processes of using a known product. Parties are required to adjust the term of the patent to compensate for unreasonable delays in issuing patents – up to five years from date of filing or three years from examination – although the term “unreasonable” is and liability for delays are not explained. Greater restrictions are placed on agricultural and pharmaceutical-based inventions under patent application in respect of the access and use by third parties of submitted undisclosed test or other data concerning the safety and efficacy of the a new pharmaceutical product (or use). In the case of pharmaceutical products containing biologics – complex molecules such as proteins isolated from plants, animals and micro-organisms – a Party shall either provide effective market protection for a period of at least five years or eight years from the date of first marketing approval to provide effective market protection. In respect of copyright and neighbouring rights (arts 57 – 70), the Chapter focusses on the rights of the copyright holder, with little attention given correspondingly to the user, notwithstanding the noble objectives and principles asserted in the Chapter’s introductory articles. The rights of reproduction, communication to the public, distribution by authors, performers and producers of phonograms receive quite some attention and detail, although the terms of protection remain unchanged for the Australian context. Technological Protection Measures and Rights Management Information systems are also the subject of scrutiny, with the scope being widened and sanctions for their circumvention, removal or other interference being strengthened. Finally, the Chapter establishes safe harbour provisions for internet service providers to cooperate with copyright owners to deter the unauthorised storage and transmission of copyrighted materials. In contrast, traditional knowledge and cultural heritage systems, on the other hand, receive scant attention. In just one brief article with the parties merely recognising the relevance of IP systems to traditional knowledge associated with genetic resources when that traditional knowledge is related to IP systems, and agreeing to endeavour to cooperate with each other to enhance the understanding of issues connected with traditional knowledge associated with genetic resources, and genetic resources (art 18.16). The TPPA overall, as well as the IP Chapter, requires parties to introduce strong enforcement systems including civil procedures, provisional measures, border (customs) measures and criminal procedures and penalties for commercial scale trade mark counterfeiting and copyright or related rights piracy. The systems lower and broaden the threshold for criminal liability. The test for wilfulness, for example, in respect of copyright or related rights piracy, “on a commercial scale” includes (a) acts carried out for commercial advantage or financial gain; and (b) significant acts, not carried out for commercial advantage or financial gain, that have a substantial prejudicial impact on the interests of the copyright or related rights holder in relation to the marketplace. According to the Department of Foreign Affairs and Trade and to other commentators, 11 the IP Chapter requirements do not necessarily impose a major burden in the Australian context necessitating wholesale changes to our IP laws, and the impact may be relatively small. 11

See Australian Government Department of Foreign Affairs and Trade, “Trans-Pacific Partnership Agreement. Chapter Summary: Intellectual Property”, at http://www.dfat.gov.au/trade/agreements/tpp/summaries/ Documents/intellectual-property.PDF. See also P Ormonde Fitzpatrick, “Trans-Pacific Partnership (TPP) Agreement – Intellectual Property provisions”, at https://www.pof.com.au/trans-pacific-partnership-tppagreement-intellectual-property-provisions; Herbert Smith Freehills, “TPP impact: Intellectual property”, at http://www.herbertsmithfreehills.com/insights/issues/trans-pacific-partnership/intellectualproperty/tabs/ip-australia.

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They would maintain that Australia’s IP laws are already in or near general compliance because of the range and nature of enhancements undertaken as a consequence of AUSFTA obligations a decade or so earlier. However, the future of the TPPA is not certain. The Agreement requires ratification by original signatories who together account for 85 percent of combined gross domestic product (GDP) of all signatories before it can come into force. This means that it must be ratified by both the United States and Japan. While Japanese ratification may not be a problem, the United States is experiencing strong opposition from President Trump, Republicans and Democrats in both chambers of Congress and from the American electorate across the broad spectrum of political persuasion, to the extent that the United states may not ratify unless there are further changes to bring the Agreement as a whole and the IP provisions more into line with some of the unsuccessful US negotiating positions. Immediately following his inauguration on 20 January 2017, President Trump declared that the United States was withdrawing from the TPPA.

The Regional Comprehensive Economic Partnership [2.180] Even if the TPPA does not eventuate, Australia has another major regional trade

agreement with IP provisions in its sights. The Regional Comprehensive Economic Partnership (RCEP) is an ASEAN-centred proposal for a regional free trade area, which includes the 10 ASEAN member states and those countries with existing FTAs with ASEAN, namely, Australia, China, India, Japan, Republic of Korea and New Zealand. The 16 RCEP participating countries account for almost half of the world’s population, almost 30 per cent of global GDP, making it only marginally smaller than the TPPA. Of greater significance is the fact that, in many respects, it stands in direct competition to the TPPA. China, as the major promoter of the RCEP is not part of the TPPA negotiating membership, while the RCEP negotiating group does not include the United States. RCEP members are striving to finalise their treaty by early 2017 – many months before the TPPA can come into force. This would be a remarkable achievement in terms of international trade agreement creation, since the negotiations were only launched in November 2012. The RCEP and the TPPA cover common ground in terms of being major comprehensive trade treaties both covering trade in goods, investment, intellectual property and regional cooperation, as well as their negotiating participants. According to leaked versions of the negotiating documents (since, as is customary for trade deals, negotiations are held in secret), it appears that the RCEP will set lower regulatory standards and less mandatory harmonisation amongst members than the TPPA; it also appears to be making greater allowances for developing economies amongst its participating countries. While much of the language of the RCEP’s IP chapter appears similar to the TRIPS Agreement or the TPPA, there are some significant differences – such as a section on genetic resources, traditional knowledge and folklore substantially longer than the TPPA’s brief reference. It has been suggested by one expert commentator that, in the interests of striking agreement as soon as reasonably feasible, the RCEP IP chapter will promote lower protection standards that the TPPA, but still more expansive protection than the TRIPS Agreement or what is currently available in many Asian countries. 12 12

See P K Yu, “The RCEP and Intellectual Property Norm-Setting in the Asia-Pacific”, Intellectual Property Rights And Mega-Regional Trade Agreements (Global Perspectives and Challenges for the Intellectual Property [2.180]

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Intellectual Property: Commentary and Materials

The Australian Productivity Commission inquiry into IP [2.190] In August 2015, Treasurer Joe Hockey requested the Australian Productivity

Commission to undertake an inquiry into Australia’s intellectual property arrangements, including their effect on investment, competition, trade, innovation and consumer welfare. The Government sought to ensure that the appropriate balance exists between incentives for innovation and investment and the interests of both individuals and businesses, including small businesses, in accessing ideas and products. 13 In undertaking the inquiry, the Commission has been asked to examine the effect of the scope and duration of protection afforded by Australia’s IP system on research and innovation, access to and cost of goods and services, and competition, trade and investment. Its brief includes recommending changes to the current system that would improve the overall wellbeing of Australian society, which take account of Australia’s international trade obligations. In undertaking the inquiry and proposing changes, the Commission is to have regard to, amongst others: 1.

Australia’s international arrangements, including obligations accepted under bilateral, multilateral and regional trade agreements to which Australia is a party.

2.

The IP arrangements of Australia’s top IP trading partners and the experiences of these and other advanced economies in reforming their IP systems.

3.

The relative contribution of imported and domestically produced IP to the Australian economy, for example to Australia’s terms of trade and other economic impacts of IP protection, including on inward investment.

4.

Ensuring the intellectual property system will be efficient, effective and robust through time, in light of economic and technological changes.

5.

How proposed changes fit with, or may require changes to, other existing regulation or forms of assistance (such as research subsidies) currently providing incentives for the development of intellectual property.

6.

The findings and recommendations of the Harper Competition Policy Review, the Advisory Council on Intellectual Property’s Review of the Innovation Patent System, the Senate Economics References Committee’s inquiry into Australia’s innovation system the Australian Law Reform Commission’s Copyright and the Digital Economy report. The Commission submitted the Report to Government on 23 September 2016, which subsequently publicly released it on 21 December 2016. The Report is currently undergoing a further consultation process during early 2017. The Report strongly criticises the current Australian IP system. It asserts that Australia’s IP system has swung too far in favour of vocal rights holders and influential IP exporting nations, and that action must be taken to rebalance Australia’s IP arrangements. Australia overwhelmingly imports more IP than it exports, and this gap is widening. Most of the profits from excessive IP rights flow offshore. Many of Australia’s IP arrangements are locked-in by trade agreements, frustrating much needed change.

13

System, CEIPI-ICTSD Publication Series No 4) 2016, at SSRN: http://www.ssrn.com/abstract=2810579 Australian Government Productivity Commission, “Intellectual Property Arrangements: Terms of Reference”, at http://www.pc.gov.au/inquiries/current/intellectual-property/terms-of-reference.

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Australia’s patent system is poorly targeted – some patented inventions border on trivial and protection can last too long. For pharmaceuticals alone, excessive protection costs the Australian Government, taxpayers and consumers over a quarter of a billion dollars each year. While copyright protection lasts too long. To correct these imbalances, Australia needs a new, principles-based, fair use exception, to protect user rights without undermining the incentive to create.

Australian Government Productivity Commission Main Key Points [2.200] http://www.pc.gov.au/inquiries/current/intellectual-property/draft#glance

• Intellectual property (IP) arrangements need to balance the interests of rights holders with users. IP arrangements should: – encourage investment in IP that would not otherwise occur; – provide the minimum incentives necessary to encourage that investment; – resist impeding follow-on innovation, competition and access to goods and services. • Improvements are needed so Australia’s copyright and patent arrangements function effectively and efficiently. • Australia’s patent system grants protection too easily, allowing a proliferation of lowquality patents, frustrating the efforts of follow-on innovators, stymieing competition and raising costs to the community. To raise the quality of patents, the Australian Government should: – increase the degree of invention required to receive a patent, abolish the innovation patent, redesign extensions of term for pharmaceutical patents, limit business method and software patents, and use patent fees more effectively. • Australia’s copyright system has progressively expanded and protects works longer than necessary to encourage creative endeavour, with consumers bearing the cost. – A new system of user rights, including the introduction of a broad, principles-based fair use exception, is needed to help address this imbalance. – Better use of digital data and more accessible content are the key to reducing online copyright infringement, rather than increasing enforcement efforts or penalties. • While Australia’s enforcement system works relatively well for large rights holders, reforms can improve outcomes for small- and medium-sized enterprises. – Recent self-initiated reforms of the Federal Court, with an emphasis on lower costs and informal alternatives, should improve enforcement outcomes and replicate many of the benefits a dedicated IP court would offer. – Changes to the Federal Circuit Court are one option for improving dispute resolution options for small- and medium-sized enterprises. • Commercial transactions involving IP rights should be subject to competition law. The current exemption under the Competition and Consumer Act is based on outdated views and should be repealed. • Improving IP governance arrangements would help promote a coherent and integrated approach to IP policy development and implementation. [2.200]

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Intellectual Property: Commentary and Materials

• Multilateral and bilateral trade agreements are the primary determinant of Australia’s IP; arrangements. These agreements substantially constrain domestic IP policy flexibility. – An overly generous system of IP rights is particularly costly for Australia – a significant net importer of IP, with a growing trade deficit in IP-intensive goods and services. – The Australian Government should focus its international IP engagement on encouraging more balanced policy arrangements for patents and copyright, and reducing transaction and administrative costs for parties seeking IP rights in multiple jurisdictions. – Improving the evidence base and analysis that informs international engagement (especially trade agreements with IP provisions) would help the Australian Government avoid entering agreements that run counter to Australia’s interest.

The Australian tobacco plain packaging saga [2.210] The saga of the global disputation over the introduction of Australia’s tobacco plain packaging legislation in 2012 demonstrates the manner in which international trade interests and domestic IP can interact and sometimes generate domestic and international conflict between opposing interests. It further demonstrates that the two can never been seen as entirely operating in isolation. While international trade agreement may not always drive domestic IP policy, it will more often than not influence it. Throughout 2010 and 2011 the then Australian Government conducted a public health campaign incorporating formal public consultation processes and targeted consultation with stakeholders, as part of its legislative initiative to progressively restricting the promotion and sale of tobacco and tobacco products. The campaign culminated in the enactment of the Tobacco Plain Packaging Act 2011 (Cth) (the TPP Act), and related legislation, on 21 November 2011. The Government asserted at the time that the legislation is part of a comprehensive suite of reforms as a public health initiative that it is implementing to reduce smoking and its perceived harmful effects. The legislation was also one means by which the Government gives effect to Australia’s obligations under the World Health Organization Framework Convention on Tobacco Control (FCTC) [2005] ATS 7. Article 11 of the FCTC requires Parties to implement effective measures to ensure that tobacco packaging does not promote a tobacco product by any means that are false, misleading, deceptive or likely to create an erroneous impression about its characteristics or health effects. Article 13 requires Parties to implement comprehensive bans on tobacco advertising, promotion and sponsorship. Guidelines adopted by the Conference of the Parties to the FCTC for arts 11 and 13 recommend that Parties consider introducing plain packaging. The TPP Act requires that all tobacco packaging be in a particular shade of drab dark brown, as the optimal colour for achieving the objectives of the plain packaging legislation. It also imposes restrictions on the dimensions and make-up of tobacco packaging, preventing unique or “novelty” cigarette packets. However, brand names and variant names can continue to appear on tobacco packaging in specified locations, and in a standard colour, position, font style and size, enabling tobacco companies to continue to distinguish their products.

1. The HCA judgment [2.220] Four international tobacco companies brought an action against the Commonwealth

contending that the TPP Act and the consequent virtual prohibition on the use of their 46 [2.210]

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trademarks and other “get-up” on cigarette packaging, extinguished their rights in respect of their trademarks, copyright and other forms of intellectual property. This extinguishment was, in effect, an acquisition by the Commonwealth of their intellectual property rights. They argued that since such acquisition was undertaken on other than “just terms”, it was unconstitutional under s 51(xxxi) of the Australian Constitution (remember that iconic Australian movie The Castle?). They also maintained that the same prohibition was contrary to the rights granted to holders of registered trademarks under the Australian Trade Marks Act 1995 (Cth), the Patents Act 1990 (Cth), the Designs Act 2003 (Cth) and the Copyright Act 1968 (Cth). They further claimed that the TPP Act violated certain provisions of the WTO’s Agreement on Trade-Related Aspects on Intellectual Property Rights TRIPs Agreement and thus Australia’s obligations as a WTO member. On 5 October 2012, the Australian High Court handed down its decision in the matter of JT International SA v Commonwealth [2012] HCA 43, addressing the question as to whether or not the provisions of Tobacco Plain Packaging Act 2011 (Cth) would result in an acquisition of intellectual property within the meaning of s 51(xxxi) of the Australian Constitution, thereby invalidating the Act. The High Court relevantly found that no such acquisition had occurred because the Australian Government did not stand to accrue a proprietary benefit or interest as a result of restrictions on the packaging of tobacco products. Critically, Philip Morris’s earlier contentions that “it was sufficient that there has been obtained no more than some identifiable benefit or advantage”, which, while not of a proprietary character, is at least a benefit or advantage “relating to the ownership or use of property” was not accepted by the High Court. The High Court case was just one of a number of skirmishes in the war between the tobacco companies and the Australian Government of over plain packaging for cigarettes and tobacco products. 2. Claim under the Australia Hong-Kong BIT of 1993 [2.230] Philip Morris Asia (PMA), a Hong Kong company which owns 100 per cent of the

shares in Philip Morris Australia, initiated investor-state dispute resolution proceedings with the Permanent Court of Arbitration (PCA) through a notice of arbitration under a 1993 Bilateral Investment Treaty (BIT) between Australia and Hong Kong (Agreement between The Government of Hong Kong and the Government of Australia for the Promotion and Protection of Investments). PMA claimed that the plain packaging legislation was a substantial deprivation of the intellectual property and goodwill vested in its Australian subsidiary – similar argument to that propounded before the High Court. It argued that the deprivation constituted an expropriation of its investments and breached the terms of the Treaty in respect of the treatment of investments in Australia. PMA’s written notification of claim alleged that it was entitled to compensation “in an amount to be quantified but of the order of billions of Australian dollars”. The Australian Government’s formal response of December 2011 emphasised that PMA did not have any formal interest in the Australian company until February 2011, some 10 months after the Australian government had made its policy position clear and public. Hence the Government’s argument was that PMA acquired assets knowing that, according to it, the value of those assets was about to be reduced by “billions of Australian dollars”. In addition, the Australian Government had received submissions from Philip Morris about the proposed legislation well before February 2011, so that PMA could not claim that it was [2.230]

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not aware of the impending action by the Government. The Government argued that PMA acquired assets in Australia knowing that it could be adversely affected by the forthcoming legislation, its motive being to enable it to launch a claim under the BIT. The arbitration was conducted by the PCA under the United Nations Commission on International Trade Law (UNCITRAL) Arbitration Rules 2010. The tribunal was constituted on 15 May 2012, and issued its decision in December 2015, in which it stated that that it lacked jurisdiction to hear the arbitration. Reasons for the decision were issued in May 2016, and included the following: the initiation of this arbitration constitutes an abuse of rights, as the corporate restructuring by which the Claimant acquired the Australian subsidiaries occurred at a time when there was a reasonable prospect that the dispute would materialise and as it was carried out for the principal, if not sole, purpose of gaining Treaty protection. Accordingly, the claims raised in this arbitration are inadmissible and the Tribunal is precluded from exercising jurisdiction over this dispute.

3. The “Complaints” before the WTO’s Dispute Settlement Body [2.240] During 2012 Ukraine, Honduras, Dominican Republic and Cuba separately lodged

formal requests for consultations with Australia over its plain packaging legislation under the World Trade Organization (WTO) dispute resolution procedures. The consultations, which are confidential, are a precursor to a formal request to the WTO Dispute Settlement Body (DSB) to establish a dispute settlement panel. These WTO members are arguing that the tobacco plain packaging measures violate Australia’s obligations under the WTO’s TRIPS, its Agreement on Technical Barriers to Trade (TBT), and the General Agreement on Tariffs and Trade 1994 (GATT 1994). 14 They maintain that the legislation and related measures are unnecessary obstacles to trade, and nullify or impair the benefits accruing to them under these Agreements. Curiously, Ukraine had just signed into law a prohibition on all forms of advertising, sponsorship and promotion by the tobacco industry, and is reportedly considering introducing similar plain packaging legislation. 15 On 20 September 2013, Indonesia also requested consultations with Australia concerning certain Australian laws and regulations that impose restrictions on trademarks, geographical indications, and other plain packaging requirements on tobacco products and packaging. Indonesia claims that the measures appear inconsistent with Australia’s obligations under: • arts 2.1, 3.1, 15.4, 16.1, 16.3, 20, 22.2(b) and 24.3 of TRIPS; • arts 2.1 and 2.2 of the TBT; and • art III:4 of the GATT 1994. On 26 March 2014, the DSB established a panel at the request of Indonesia, thereby moving the dispute beyond the informal consultation stage. On 10 October 2014, the Chair of the panel informed the DSB that the panel did not expect to issue its final report to the parties before the first half of 2016. On 29 June 2016, the Chair informed the DSB that due to the complexity of the dispute, the panel did not expect to issue its final report to the parties before the end of 2016. 14

15

48

Australia – Certain Measures concerning Trademarks and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging, WTO Doc WT/DS434/1, G/L/985 (15 March 2012) (Request for Consultations by Ukraine). See “Yanukovych signs law to ban tobacco advertising”, Tobacco Campaign, 14 March 2012, http:// www.tobaccocampaign.com/yanukovych-law-ban-tobacco-advertising, at 15 June 2012. [2.240]

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The Indonesian request for consultations became the fourth and latest complaint essentially identical grounds in a series of WTO complaints over Australia’s tobacco plain packaging legislation, after Ukraine (13 March 2012, DS434), Honduras (4 April 2012 DS435) Dominican Republic (18 July 2012, DS441), and Cuba (3 May 2013, DS458). Ukraine, Honduras, the Dominican Republic and Cuba individually and collectively conduct only nominal trade with Australia, but all apparently have a well-established and burgeoning tobacco production and/or manufacturing industry. Interestingly, Ukraine had just signed into law a prohibition on all forms of advertising, sponsorship and promotion by the tobacco industry, and was reportedly considering introducing similar plain packaging legislation at the time it lodged its complaint. On 28 May 2015, Ukraine withdrew its complaint; British Tobacco acknowledged that it was providing financial assistance to the Ukraine to meet its legal costs in mounting its case against Australia. Australia’s total trade figures (imports and exports) as at the end 2015 for these four countries are as follows – Ukraine ($172m), Honduras ($52.5M), Dominican Republic ($45.5m), Cuba ($13m, of which $5m is for tobacco products). Indonesia, on the other hand, is Australia’s 11th largest trading partner. 4. The Global interest [2.250] While the issue before the High Court was essentially the constitutional validity of the

legislation, the WTO and the UNCITRAL arenas are concentrating on the perspective of international trade and investment rules and treaty obligations. However, the one issue is at the core of all three disputations is the right of the multinational corporation to maximise its investment in tobacco product with minimal government interference versus the sovereign authority of the state to legislate in the national interest. However, because the basis and grounds of each complaint are not identical – one being legislation, one being treaty and the third being trade – it cannot be ruled out that a global body such as the WTO may rule against the Australian position. This creates potential for further ongoing disputation in both domestic and international fora over the extent and circumstances in which international treaty obligations take precedence over domestic law (both generally and in respect of this ongoing plain packaging war). Since Australia is the first country to introduce plain packaging for tobacco products, the litigation proceedings and outcomes have been keenly watched and scrutinised by other Governments which are considering implementing similar legislation. The European Union and several Governments, including those of the UK, France, Canada, Belgium, Ireland, Iceland, India and Malaysia have been considering introducing legislation to introduce plain packaging legislation for tobacco products. The UK Government launched consultations on plans to introduce similar legislation a few years ago, prompting PMI to threaten to sue it for billions of pounds of it does proceed. Nevertheless tobacco plain packaging laws come into force in the UK in May 2017, and earlier in France in January 2017. Even Indonesia, currently leading the charge against Australia in the WTO has recently introduced legislation requiring health warnings and graphic warnings on tobacco product packaging. As at the time of this writing, the panel appointed by the WTO’s Dispute Settlement Board to hear the Indonesian and other Members’ complaints has yet to issue its findings.

[2.250]

49

COPYRIGHT

PART2

CHAPTER 3 Copyright: Contextual and Conceptual Issues [3.10] [3.10]

[3.40] [3.40] [3.50]

WHAT IS COPYRIGHT? ............................................................................................ Copyright and Creativity ........................................................................................ [3.20] Brief historical context .......................................................................... [3.30] The knowledge economy .....................................................................

[3.130] [3.160]

54 57

NATURE OF THE IP RIGHT ....................................................................................... 59 Some fundamental copyright concepts ................................................................ 59 Tangible versus intangible ...................................................................................... 60 [3.60] [3.70] [3.90]

[3.100]

53 53

Pacific Film Laboratories v Commissioner of Taxation ................. Julie Breen v Williams ............................................................... Primary Health Care v Commissioner of Taxation ...................... Idea versus expression ............................................................................................. [3.110] Donoghue v Allied Newspapers ................................................ Independent creation versus derivation ................................................................ [3.140] Corelli v Gray ..........................................................................

60 62 64 65 66 68 69

SIMPLIFICATION OF THE COPYRIGHT ACT 1968 ................................................ 70 [3.170] [3.190] [3.210]

Simplification of the Copyright Act 1968 ................................... 71 Simplification of the Copyright Act 1968 ................................... 73 Australian Government Productivity Commission: Intellectual Property Arrangements: Report ............................... 75

WHAT IS COPYRIGHT? Copyright and Creativity [3.10] Copyright and related rights protection is an essential component in fostering human creativity and innovation. Giving authors, artists and creators incentives in the form of recognition and fair economic reward increases their activity and output and can also enhance the results. By ensuring the existence and enforceability of rights, individuals and companies can more easily invest in the creation, development and global dissemination of their works. This, in turn, helps to increase access to and enhance the enjoyment of culture, knowledge and entertainment the world over, and also stimulates economic and social development. 1 It is often claimed or assumed that intellectual property laws are necessary to encourage individual creativity and inventiveness and that society would be worse off without such law. … [In] the field of copyrights and patents at least, such claims rest on myth and paradox rather than proof, and should be viewed sceptically. 2

Copyright is commonly classified as “intellectual” rather than “industrial” property, thus drawing a distinction between creations of the “sweat of the brow” and those areas of IP loosely considered to have industrial (in the broadest sense) use or application – namely 1 2

“What is Intellectual Property/”, World Intellectual Property Organisation, WIPO Publication No. 450(E), p 3, at http://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf. D Vaver, “Intellectual Property Today: Of Myths and Paradoxes” [1990] Canadian Bar Review 98. [3.10]

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patents, trade marks, industrial designs, and so forth. This characterisation might suggest that copyright is more concerned with sponsoring and protecting intellectual or creative endeavours, and less interested in ways of protecting investments in commodity production, than other areas of IP law. However, copyright is both a form of intellectual property and industrial property, and exploitation comes to the fore and thus explains in part Vaver’s cynicism above. Explanations of the origins of copyright law most commonly strive to show how and why creativity has come off “second best” in the law, with economic interests receiving a much more dedicated treatment by the legislature and courts. Vaver’s scepticism about the function of copyright law is shared by many others. To answer the above question of “what is copyright”, one needs to turn to statute. According to the Copyright Act 1968 (Cth), “copyright” is an exclusive right to do certain things in respect of original created works, such as literary and artistic works, recordings, audiovisual works, performances and so forth. Section 31(1), for example states: For the purposes of the Act, unless to the contrary intention appears, copyright in relation to a work, is the exclusive right: (a) In the case of a literary, dramatic or musical work to do all or any of the following acts: (i) to reproduce the work in a material form; (ii) to publish the work; (iii) to perform the work in public; (iv) to communicate the work to the public; (vi) to make an adaptation of the work; (vii) to do, in relation to a work that is an adaptation of the first-mentioned work, any of the acts specified in relation to the first-mentioned work in subparagraphs (i) to (iv), inclusive; and …

The Act makes the same, or very similar, declaration in respect of the other areas of created works that come within its scope. Note that s 31(1) does not make any reference to either the creator or the owner (being two different things) of the work in question. Brief historical context [3.20] This conundrum of settling the appropriate balance between the due recognition

exploitative and the creative rights goes back to the early formalised origins of copyright protection. Formalised protection could be deemed to have commenced with the English formation of the Stationers Company of London, a printers’ guild monopoly beginning in 1557. The Stationers Company was designed to enlist the aid of printers and booksellers in supervising royal censorship. The Stationers Company kept a register of books and their effective owners; an entry in the register asserted ownership of the book, and carried with it the exclusive right to print and publish it. There was no concept at this stage of authors’ rights: the right belonged to the printer, not the author. A prolonged campaign of lobbying of Parliament by the Stationers Company to shore up their monopolies eventually led to the passage in 1709 of the Statute of Anne (8 Anne c 19), The statute was entitled “An Act for the Encouragement of Learning, by vesting the Copies of printed Books in the Authors or Purchasers of such copies, during the Times therein mentioned”. It provided the author of a published book with the right to prevent unauthorised copying for up to 28 years – and, significantly, this right could be assigned to a publisher. This was the first mention of the interests of authors in their works. 54 [3.20]

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The Statute of Anne (8 Anne c 19) in 1709 is often cited as the origin of UK and thus Australian copyright law. 17 The Statute was not concerned with any romantic notion of recognition of authors’ rights and their creations. The social purpose of the law was to promote broader public access to books by creating limited economic rights in literary texts. In reality it recognised the longstanding economic interests of some publishers, most ably represented by the guild organisation the Stationers’ Company, as much as the author’s rights to own the text. That the primary legal interest protected the economic interests of certain printers can be seen from a 1709 petition in support of the legislation: The poor distressed printers and bookbinders in London and Westminster; setting forth, that having served seven years apprenticeship, hoped to have gotten a comfortable livelihood by their trades, who are in number at least 5000; but by the liberty taken of some few persons printing books, to which they have no right to the copies, is such a discouragement to the bookselling trade, that no person can proceed to print any book without considerable loss, and consequently the petitioners cannot be employed; by which means the petitioners are reduced to very great poverty and want: And praying that their deplorable case may be effectively redressed. 3

In effect, the Statute recognised the exclusive right to print texts for a set term of years, arising through the action of registering a “copy” of the text. Historically speaking, the Copy Register that marked the “copy right” was maintained by the Stationers’ Company. The legislation internally regulated the book trade and prevented cheaper versions of texts flooding the London market from printers in Northern England and Scotland. Though the long title of the Act implied that the first copy of the text was originally obtained from authors, the legislation said nothing explicitly about author–publisher legal relations and especially the origin of the author’s right to own the text, purchased by the publisher. Presumably, the author transferred to the publisher more than the rights to the manuscript as a chattel. They also sold a form of intangible property right, the exclusive right to reproduce those thoughts as expressed in the text. However, this was never clearly defined in early statute or case law. The issue of whether the Statute of Anne (8 Anne c 19), in creating a new statutory regime, acknowledged an existing common law right and then reaffirmed or expunged that right was examined in the leading 18th century cases of Millar v Taylor (1769) 98 ER 201 and Donaldson v Becket (1774) 1 ER 837. Both cases arose over a dispute concerning publication of a book of poetry, The Seasons, by James Thomson, who died in 1748. Bookseller Andrew Millar acquired the publishing rights in 1729. Robert Taylor from Scotland subsequently published Thomson’s poetry after the term of the exclusive rights granted under the Statute of Anne (8 Anne c 19) expired. In Millar v Taylor, the Court of the King’s Bench, led by Lord Mansfield found by a majority that common law rights were not extinguished by the Statute. Under Mansfield’s ruling, the publishers had a perpetual common law right to publish a work for which they had acquired the rights. When the statutory rights granted by the Statute expired, the publisher was still left with common law rights to the work. The issue was ultimately resolved in the landmark case of Donaldson v Becket, which essentially overturned Millar v Taylor. Beckett acquired Millar’s publishing rights and successfully obtained an injunction against Scottish bookseller Donaldson also publishing Thomson’s Four Seasons. The matter was heard by the House of Lords by way of appeal against the injunction. The House of Lords considered the question of the origins of copyright 3

Reported in “Information for John Robertson, Defender against J Mackenzie …”, in The Literary Property Debate, n 16, at D35. [3.20]

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law, and specifically the argument that the author was a proprietor – a claim justified by John Locke’s theory of labour and romantic theory. It was argued that: Authors have ever had a property in their Works, founded upon the same fundamental maxims by which Property was originally settled, and hath since been maintained. The Invention of Printing did not destroy this Property of Authors, nor alter it in any Respect, but by rendering it more easy to be invaded. Every man was entitled to the fruits of his labor, they argued, and therefore it was self-evident that authors had an absolute property in their own works. This property was transferred to the bookseller when the copyright was purchased and thereafter it continued perpetually just like any other property right. 4

By a majority on the voices, the House of Lords failed to find any authoritative legal precedent that endorsed this purported theory of right and declared that, there being no common law literary property right, the power to define (and limit) copyright rested exclusively with Parliament. Statutory rights could not be strengthened in the interest of authors and publishers, by way of legal reference to rights that might be claimed as existing according to “natural law”. Copyright was not concerned with the author’s moral claims to own texts, and it was not a perpetual right. Lord Camden, arguably the most vocal of the Lords against the claimed perpetual rights, asserted that: I find nothing in the whole that favours of Law, except the term itself, Literary Property. They have borrowed one single word from the Common Law. … Most certainly every Man who thinks, has a right to his thoughts, while they continue to be his; but here the question again returns; when does he part with them? When do they become public juris? While they are in his brain no one indeed can purloin them; but what if he speaks, and lets them fly out in private or public discourse? Will he claim the breath, the air, the words in which his thoughts are cloathed? Where does this fanciful property begin, or end, or continue? 5

He rejected the claim that the common law had ever recognised such a right. It was noted that there was no record of it preceding the arrival of the Caxton printing press in England in 1476, thus it was not a legal right conferred by time immemorial. He then proceeded to discuss if it should recognise such a right, concluding that: Knowledge has no value or use for the solitary owner; to be enjoyed it must be communicated. … Some authors are as careless for profit as others are rapacious of it; and what a situation would the public be in with regard to literature if there were no means of compelling a second impression of a useful work. … All our learning will be locked up in the hands of the Tonsons and Lintons of the age, who will set what price upon it their avarice chuses to demand, till the public becomes as much their slaves, as their own hackney compilers are. 6

In failing to endorse any specific philosophical theory of copyright, Donaldson v Beckett decided that copyright is a creature of positive law. Contemporary statutory recognition of this resonates in the Copyright Act 1968 (Cth) s 8, which states that “Copyright does not exist otherwise than by virtue of this Act …”. Donaldson v Beckett also demonstrates that there is no necessary connection between authors and texts. Such a relationship was only constructed 4

5 6

Cited in M Rose, “The Author as Proprietor: Donaldson v Becket and the Genealogy of Modern Authorship” (1988) 23 Representations 51. It was republished in B Sherman and A Strowel (eds), Of Authors and Origins: Essays on Copyright Law (Clarendon Press, Oxford, 1994), pp 23-55. Cited in S Parks (ed), The Literary Property Debate: Seven Tracts, 1747-1773 (Garland Publishing, New York, 1974) at F32. Cited in S Parks (ed), The Literary Property Debate: Seven Tracts, 1747-1773 (Garland Publishing, New York, 1974) at F32.

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in the 18th and 19th centuries. Rose argues that the view of “the author as proprietor” has been so widely circulated since then, that it is often assumed to be a universal, timeless truth. The Romantic movement of the late 18th and 19th centuries may have been a particularly influential philosophical and social movement, but it seems to have a lesser impact on the law. As a matter of history, Romanticism can be read as a movement in opposition to the mechanical, commodity-oriented production of the developing marketplace. Artistic and literary vision is explained in terms of a “natural” opposition to the “mechanical” world. In themes, 18th and 19th century romantic writers often expressed dismay at the natural, social and artistic consequences of industrialisation, and a desire to produce “original” works. Under Romantic notions, the author “owns” the text refers to ownership in both a moral and an economic sense. It is the original author’s effort that gives rise to the meaning of the work and the right to profit from it as they see fit. Throughout the 17th and 19th centuries, professional authors, such as Ben Jonson (1573–1637), Robert Southey (1774–1843), William Wordsworth (1770–1850) and Charles Dickens (1807–1892), were politically active, advocating for reform of their legal rights. Clearly, not all of these writers ascribed to romantic theories of rights, but all shared grievances about publishers and others unfairly profiting from their works. That there was little consensus about the nature of the rights authors deserved only complicated their legal cause over time. Authors lacked the level of organisation and political skill to put their interests firmly on the political agenda. Ultimately, case law determined that Anglo copyright had no space for “moral rights” comparative with those that developed elsewhere. During the 19th century, numerous pieces of legislation related to intellectual property were enacted in a rather uncoordinated fashion, leading to much criticism of the incompleteness and obscurity of copyright law. A copyright law was enacted in 1814 that extended the duration of protection for literary works to 28 years from date of first publication or life of author, whichever was the greater. The Copyright Act 1842 (UK) extended this duration to 42 years or the life of the author, again whichever was the greater. The United Kingdom was represented at two diplomatic conferences at Berne in 1884 and 1885, the conferences leading to the creation of the Berne Convention for the Protection of Literary and Artistic Works (1886) (Berne Convention). The UK became a signatory to the Berne Convention, and ratified it with effect from 5 December 1887. Ratification of the original Berne agreement and a number of subsequent amendments soon thereafter required the UK to make sweeping changes to its copyright protection framework. The Copyright Act 1911 (UK) repealed all previous Acts, abolished common law copyright in both published and unpublished works, and recognised the existence of copyright in published and unpublished literary, dramatic, artistic and musical works, as well as in sound recordings. The knowledge economy [3.30] Similar questioning of the social and economic impact of copyright laws arises in debates about the wisdom and politics associated with the strengthening of IP rights globally. While this is an international concern raised in lawmaking bodies such as WIPO, overwhelmingly it is American academic work, most notably by Lawrence Lessig, 7 that has 7

Free Culture: How Big Media Uses Technology and the Law to Lock Down Creativity (Penguin Press, 2004); The Future of Ideas: The Fate of the Commons in a Connected World (Random House, 2001); Code, and Other Laws of Cyberspace (Basic Books, 1999). [3.30]

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publicised these concerns. Australian perspectives on these developments are found in Information Feudalism: Who Owns the Knowledge Economy? by Peter Drahos and John Braithwaite. 8 These are publications that reach out far beyond traditional legal audiences, seeking to educate the broader public about the power of multinational media, entertainment and technology corporations and their industry consortiums, such as the Recording Industry Association of America, the Motion Picture Association of America and the Business Software Alliance. It is argued that the TRIPS Agreement, new digital agenda copyright laws, copyright term extensions and free trade agreements have advanced particular economic interests and upset the traditional public balances of IP laws. A healthy public domain, where information circulates for free, is considered essential to a healthy democracy, innovation and education system. Lessig argues that copyright struggles with creativity more than ever, as strong protections imperil creative activity and detrimentally restrict consumer rights and access to works. New “public” licences such as creative commons, open source, free software, and free for education licences, are promoted to counter perceived erosions of the public domain. In 2003, one million web pages were published under creative commons licences. It is estimated that in early 2016, there were 1 billion works in circulation under creative commons licences. 9 The exponential explosion in the exploitation of communication in the digital environment – an environment that is in common usage across all generations – continually and increasingly tests the capacity of copyright and other IP owners and their agents to protect their rights. Statute and regulation, administration and control is continually placed in “catch up” mode. But the challenge is not simply protection; it also becomes one of protection to facilitate exploitation that, at times, has travelled well beyond the realm of the original creator. It is no accident that economic rights, hand in hand with exploitation, have been and remain paramount in copyright legislation, while moral rights and formal acknowledgement of the creative spirit are, in essence, a secondary consideration – and a recent one at that. As Kirby J opined in Stevens v Kabushiki Kaisha Sony Computer Entertainment [2005] HCA 58 at [169]: “Copyright”, it has been rightly declared, “is one of the great balancing acts of the law. Many balls are in play and many interests are in conflict”. To the traditional problems of resolving such conflicts must be added, in the present age, the difficulties of applying the conventional model of copyright law to subject matters for which that model is not wholly appropriate; adjusting it to the “implications of the online environment”; and adapting it to international pressures that may reflect economic and legal interests that do not fit comfortably into the local constitutional and legal environment. “The dance proceeds”, as Professor Ricketson has observed; but the multiplicity of participants and interests now involved in its rhythms inevitably affect the contemporary judicial task of resolving contested questions of interpretation of the Copyright Act.

8

9

Published by Earthscan, UK, 2002. Also K Bowrey, “Can we Afford to Think about Copyright in a Global Marketplace?” in F Macmillan (ed), New Directions in Copyright Law, Volume 1 (Edward Elgar, Cheltenham, UK, 2005), pp 51-69. See http://www.creativecommons.org.

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NATURE OF THE IP RIGHT Some fundamental copyright concepts [3.40] In light of this overview of the historical context about copyright, it is important to consider some fundamental copyright concepts about copyright, namely, the:

• nature of copyright as an “incorporeal right”; • notion that there is no “property in ideas” or “property right in information”; • distinction between copyright as an “economic right” and copyright as a “moral right”; • precise meaning of moral rights, as recently introduced; • legal meaning of “author” and distinction between author or maker and owner; and • limitation on the current statutory regime in providing equitable protection of the creative production of all members of Australian society. No rights at all arise until the ideas are expressed in a tangible medium, and this, combined with the concept of copyright as property that can be divided and transferred from one individual or group to another by a commercial transaction, makes the Copyright Act 1968 (Cth) inept at protecting certain material, even if it is of prime cultural significance. An important example is indigenous cultural IP (ICIP). In 1981, a report of the Working Party on the Protection of Aboriginal Folklore was produced by the Federal Government, in co-operation with the Australia Council and the Australian Copyright Council. The report highlighted a number of reasons why the Copyright Act 1968 (Cth) fails to protect Aboriginal folklore, one being the conception of property rights arising in material which, although sacred and traditional, is not amenable to being traded in the marketplace. The Working Party recommended the introduction of an Aboriginal Folklore Act aimed at the preservation of the cultural heritage, which would include appropriate economic rights but not the usual requirements for the subsistence of copyright necessarily being present. In 2001, the Federal Government set up an inquiry into contemporary visual arts and craft. In 2003, the subsequent Myer Report included wide-ranging recommendations concerned with strengthening visual arts and craft in Australia, including several concerning taxation, superannuation, copyright protection, resale royalties and other proposals for administrative and legislative change. In 2007, a Senate standing committee report on Australia’s indigenous visual arts and craft sector, Indigenous Art – Securing the Future, recommended that, as a matter of priority, the government introduce revised legislation on indigenous communal moral rights. 10 Despite these initiatives, no significant statutory steps have been completed to effectively address the issue of protection of indigenous cultural IP. The first three of the above fundamental concepts translate into the following: • Rights of property in an object in which a copyright work or subject-matter is embodied are distinct from rights of copyright in that same object (tangible versus intangible). • Copyright protects only the form in which the ideas and information are expressed, and not the idea itself (idea versus expression). • Copyright confers a right to protection against copying or unfair derivation, as opposed to a right against an independent (even if almost identical) creation (derivation versus independent creation). 10

Standing Committee on Environment, Communications, Information Technology and the Arts, Indigenous Art – Securing the Future (Commonwealth of Australia, June 2007), Recommendation 24, p xii. [3.40]

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These three concepts, exemplified in case law, are covered below.

Tangible versus intangible [3.50] Intellectual property is a form of intangible personal property. There are no formal registration requirements for obtaining copyright protection. Provided the requirements set down in the Copyright Act 1968 (Cth) concerning originality, material form and territorial qualification are met, copyright exists in a work or other material. In Pacific Film Laboratories v Federal Commissioner of Taxation (1970) 121 CLR 154, reproduced in part below, Barwick CJ stated that “there is authority for the proposition that the property in a chattel may be in one person and the copyright in another: In re Dickens; Dickens v Hawksley [1935] Ch 267. In the second place, an authority to reproduce a copyright work given by the owner of the copyright allows the authorized person to produce the copy as his own property and indeed unless the authority it provides otherwise, is free to dispose of the reproduction ….” (at 164). The Copyright Act 1968 (Cth) s 196 provides that copyright is personal property and is transmissible by assignment, by will and by devolution by operation of the law. Section 198 continues that where a person is entitled to an unpublished manuscript under a will, the bequest is presumed, unless the contrary intention appears, to include the copyright in that work. This might (depending on the exact terms of the will) have met the difficulty experienced in In re Dickens; Dickens v Hawksley [1935] Ch 267.

Pacific Film Laboratories v Commissioner of Taxation [3.60] Pacific Film Laboratories Pty Ltd v Commissioner of Taxation (1970) 121 CLR 154 High Court of Australia [The plaintiff, a photograph-processing company, objected to paying sales tax on prints processed by it and paid for by customers, arguing that there was no sale of goods as the customers owned the negatives and the plaintiff had no general property in them. The court distinguished between the copyright in the negatives (owned by the customer) and property in the prints (owned by the plaintiff).] BARWICK CJ: [162] … But it is objected that there could not in any case be a sale of a print or duplicate either to the photographer or to any other person because of the provisions of the Copyright Act 1912. It has been assumed in argument that the person ordering the print was the owner of the copyright in the negative or transparency. This may or may not be so, but I am prepared to assume it as fact. Because the negative or transparency was the subject of copyright it is said that the appellant as the producer of the print or duplicate as a reproduction of the negative or transparency could not have any general property in the print which he could transfer by sale to any person including the owner of the copyright. It is submitted that it would have no more than a lien for the amount agreed to be paid for the production of the print [163] or duplicate. The fact that he owned the sensitised paper or the film on which the print or duplicate was made to appear and such of the chemicals as remained on the paper or film at the end of the process of making the print or duplicate did not give him any general property in the print or duplicate as reproductions of the copyright work, the negative or transparency as the case may be. … [C]opyright shall be deemed to be infringed by any person who without the consent of the owner of the copyright does anything, the sole right to do which is by the Act conferred on the owner of the copyright. By s 7, all infringing copies of any work in which copyright exists shall be deemed to be the property of the owner of the copyright who accordingly may take proceedings for the recovery of possession thereof or in respect of the conversion thereof. But s 8 provides that where proceedings 60

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Pacific Film Laboratories v Commissioner of Taxation cont. are taken in respect of the infringement of the copyright in any work and the defendant establishes that he was not aware nor had reasonable ground for suspecting that copyright existed in the work the plaintiff shall not be entitled to any remedy other than an injunction. There are, in my opinion, several clear answers to this submission. In the first place, there is authority for the proposition that the property in a chattel may be in one person and the copyright in another: Re Dickens; Dickens v Hawksley [1935] Ch 267. In the second place, an authority to reproduce a copyright work given by the owner of the copyright allows the authorised person to produce the copy as his own property and indeed unless the authority to reproduce it provides otherwise, he is free to dispose of the reproduction. In the third place, whilst of course the Copyright Act enables the copyright owner to recover possession of infringing copies of the copyright work or damages [164] for the conversion of such infringing copies there were in this case no infringing copies, the owner of the copyright on the supposition made, authorised the making of the copy and its delivery to himself. It seems to me that even if the agreement between the owner of the copyright and the appellant had been no more than an agreement for the rendering of services the print produced by the appellant could not have been claimed by the owner of the copyright as his own nor could he have recovered it in detinue before it had been delivered to him but if as I think the agreement was an agreement for the sale of the print or duplicate by the appellant to the owner of the copyright it seems to me necessarily to follow that not only was there no property in the owner of the copyright in the print viewed as a chattel at any time before the delivery of the print to the owner of the copyright but that it was intended that property in the print or duplicate should pass on delivery of the print or duplicate. In my opinion, the appellant had general property in the print or duplicate when produced with the authority of the copyright owner: it was not an infringing copy of the negative or transparency as the case may be though possibly it might have become so if sold to some person other than the owner of the copyright: this was so because of the limited nature of the authority to reproduce given by the owner of the copyright. But the rights given by s 7 to recover infringing copies, though subject to s 8, only arise when the copy is the infringing copy: that is to say, it is the sale which attracts the operation of the section in the case supposed. But that conclusion denies that the authorised reproducer had no general property in the print or duplicate. As I have said, the appellant, in my opinion, had the general property in the print or duplicate which it manufactured out of its own materials and none the less so because the copyright in the negative or transparency was in some other person, or as has been supposed in the member of the public ordering the print or duplicate. WINDEYER J: … [165] Of course a man cannot buy something that is already his. And the Sale of Goods Acts in force in Australia, all copied from the Sale of Goods Act 1893 (UK), it being itself a codification of the common law, treat a sale as a transaction effecting a transfer of “the general property in the goods”. It was argued that, because the owner of a photographic negative has copyright in it as an artistic work, someone else who makes prints from it for him cannot have the general property in them as goods that he can sell to him. There is I think here a fallacy. [166] It lies in the failure to distinguish between the copyright as incorporeal property and property in the material thing which is the subject of the copyright. … [168] … Academic purists in the use of jurisprudential language now say it is a mistake to speak of an incorporeal right. A right, they say, is essentially incorporeal: property is either corporeal or incorporeal. That may be so. Nevertheless the expression, an incorporeal right, can be defended as simply a transferred epithet which is a not uncommon figure of speech. But defence is not necessary for it would be a pedantic presumption to discard an expression that has long been used in connection with copyright by great lawyers, including Lord Mansfield in the 18th century and Lord Maugham in this. … [169] Copyright under the Act is thus properly called an incorporeal right. … It cannot be said that the owner of a copyright cannot buy a chattel made by his licence. It is not an infringing copy. It [3.60]

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Pacific Film Laboratories v Commissioner of Taxation cont. is a lawful copy. In this case the contract was for the sale to the owner of the copyright of future goods, namely copies of prints that he by implication licensed to be made for that very purpose. They could only be lawfully sold to him or by his authority because his licence to the copyist to make them [170] was only so that they might be sold to him. His incorporeal right to prevent infringement of his copyright could not prevent his right to have chattels he had agreed to buy delivered to him or absolve him from an obligation to pay for them on delivery as goods sold and delivered. I agree in the order that the Chief Justice proposes.

Julie Breen v Williams [3.70] Julie Breen v Cholmondeley W Williams (1996) 186 CLR 71 High Court of Australia [The appellant, who had been a patient of the respondent medical practitioner, claimed a legal right to reasonable access to the records kept by the respondent with respect to the appellant and a right to inspect and/or copy those records. The right was submitted to be based variously on contract, property and fiduciary duty.] BRENNAN CJ: Property [80] … The appellant concedes that the property in the records as chattels is in the respondent. The concession is rightly made. Documents prepared by a professional person to assist the professional to perform his or her professional duties are not the property of the lay client; they remain the property of the professional (Leicestershire County Council v Michael Faraday & Partners Ltd [1941] 2 KB 205 at 216; Chantrey Martin v Martin [1953] 2 QB 286). In the light of that principle, it is not easy to see what relevance the law of property has to the supposed right of the appellant to access to the respondent’s records. If (as it was put during argument) the respondent is said to have no proprietary right that would entitle him to refuse access, the question whether the appellant has a right to be given access still remains. On that approach, the supposed right (if any) must find some basis other than property. But even on that approach, the argument is flawed. Absent some right to require, or the exercise of some power to compel, production of a document for inspection, its owner is entitled by virtue of the rights of ownership to refuse to produce it. As for copying, where the professional person is the owner of the copyright, [81] he or she has the sole right to copy or to permit the copying of the document (Copyright Act 1968 (Cth), ss 13, 31, 36; Commonwealth of Australia v John Fairfax & Sons Ltd (1980) 147 CLR 39 at 58). If the approach is that a right to access and to copy arises because the information contained in the records is proprietary in nature, the approach mistakes the sense in which information is described as property. The sense in which information is so described is stated by Lord Upjohn in Phipps v Boardman ([1967] 2 AC 46 at 127-128) in these terms: In general, information is not property at all. It is normally open to all who have eyes to read and ears to hear. The true test is to determine in what circumstances the information has been acquired. If it has been acquired in such circumstances that it would be a breach of confidence to disclose it to another then courts of equity will restrain the recipient from communicating it to another. In such cases such confidential information is often and for many years has been described as the property of the donor, the books of authority are full of such references; knowledge of secret processes, “know-how”, confidential information as to the prospects of a company or of someone’s intention or the expected results of some horse race based on stable or other confidential information. But in the end the real truth is that it is not property in any normal sense but equity will restrain its transmission to another if in breach of some confidential relationship. 62 [3.70]

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Julie Breen v Williams cont. As information is not property except in the sense stated by Lord Upjohn, the remedies which equity grants to protect against the disclosure of certain kinds of information do not have their source in notions of property. Deane J pointed this out in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 438; see also Smith Kline & French v Secretary, Department of Community Services & Health (1990) 95 ALR 87 at 135-136 per Gummow J): Like most heads of exclusive equitable jurisdiction, its rational basis does not lie in proprietary right. It lies in the notion of an obligation of conscience arising from the circumstances in or through which the information was communicated or obtained. Equity might restrain the respondent from disclosing without authority any information about the appellant and her medical condition that is contained in the respondent’s records and, in that sense, it might be arguable that that information is the property of the appellant. Even if such a description were correct – and it is not necessary to consider that question – the description would provide no foundation for the existence of a right to access and to copy enforceable in equity. The mere possession by the respondent of his [82] records relating to the appellant breaches no obligation of conscience and thus it attracts no equitable remedy that might clothe the information with some relevant proprietary character. There is no obligation in conscience requiring the respondent to open his records to inspection and copying by the appellant. Whichever approach is taken to the relevance of the law of property, it fails to provide any basis for the appellant’s claim. GUMMOW J: [126] … Property rights The appellant also sought to draw support for the right she asserts from a complex of equitable institutions and doctrines dealing with fiduciary duty, confidential information, undue influence, and with unconscientious transactions of the nature considered in such authorities as Louth v Diprose ((1992) 175 CLR 621). To some extent these submissions reflect an imperfect understanding of some basic matters of the law of personal property. Other submissions concern classification as “property” of the information contained in the records in question. As the submissions for the appellant appear to reflect some confusion of thought, it is appropriate, before proceeding further, to draw several basic distinctions. First, as I understand the submissions, the appellant did not contend before us, and she had not contended before the Court of Appeal ((1994) 35 NSWLR 522 at 561), that she owned the relevant records “as such”. That concession (as the Court of Appeal agreed (1994) 35 NSWLR 522 at 538, 559-561) was correctly made. The documents in question, including any photographs, are chattels, ownership and the right to exclusive possession of which appear to be enjoyed by the respondent. Access to those records would be an incident of those rights. They would be protected against invasion by the law of tort, in particular by actions for detinue and conversion. [127] Thus, in Moorhouse v Angus & Robertson (No 1) Pty Ltd ((1980) FSR 231 at 239-240), McLelland J held that a cause of action in detinue had been established by an author against his publishers by reason of their failure to comply with his demand for the return of his original manuscript. … Secondly, the appellant’s submissions gave insufficient allowance to the operation in this field of copyright law, a matter of federal statute. The composition by the medical practitioner of the material shown on the records may have involved the authorship by him of what, whilst not of literary quality, were nevertheless literary works for the purposes of copyright law. This would vest in him various exclusive proprietary rights, including that to reproduce the work in a material form (Copyright Act 1968 (Cth), s 31(1)(a)(i)). In Pacific Film Laboratories Pty Ltd v Federal Commissioner of Taxation ((1970) 121 CLR 154 at 165-170), Windeyer J referred to the fundamental distinction between copyright as incorporeal property and property in the material thing which is the subject of the copyright, the [3.70]

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Julie Breen v Williams cont. essence of the former being the power to prevent the making of a reproduction in material form. His Honour referred to authorities, including Re Dickens ((1935) Ch 267). This illustrates the distinction. On the proper construction of his will, Charles Dickens bequeathed the manuscript of an unpublished work to his sister-in-law and his residuary estate, including the copyright in the unpublished work, to his children. Ownership of the manuscript would not, of itself, carry with it the right to publish it and to reproduce it. It is unlikely that the medical practitioner would have made the literary works in pursuance of the terms of his employment by the patient under what was classified as a contract of service, so that the patient was the owner of the copyright (s 35(6)). Ownership of the copyright in any photographs, as artistic works (see the definition of “artistic work” in s 10(1) of the Copyright Act 1968 (Cth)) would, pursuant to s 35(5) of the Copyright Act 1968 (Cth), vest in the patient only if within the meaning of that provision the patient had made for valuable [128] consideration an agreement for the taking of the photographs and they were taken in pursuance of that agreement. The copyright of the respondent would not be infringed by anything done for the purposes of a judicial proceeding (s 43(1)). Nor would it be an infringement to act pursuant to a licence or permission (which might be express or implied) (Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88 at 103-106, 119-120; Lorenzo & Sons v Roland Corporation (1992) 23 IPR 376 at 380-383; Devefi Pty Ltd v Mateffy Perl Nagy Pty Ltd (1993) 113 ALR 225 at 237-242). However, the circumstances of the present case, as disclosed in the evidence, do not provide support for the existence of any copyright licence or consent given to the appellant either expressly or by implication. Nor does it appear that such a licence is implied in the contract between medical practitioner and patient as a matter of law in the sense I have described earlier in these reasons. … The appeal should be dismissed with costs.

[3.80] The distinction between copyright and the medium in which it is expressed was

examined again recently in Primary Health Care Ltd v Commissioner of Taxation [2010] FCA 419 in the context of a transfer of title in a business operating a string of health clinics. The issue before the Federal Court arose not only in respect of the nature of the assets subject to transfer but also of the degree of independent intellectual effort required to create copyright in a medical record (see also further discussion on this case in [5.50]).

Primary Health Care v Commissioner of Taxation [3.90] Primary Health Care Ltd v Commissioner of Taxation [2010] FCA 419 Federal Court of Australia [This case involved six separate applications appealing under Taxation Administration Act 1953 (Cth) Pt IVC in respect of objection decisions made by the respondent, the Commissioner of Taxation. Primary Health Care Ltd (PHC) was a public company and the sole beneficial owner of all issued units in a unit trust, of which Idameneo Pty Ltd was the trustee, operating a group of medical clinics. The issues in these applications arose out of PHC’s purchase of certain medical and dental practices and concern whether the company was entitled to claim income tax deductions arising from its acquisition of copyright interests as part of its purchase of the practices.] STONE J: Transfer of Copyright Interests to PHC [142] I have found only very limited subsistence of copyright in the patient records of the sample practices. Nevertheless, in case I am wrong, I shall consider PHC’s claim that Idameneo obtained an 64

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Primary Health Care v Commissioner of Taxation cont. interest in the copyright in the patient records of each of the 12 sample practices on the assumption that there was copyright, at least in part, in the patient records of each of the sample practices. The question requires an examination of the title of the vendor in any such copyright and raises the question whether an interest in it passed under the agreement for the sale of each practice. It necessarily involves a construction of the sale agreements into which the various vendors entered with PHC. [143] Any discussion of the transfer of an interest in copyright must take place with full cognisance of the nature of copyright as a proprietary interest and the distinction between that interest and a proprietary interest in the medium in which the copyright subsists. Thus it is legally possible for property in the patient records of the sample practices to be held by PHC and any copyright in those records to be held by other persons; Pacific Film Laboratories Pty Limited v The Commissioner of Taxation of the Commonwealth of Australia [1970] HCA 36; (1970) 121 CLR 154 at 163 per Barwick CJ and 165-170 per Windeyer J. In Breen v Williams at 127, Gummow J drew attention to this distinction between ownership of copyright and ownership of “the material thing which is the subject of the copyright” and referred to Pacific Film Laboratories and also to Re Dickens [1935] Ch 267, which, Gummow J observed, illustrated the distinction between the manuscript of an unpublished work (bequeathed to Charles Dickens’ sister-in-law) and the copyright in the work which was included in the residuary estate left to the author’s children. [144] In Re Dickens the manuscript in question was of a story Charles Dickens had written for his children but had never published. The Court of Appeal held that, not having been published, the manuscript was included in the “private papers” which, on the proper construction of the author’s will, he had left his to his sister-in-law.

Idea versus expression [3.100] Copyright protection does not extend to an idea, a fact or other item of information.

Rather, it extends to the manner or form in which that idea or information is expressed: a dichotomy which is said to be “probably the most difficult concept in the law of copyright” and “often honoured more in the breach than in the observance”: Plix Products Ltd v Frank M Winstone (Merchants Ltd) (1984) 3 IPR at 418. In the United States case Baker v Selden (1880) 101 US 99 (US Supreme Court), it was observed that “where the truths of a science or the methods of an art are the common property of the whole world, any author has the right to express the one, or explain and use the other, in his own way”. The court also stated that: … there is a clear distinction between the book, as such, and the art which it is intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any argument to support it. The same distinction may be predicted of every other art as well as that of book-keeping. A treatise on the composition and use of machines, be they old or new; on the construction and use of ploughs or watches or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective, would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The copyright of the book, if not pirated from other works, would be valid without regard to the novelty or want of novelty of its subject-matter.

[3.100]

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See also Zeccola v Universal City Studios (Jaws Case) (1982) 46 ALR 189; for a more recent decision, see Thomas v Brown and Anor (Aboriginal Flag Case) (1997) 37 IPR 207; [1997] 215 FCA. In Donoghue v Allied Newspapers Ltd [1938] Ch 106, the court drew a distinction between ideas gleaned from interviews by a journalist and the subsequent newspaper stories based on those ideas. The court held that the journalist who wrote the published stories was the author and owner of any material in which copyright subsisted, with the plaintiff merely having only supplied the ideas.

Donoghue v Allied Newspapers [3.110] Donoghue v Allied Newspapers [1938] Ch 106 High Court of Justice, Chancery Division (United Kingdom) [Several articles were published in the News of the World newspaper based on interviews between the plaintiff and a journalist. The articles had titles such as Enthralling Stories of the King of Sports and Donoghue’s Racing Secrets and were based on the experiences of the plaintiff, a well-known character of the turf.] FARWELL J: [109] The first question that I have to determine is whether the plaintiff is or is not either the sole or the joint owner of the copyright in the original articles which appeared in the News of the World. If the plaintiff has no copyright, either as sole owner or as joint owner, in these articles, this action necessarily fails, and it will be unnecessary for me to consider the further question which I shall have to consider if that is not the position namely, as to the effect of the agreement on 4 April 1931, and whether that agreement amounts to an equitable assignment of the plaintiff’s copyright to the News of the World. It is necessary, in considering whether the plaintiff is the owner or part owner of the copyright in this work, to see in what it is thatcopyright exists under the Copyright Act 1911. This at any rate is clear beyond all question, that there is no copyright in an idea, or in ideas. A person may have a brilliant idea for a story, or for a picture, or for a play, and one which appears to him to be original; but if he communicates that idea to an author or an artist or a playwright, the production which is the result of the communication of the idea to the author or the artist or the playwright is the copyright of the person who has clothed the idea in form, whether by means of a picture, a play, or a book, and the owner of the idea has no rights in that product. On the other hand, and I think this is equally plain, if an author employs a shorthand writer to take down a story which the author is composing, word for word, in shorthand, and the shorthand writer then transcribes it, and the author has it published, the author is the owner of the copyright and not the shorthand writer. A mere amanuensis does not, by taking [110] down word for word the language of the author, become in any sense the owner of the copyright. That is the property of the author. The explanation of that is this, that that in which copyright exists is the particular form of language by which the information which is to be conveyed is conveyed. If the idea, however, original, is nothing more than an idea, and is not put into any form of words, or any form of expression such as a picture, then there is no such thing as copyright at all. It is not until it is (if I may put it in that way) reduced into writing or into some tangible form that there is any copyright, and the copyright exists in the particular form of language in which, or in the case of a picture the particular form of the picture by which, the information or the idea is conveyed to those who are intended to read it or to look at it. [On the point of “material form”] … In the present case, the ideas of all these stories, apart altogether from what one may call merely the embellishments which were undoubtedly supplied wholly by Mr Felstead the ideas of all these stories, and in fact the stories themselves, were supplied by the plaintiff; but in my judgment, upon the evidence it is plain that the particular form of language by 66 [3.110]

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Donoghue v Allied Newspapers cont. which those stories were conveyed was the language of Mr Felstead and not of the plaintiff. Although many of the stories were told in the form of dialogue, and to some extent Mr Felstead no doubt tried to reproduce the story as it was told to him by the plaintiff, nevertheless the particular form of language in which those adventures or stories were conveyed to the public was the language of Mr Felstead and not the language of the plaintiff. One case has been cited to me which is, I think, very near to the present one, and if I were to decide in favour of the plaintiff on this first point I think that I should be disregarding the decision of Tomlin J in Evans v E Hulton & Co Ltd [1924] Mac CC 51. The facts of that case are not quite on all fours with the present one; but the principle upon which that judgment rests is the same as that which I have to apply in this case. [111] In that case the person who supplied the information was a foreigner, and no doubt he did not convey the information in a form which would have been suitable for an article in a newspaper, and to that extent it may be that the person who wrote it down and supplied the article had more to do than Mr Felstead in the present case; but the principle applicable is the same. What Tomlin J said was this (at 56): One thing is reasonably plain, I think, that probably Mr Zeitun would not himself claim that he was capable of producing in the English tongue a literary work which would find a market. He certainly agreed that he has never attempted to do so, and I should doubt his capacity to do so. The fact that he is the subject matter of the production in the sense that it is an incident from his life, for which he provided the material, does not seem to me to make him in any sense the joint author with Mr Evans of the manuscript which was in fact written, and, upon the facts which I have stated, I find that he did not take any part in producing the express matter which is the original literary work, the subject matter of copyright. What I understand the learned judge to mean by the “express matter” is that which I have endeavoured to define as the particular form of language in which the information is conveyed, and although it may be that in the present case the plaintiff could give more help to Mr Felstead than Mr Zeitun could give in the case of Evans v E Hulton & Co Ltd (at 51), to the author of the manuscript, nevertheless, although the plaintiff supplied all the substance of the articles, it was conveyed in language which was the language or Mr Felstead, and for which the plaintiff himself was not responsible. Appeal dismissed.

[3.120] In an even more recent case and highly publicised UK case, the court examined the

dichotomy between ideas and established and alleged “historical facts”, and expressions of those ideas in a literary form: see Baigent v The Random House Group Ltd (Da Vinci Code Case) [2006] EWHC 719. In the Da Vinci Code Case, the plaintiffs, authors Michael Baigent and Richard Leigh, claimed that Dan Brown’s novel The Da Vinci Code (DVC), published by Random House, infringed their copyright in their book The Holy Blood and the Holy Grail (HBHG), written in 1982. They claimed that Brown had copied some 15 core ideas or historical assertions that formed the “architecture” of their book and hence its “central theme”. The subject matter of both books focused upon assertions that Christ had survived the crucifixion, married and had children by Mary Magdalene, and that their descendants and bloodline continued to the present day. It was conceded that there was no infringement based on textual comparison; rather the infringement was “non-textual”. Smith J rejected the plaintiffs’ argument, commenting that: [3.120]

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24 Plainly there can be no copyright in an idea which is merely in the head, which has not been expressed in copyrightable form, as a literary, dramatic, musical or artistic work, but the distinction between ideas and expression cannot mean anything so trivial as that. On the other hand, every element in the expression of an artistic work (unless it got there by accident or compulsion) is the expression of an idea on the part of the author. It represents her choice to paint stripes rather than polka dots, flowers rather than tadpoles, use one colour and brush technique rather than another, and so on. The expression of these ideas is protected, both as a cumulative whole and also to the extent to which they form a “substantial part” of the work.

He found that there were no central themes in the plaintiffs’ work, the alleged “central theme” merely being an expression of a number of general ideas, assertions or facts that were not entitled to copyright protection. It did not constitute the “architecture” of The Holy Blood and the Holy Grail (HBHG) and, because of this, the plaintiffs’ claim was without merit. In fact, Smith J suggested: It it seems to me (and this is what the defendant submit) [sic] is that the Central Theme is not a genuine Central Theme of HBHG and I do no [sic] accept that the claimants genuinely believe it is as such. In my view it is an artificial contrivance designed to create an illusion of a Central Theme for the purposes of alleging infringement of a substantial part of HBHG.

Smith J continued to comment rather cynically on what he considered to be the primary motives in bringing the action against Random House: 4 By virtue of various mergers and acquisitions Random publishes both HBHG and DVC. Further a film production of DVC is apparently in the offing starring Tom Hanks with a scheduled release in May 2006. It is a testament to cynicism in our times that there have been suggestions that this action is nothing more than a collaborative exercise designed to maximise publicity for both books. It is true that the book sales of both books have soared during the course of the trial (in the case of HBHG it is said to be a tenfold increase). 5 I am not in a position to comment on whether this cynical view is correct but I would say that if it was such a collaborative exercise Mr Baigent and Mr Brown both went through an extensive ordeal in cross-examination which they are likely to remember for some time.

The idea versus expression dichotomy is given statutory substance by the requirement, as laid down in the Copyright Act 1968 (Cth), s 10, that generally (but not exclusively) a work must be in “material form” or “made” to enjoy copyright protection. The issue of “material form” is discussed in greater length in [4.40].

Independent creation versus derivation [3.130] Copyright confers a right against direct derivation. To establish that an infringement

exists, it is necessary to establish that there has been “copying” or derivation from the original work, even if that copying may have been on a subconscious or unconscious level: see Bright Tunes Music Corp v Harrisongs Music Ltd (1976) 420 F Supp 177 (US District Court, New York). However, there is no protection against the coincidental, independent creation of the same work or subject matter by another author or creator. Where two very similar or identical works are produced wholly independently of each other, the author of the first-published work has no right to restrain the publication of the second: see Francis Day & Hunter Ltd v Bron [1963] Ch 587 (UK Court of Appeal); but also see Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29. A photographer of a scene or particular subject matter, for example, has no right of claim against a subsequent photograph of exactly the same scene or subject. 68 [3.130]

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Corelli v Gray [3.140] Corelli v Gray (1913) 29 TLR 570 High Court of Justice (United Kingdom) [The plaintiff alleged that the respondent’s play “The People’s King” infringed the plaintiff’s copyright in the plaintiff’s book Temporal Power.] SARJANT J: [571] Before comparing the relative probability of these two rival cases I should like to make two observations, both of which tend in favour of the defendant. In the first place, it is fairly clear, and I assume in favour of the defendant, that under the new Act, as under the former law, no absolute monopoly is given to authors analogous to that conferred on inventors of patents that is to say, if it could be shown as a matter of fact that two precisely similar works were in fact produced wholly independently of one another, I do not think that the author of the work that was published first would be entitled to restrain the publication by the other author of that author’s independent and original work. The right appears to be merely a negative right to prevent the appropriation of the labours of an author by another. The second observation is this, that the onus of establishing appropriation, of course, rests upon the plaintiff. With these two observations, I will now deal with the case in the order in which it was presented to me namely, first, by examining the extent of the similarities or coincidences between the two works; and next by investigating the story put forward by the defendant.

[3.150] In Francis Day & Hunter Ltd v Bron [1963] Ch 587 (UK Court of Appeal), the court considered an appeal from a judgment in the primary court dismissing an application for copyright infringement. The respondent denied infringement by deliberate copying or conscious knowledge or unconscious copying of the original work. The plaintiffs, the owners of the copyright in a musical work “In a Little Spanish Town”, first published in 1926, complained that their copyright had been infringed by the publication in 1959 by the defendants of a musical work “Why”, composed by de Angelis, which, they alleged, reproduced a substantial part of the plaintiffs’ work. It was alleged that the first eight bars of the chorus of “In a Little Spanish Town” had been reproduced consciously or unconsciously in the first eight bars of “Why”. The court held that that:

• “reproduction need not be identical reproduction since infringement of copyright in music was not a question of note for note comparison but depended upon whether the alleged infringing work was substantially the same as the original work” (at 611); • “proof of similarity between the alleged infringing work and the original, coupled with proof of access to the original, did not raise any irrebuttable presumption of copying, but at most raised a prima facie case for the defendant to answer” (at 612); • “reproduction by subconscious copying was a possibility which, if it occurred, might amount to an infringement, but that to establish liability on this ground it must be shown that the composer of the offending work was in fact familiar with the original work, and that there was some causal connection between the alleged infringing work and the original work” (at 614); • “[i]t was therefore a simple question of fact whether the degree of objective similarity proved was sufficient to warrant the inference that there was a causal connection between the two works. Here it was impossible to say that the judge had reached a wrong conclusion on this question of fact, and therefore the appeal should be dismissed” (at 614). [3.150]

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But in a recent Australian case along similar lines, it was demonstrated that derivation can be established in a modicum of less than the eight bars in contention in Francis Day & Hunter v Bron. In 2009, Larrikin Music, holders of the copyright in an iconic Australian short musical piece of some four bars entitled “Kookaburra sits in the old Gum Tree” (“Kookaburra”), initiated action against the rock group Men at Work for infringing their rights in “Kookaburra”. In Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29, Larrikin claimed that two of those bars were reproduced in the 1981 recording of another iconic Australian composition, the song “Down Under” performed and recorded by Men at Work. The two bars make up part of the flute riff that was added to “Down Under” after it was first composed. The flute riff in “Down Under” did not consist solely of the two bars of “Kookaburra”. Where it first appeared in the 1981 recording, immediately after the percussion introduction, the flute riff contained only the second bar of “Kookaburra”. However, the flute riff was then heard at two later points in “Down Under”. At those points, the flute riff includes the first and second bars of “Kookaburra”. Justice Jacobson followed the approach taken in the English case of Francis Day & Hunter Ltd v Bron in determining objective similarity in contending musical works by “a note for note comparison but … by the eye as well as the ear”. His Honour concluded, based on his own aural and visual comparisons of melody, key, tempo, harmony and structure, as well as expert evidence, that there was a sufficient degree of objective similarity between the bars of “Kookaburra” and “Down Under” to amount to reproduction. On appeal, the Full Federal Court dismissed two appeals by EMI, and upheld the judgment of the primary court: see EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47. The “independent creation versus derivation” conundrum raises further fundamental issues, namely in respect of the degree of originality (the diminution or absence of which may still not necessarily constitute infringement) and existence or otherwise of a certain degree of literary, artistic or creative effort as a precondition for copyright protection. These issues will also be discussed at further length at [4.60] – [4.80].

SIMPLIFICATION OF THE COPYRIGHT ACT 1968 [3.160] The Copyright Act 1968 (Cth) has grown significantly in terms of breadth and

complexity since its first introduction, to the extent that there have been ongoing calls for its rationalisation and simplification. The Act currently consists of 12 parts (some with sub-parts), numerous divisions (some with sub-divisions), over 249 sections (many with sub-sections). The hard-copy version available from the Federal Register of Legislation, in its latest iteration (July 2016) comprises 768 pages. In 1983, the Federal Attorney-General established the Copyright Law Review Committee (CLRC) as a specialist advisory body to report to government on specific copyright law matters referred to it from time to time. In 1995, the then Minister for Justice directed the committee to review the Act. One of its tasks, having regard to Australia’s international obligations as a member of the relevant international conventions for the protection of copyright, was to inquire into and report on “how to simplify the Copyright Act 1968 to make it able to be understood by people needing to understand their rights and obligations under the 70 [3.160]

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Act, with particular attention to simplification of the various provisions and schemes that provide exceptions to the exclusive rights comprising copyright”. The CLRC was also asked to examine how the government’s proposed ongoing Digital Agenda reforms might be given effect, including the new broadly based, technology-neutral right of communication to the public, as well as examining Australia’s obligations under the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).

Simplification of the Copyright Act 1968 [3.170] Copyright Law Review Committee, Simplification of the Copyright Act 1968, Part 2–Categorisation of Subject Matter (September 1998), Chapter 5, [5.04]–[5.13] (references omitted) Problems with the current Act 5.04 The main features that characterise the current legislation’s approach to categorisation of protected subject matter and exclusive rights are the use of a relatively large number of categories of subject matter and rights, wherein those categories are defined in a relatively narrow and often technologically specific way. There are a number of consequences of this approach which, in the view of the majority of the Committee, are problematic. These consequences are an element of unnecessary legislative complexity, some instances of unjustifiable differential treatment of similar subject matter, and an undesirable degree of technological specificity of protected subject matter and exclusive rights. Each of these consequences are described in more detail, and illustrated by examples, below. 5.05 One consequence of the current legislation’s approach to categorisation is that it is long and complex. This arises from the treatment of works and subject matter other than works in different parts of the Act. As a result, there is a degree of duplication within those two parts of provisions relating to the same issues – including, in particular, in relation to the exceptions and limitations to the exclusive rights granted. The majority of the Committee agrees with the general view contained in the submissions it received that there is a fundamental difference between the types of subject matter that fall within Parts III and IV of the Act. However, the majority of the Committee does not believe that it is necessary to recognise this difference through the current unwieldy structural distinction, and is of the view that the difference can continue to be maintained in a more efficient and simplified form. 5.06 Another consequence is that there is a difference in the protection granted to different categories of subject matter within the same part of the Act, even where the different categories of subject matter satisfy the same requirements for subsistence of protection. In certain instances at least, this difference in treatment seems, to the majority of the Committee, to be unjustified. An example is the lesser protection given to artistic works compared with other works in Part III of the Act. In contrast to other works, artistic works do not receive the exclusive right of adaptation. The majority of the Committee believes that this result has the appearance, and may have the practical effect, of artists being discriminated against in comparison to other creators. 5.07 To the majority of the Committee, however, the most problematic consequence of the current legislation’s approach to categorisation is its technological specificity. This arises from the relatively narrow definitions used for both protected subject matters and exclusive rights, from the distinction drawn in those definitions between tangible and intangible embodiments, and from the requirement for Part III subject matter to be identified with a human “author”. Technological developments have produced new means of creating copyright subject matter, and new means of exploiting that subject matter. The majority of the Committee is of the view that those new means are being utilised now, and are likely to be utilised with increasing frequency in the future, to produce subject matter of a type, and to exploit subject matter in a way, that does not easily or at all come within the existing categories. The majority of the Committee is concerned that without a significant change in approach to [3.170]

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Simplification of the Copyright Act 1968 cont. categorisation of subject matter and rights, there will be increasing uncertainty in the application of the Act in the digital environment, and an increasing pressure on the legislature to make ad hoc amendments to deal with these uncertainties. Both of these outcomes are undesirable. 5.08 One example of a new type of subject matter arising from technological developments, for which there is already uncertainty about the Act’s application and calls for ad hoc legislative amendment, is the so-called “multimedia entity”. As discussed in more detail in Section 2 of this report, it is unclear whether a multimedia entity as such, as distinct from its component parts, is protected at all under the Act. The majority of the Committee is of the view, however, that a sufficiently creative multimedia entity should receive protection in its own right. It is also of the view that any other new media material, including material that has not yet been identified as such, should also receive protection if it is sufficiently creative. In short, the majority of the Committee is concerned that the current Act discriminates against creative material on the basis of its physical (or non-physical) form, and hence fails to protect material that, as a matter of policy, is deserving of protection. 5.09 An example of a new act of exploitation of protected subject matter arising from technological developments, for which likewise there is uncertainty about the Act’s application and calls for its amendment, is dissemination to the public by computer network. Uncertainty about the application of the current legislation lay behind the Copyright Convergence Group’s 1994 recommendation for a new, broadly defined right of transmission to the public, to replace the technology-specific rights of broadcast by wireless telegraphy and transmission to subscribers to a diffusion service. By 1996, developments in communications technology, and in particular the Internet, resulted in the adoption in both the WCT and the WPPT of an even broader new right – the right of communication to the public by wire or wireless means, which is defined to include making available to the public by interactive means. While the Committee supports the Government’s Digital Agenda decision to implement this new right in the current legislation, the majority of the Committee is concerned that these changes do not go far enough. In particular, the majority of the Committee considers problematic the fact that the provisions of the Act relating to exclusive rights will still distinguish between activities on the basis of whether they are carried out on a tangible or intangible embodiment of protected material. For example, it may be argued that the right of publication is confined to the first dissemination of a work to the public by distribution of physical copies of it. Yet a majority of the Committee believes that the publication right should embrace first dissemination of a work to the public by any means, including by distribution of intangible embodiments of the work. 5.10 The Act’s distinction between tangible and intangible embodiments of copyright material is potentially problematic in another way. Currently the legislation requires a work to be in a tangible embodiment to qualify for protection under Part III. As a result, material that has only an intangible embodiment, such as an extempore speech, is not protected even though arguably as deserving of protection as a speech that is written down prior to recitation. Also of concern to the majority of the Committee is the extent to which the current legislation accommodates the increasing, indeed almost ubiquitous, use of computers in the creation of copyright subject matter. The Act currently requires the identification of a human as the “author” of a Part III work. While a majority of the Committee recognises there is an ongoing need for copyright legislation to connect a work with a human, it is concerned that the current requirement of “authorship” may preclude the grant of protection to material that is deserving of protection, simply because the extent to which a computer was utilised in its creation exceeds a particular (currently uncertain) level. 5.11 The majority of the Committee notes that there has been some discussion relating to the “overlapping” of the current exclusive rights when applied to the digital environment. In particular, the majority of the Committee notes that at the Sydney consultations it was stated by some interests that the overlapping of rights should be avoided, as it would unjustifiably allow for the creation of a number of separate licences and the collection of separate royalties for what was primarily the 72 [3.170]

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Simplification of the Copyright Act 1968 cont. performance of the one activity. In this regard, the majority of the Committee also notes the comments made in the US report Intellectual Property and the National Information Infrastructure (1995). The US report stated: The exclusive rights, which comprise the so-called bundle of rights that is copyright, are cumulative and may overlap in some cases … the fact that more than one right may be involved in infringing activity does not, and should not, mean that only the one right should apply. Each of the exclusive rights is distinct and separately alienable and different parties may be responsible for infringements or licensing of different rights – and different rights may be owned by different people. 5.12 On this issue the majority of the Committee agrees with what was stated in the US report. Although the majority of the Committee recognises that rights appear to be “overlapping” to an increasing extent as a result of digital technology, it does not believe that this fact alone will result in the overprotection of copyright material. In the majority of the Committee’s view each right represents a specific and separately remunerable activity. The fact that the performance of an activity may involve the exercise of more than one right is justified. The majority of the Committee notes that the overlapping of rights is not peculiar to the digital environment – for example, the act of publication of a literary work in hard copy form traditionally involves the exercise of both the right of reproduction and the right of publication. 5.13 In summary, a majority of the Committee is of the view that the current legislation’s technologically specific approach to categorisation of protected subject matter and of exclusive rights is suboptimal in a number of key respects. It considers that the Act should be recast, in a manner that simplifies it and enables it better to deal with the challenges, both foreseen and as yet unforeseen, raised by the digital environment.

[3.180] The CLRC, by a majority, made a number of recommendations in respect of

simplification, which had significant implications for the nature of copyright protection and the nature of the Copyright Act 1968 (Cth). These recommendations included those outlined in the following extract.

Simplification of the Copyright Act 1968 [3.190] Copyright Law Review Committee, Simplification of the Copyright Act 1968, Part 2 – Categorisation of Subject Matter (September 1998), Chapter 5, [5.02]–[5.03] (references omitted) 5.02 The majority of the Committee recommends that the Australian copyright legislation be structured so as to implement the following principles in relation to protected subject matter: • there be two categories of protected subject matter, to which different levels of protection apply; • both categories encompass all embodiments of material within the literary and artistic domain, wherein that concept reflects its usage in the Berne Convention but is given a flexible interpretation so as to embrace both traditional and non-traditional expressions of textual, aural and visual material; • the factor for determining the category into which protected material falls, and hence the level of protection it is afforded, be the efforts of the person who undertakes its creation or production; • material will be protected at the higher level only if it is the result of significant intellectual effort by the person who undertakes its creation, while material will be protected at the lower level only if it is the result of the application of time, effort and resources by the person who undertakes its production; [3.190]

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Simplification of the Copyright Act 1968 cont. • there be no requirement that subject matter be in any particular, or indeed any, form of tangible embodiment for it to be protected under either category; • where public policy so requires, express provision be made to exclude specified material from either or both of the two categories of protected subject matter. 5.03 The majority of the Committee recommends that the Australian copyright legislation be structured so as to implement the following principles in relation to exclusive rights: • there be two exclusive economic rights, the right of reproduction and the right of dissemination to the public, and two exclusive moral rights, the right of attribution and the right of integrity; • the two economic rights apply to both categories of protected subject matter; • the two economic rights apply to activities that are conducted in relation to material that is in tangible form, and material that is in intangible form; • as far as practicable, for both categories of economic rights there be a harmonisation of the application of the activities that comprise the right to all the material within each category of protected subject matter; • the two moral rights apply only to the category of protected subject matter that is the result of significant intellectual effort by the person who undertakes its creation; • where public policy so requires, express provision be made to exclude specified activities from either or both of the two categories of economic and moral rights, whether that exclusion be general or in relation to specific material; • the economic and moral rights in material protected at the higher level subsist until 50 years after the death of the person who undertakes the material’s creation, or 50 years from the first dissemination of the material to the public, whichever is the greater; • the economic rights in material protected at the lower level subsist for a period of 50 years from the first dissemination of the material to the public, unless a shorter period is specified, either generally or in relation to specific material, as a matter of public policy; • the first owner of the economic and moral rights in material protected at the higher level be the person who undertakes its creation, subject to express provision maintaining the exceptions that apply under the current legislation; • the first owner of the economic rights in material protected at the lower level be the person by whom the arrangements necessary for its production are undertaken, subject to express provision maintaining the exceptions that apply under the current legislation.

[3.200] Since the CLRC report in 1998, many more provisions have been added to “update”

the Copyright Act 1968 (Cth), which mainly deal with aspects of the digital environment. There has been no “simplification”. On the contrary, there have since been significant additions encompassing new provisions for the introduction of: • moral rights; • the digital agenda; • film directors’ and performer’s rights; • other obligations under the Australia–United States Free Trade Agreement (AUSFTA); and • changes arising from the recent IP amending legislation. Further changes are to come arising from Australia’s recent round of concluded trade and investment treaties with China, South Korea and Japan. Further changes may quite possibly 74 [3.200]

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arise out of further agreements awaiting ratification such, as the TPPA, and agreements under negotiation, such as those with Indonesia, India and the (Arabian) Gulf Cooperation Council. Finding and understanding the myriad of legal rights and obligations the Act now confers on owners, users and the public remains very difficult. The organisation of the Act is widely acknowledged in practice, and especially in academia, as sub-optimal. One explanation for the lack of action to remedy the complexity is “law reform fatigue”. There are too many smaller initiatives that have needed a more urgent response. Hence, new provisions are drafted or old ones redefined within the existing structure, and the problem continues unabated. Beyond a question of time, energy and resources, the bigger problem is that any restructuring of the legislation opens up jurisprudential debates about the fundamental purposes and objects of copyright law. From an historical perspective these have always been poorly expressed. For example, fundamental legal ideas such as the idea–expression dichotomy and the public domain, and popular notions in public legal education like “piracy”, have no clear or direct legislative reference. In addition, any larger reorganisation of the Act potentially interferes with established expectations of particular vested interests. There is little consensus and much disagreement about the politics of copyright, locally and globally, at this time. This political environment leads to ongoing piecemeal reform and a continuing deferral of legislative address to the structural complexity and incoherence of the Act. More recently, the Commonwealth Government has commissioned yet another examination on the Australia’s IP rights regime, including copyright. As earlier discussed in Chapter 2 [2.190], the Productivity Commission has recently (September 2016) delivered its Report on Australia’s IP system. Its key points in respect of copyright follow, and will now doubt generate considerable debate and discussion, both domestically and overseas, in light of its sometimes radical suggestions for change.

Australian Government Productivity Commission: Intellectual Property Arrangements: Report (September 2016), Chapter 4, Copyright Term and Scope, Key Points, page 103 [3.210] • Copyright protects the material expression of literary, dramatic, artistic and musical works, as well as books, photographs, sound recordings, films and broadcasts. In addition to being instrumental in rewarding creative and artistic endeavour, many creators value the recognition that the copyright system provides. • But an effective and efficient copyright system needs to balance the cost of creating new works (including the incentives necessary for that creation) against the community benefit from the use of creative works. Australia’s arrangements fail to strike this balance. • Australia’s copyright arrangements have expanded over time and new rights have been granted to rights holders. In some instances, expansion has been justified, as for much online material. • In other cases, copyright extension has swung too far in favour of rights holders, often with no transparent evidence-based analysis. Retrospective extension of term from 50 to 70 years after death is a prime case. • Australia’s copyright arrangements lack balance and have been slow to adapt to technological change, imposing costs on the broader community. [3.210]

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Australian Government Productivity Commission: Intellectual Property Arrangements: Report cont. – Overly broad and long copyright protection means Australians pay more or have difficulty accessing copyright material. – Excessively long copyright protection increases the likelihood works will become commercially unavailable or orphaned (where rights holders can no longer be identified). Copyright works that have already been produced, but cannot be accessed and used by consumers, benefit no one. • Technological change and accelerating digital disruption underscore the need for an adaptable copyright system. Research suggests today’s “representative consumer” infringes the copyright of non–commercial and commercial works over 80 times each day. • While the options for reform are limited by Australia’s international intellectual property agreements, there is scope to redress the imbalance. – The proposal of the Australian Government in late 2015 to abolish perpetual copyright protection for unpublished works should be implemented without delay. – The Australian Government should work with like-minded international partners to achieve greater balance in the way copyright operates internationally. • Targeted reforms should be implemented to improve access to copyright material, including through changes to copyright exceptions and transparent statutory licensing arrangements (covered in the following chapters).

76 [3.210]

CHAPTER 4 Criteria for Subsistence of Copyright [4.10] [4.10] [4.20] [4.30] [4.40]

INTRODUCTION ...................................................................................................... Background .............................................................................................................. Criteria for copyright protection ............................................................................ Qualified person ...................................................................................................... Material form ...........................................................................................................

[4.60]

Originality and merit ...............................................................................................

[4.80]

Minimum level of originality ..................................................................................

[4.50] [4.70] [4.90] [4.110] [4.130]

Cummins v Bond ..................................................................... University of London Press v University Tutorial Press ................. Desktop Marketing Systems v Telstra ........................................ Telstra v Phone Directories Company ........................................ Fairfax Media Publications v Reed International Books ...............

78 78 79 79 80 81 84 84 86 86 91 94

[4.140] [4.150] [4.160]

CATEGORIES OF PROTECTED WORKS AND SUBJECT MATTER ........................... 97 Part III Works ............................................................................................................ 97 Part IV subject matter .............................................................................................. 98

[4.170] [4.170]

CATEGORY OF WORKS – PART III WORKS ............................................................. 98 Literary works ........................................................................................................... 98

[4.190]

Dramatic works ...................................................................................................... 102

[4.180] [4.200]

[4.210]

Kalamazoo v Compact Business Systems .................................. 99 Zeccola v Universal City Studios ............................................. 103

Is a public spectacle a dramatic work? ............................................. 106 [4.210]

Nine Network v Australian Broadcasting Corp ......................... 106

[4.220]

Musical works ......................................................................................................... 108

[4.240]

Artistic works .......................................................................................................... 109 [4.250] Painting ................................................................................................ 110

[4.230]

[4.270] [4.290]

[4.300]

Attorney General v Trustees of National Art Gallery of NSW .................................................................................... 110 Merchandising Corp of America v Harpbond ........................... 111

Sculpture .............................................................................................. 113 [4.310]

[4.320] [4.330] [4.340] [4.350] [4.360]

CBS Records Australia v Guy Gross ......................................... 109

Greenfield Products v Rover-Scott Bonnar ................................ 113

Drawing ............................................................................................... Engraving ............................................................................................. Photograph .......................................................................................... Building ................................................................................................ Works of artistic craftsmanship ..........................................................

115 116 116 116

117 Coogi Australia v Hysport International ................................... 117 Computer programs as literary works ................................................................. 122 [4.390] Data Access v Powerflex Services ............................................ 123 [4.370]

[4.380] [4.400] [4.410] [4.420]

PART IV COPYRIGHT: SUBJECT MATTER OTHER THAN WORKS ........................ 131 Sound recordings .................................................................................................. 132 Cinematographic films .......................................................................................... 132 [4.430]

Galaxy Electronics v Sega Enterprises ...................................... 133 77

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[4.440]

Sound and television broadcasts .......................................................................... 134 [4.450] The Panel High Court decision .......................................................... 134

[4.460] [4.470]

Published editions of works .................................................................................. 142 Adaptation of works .............................................................................................. 142 [4.480] Adaptation of a computer program .................................................. 143

[4.450]

[4.480]

[4.490] [4.510] [4.530]

Network Ten v TCN Channel Nine .......................................... 134

Coogi Australia v Hysport International ................................... 143

DURATION OF COPYRIGHT .................................................................................. Overlap between copyright and circuit layouts legislation ............................... [4.520] Circuit layout litigation in Australia ................................................... Overlap between copyright and designs legislation .......................................... [4.540]

145 147

148 149 Sheldon & Hammond v Metrokane ........................................ 150

INTRODUCTION Background [4.10] Australia’s first post-independence copyright statute was the Copyright Act 1912 (Cth). This Act simply adopted the Copyright Act 1911 (UK), providing that it should be in force throughout Australia. Following the introduction in the UK of a new copyright act in 1956, the Australian Government in 1958 appointed a committee under Sir John Spicer to advise which of the amendments in the new UK law should be incorporated into Australian copyright law and what other alterations or additions, if any, should be made to the law. The Spicer Committee was also charged with examining what changes were needed to enable ratification of the Brussels Act (1948) of the Berne Convention (INT). This resulted in the Copyright Act 1968 (Cth), which is the foundation for copyright law in Australia. Copyright is a creation of statute and there is no concept of common law rights in copyright. The Copyright Act 1968 (Cth) came into effect on 1 May 1969. There are some significant differences between the two Acts, particularly in relation to the range of persons entitled to copyright protection (much broader under the earlier Act, which, being an adoption of the UK Act, had extended copyright protection not only within Australia but also to the “King’s Dominions”) and the subject matter protected (narrower under the earlier Act, which did not include, for example, television programs). As a general rule, works or subject matter protected under the 1912 Act immediately prior to the Act coming into force continue to receive protection (Copyright Act 1968 (Cth) s 210(1)). Note that it is possible that copyright may still exist in works which were first made or published even prior to the 1912 Act. Following its enactment almost 50 years ago, the current Copyright Act 1968 has been modified and added to comprehensively over the intervening years. Since the introduction in 1995 of the World Trade Organisation’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (1995) (see Chapter 2), which contains significant copyright obligations and which Australia has ratified, the Copyright Act 1968 (Cth) has been subject to frequent amending legislation, including the following over the last 15 years:

• Copyright Amendment (Computer Programs) Act 1999 (Cth); • Copyright Amendment (Digital Agenda)Act 2000 (Cth); • Copyright Amendment (Moral Rights) Act 2000 (Cth); • Copyright Legislation Amendment Act 2004 (Cth); 78 [4.10]

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• Copyright Amendment (Parallel Importation) Act 2003 (Cth); • US Free Trade Implementation Act 2004 (Cth); • Copyright Amendment (Film Directors’ Rights) Act 2005 (Cth); • Copyright Amendment Act 2006 (Cth); • Intellectual Property Laws Amendment Act 2006 (Cth); • Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth); • Intellectual Property Laws Amendment Act 2015 (Cth); • Copyright Amendment (Online Infringement) Act 2015 (Cth).

Criteria for copyright protection [4.20] The conceptual distinction between tangible and intangible property rights, ideas and expressions, and independent creation as opposed to derivation, was discussed in Chapter 3. These concepts are articulated in a number of statutory provisions that determine when copyright subsists and to whom it belongs. Even though there is no registration process or other formal requirements to obtaining copyright protection, the Copyright Act 1968 (Cth) still requires the fulfilment of certain criteria for eligibility for copyright protection to subsist. In general terms (but with some limited exceptions), the Act makes provision for the protection of certain types of subject matter that are:

• original; • created or “made”; • by a “qualified person” (as defined by the Act) or published in Australia. Provided these criteria are met, the owner of the copyright gains certain exclusive rights which endure for a specified period of time.

“Qualified person” [4.30] The “qualified person” criterion effectively limits the operation of the Copyright Act 1968 (Cth) to an Australian jurisdiction. It can apply to both a person and the copyright work or other subject matter. In the latter case, it becomes a territorial criterion. In either case, protection requires an Australian connection. In general terms, s 32 of the Act provides that a “qualified person” is an Australian, an Australian protected person, or a person resident in Australia, while the territorial criterion can require works or other subject matter to have been published or made in Australia. Hence the following requirements apply to the various categories of copyright:

• unpublished works – the author was a qualified person at the time the work was made (Copyright Act 1968 (Cth) s 32(1)); • published works – the author was a qualified person when the work was first published, or the work was first published in Australia (s 32(2)); • buildings – the building is located in Australia (s 32(3)); • published and unpublished sound recordings – the maker of the recording was a qualified person when the recording was first made or the recording was made in Australia (s 89(1) – (3)); [4.30]

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• published and unpublished cinematographic films – the maker was a qualified person at the time the film was made, or the film was made or first published in Australia (s 90); • television and sound broadcasts – the broadcast was made from a place in Australia under the authority of the Broadcasting Services Act 1992 (Cth) (Copyright Act 1968 (Cth) s 91); • published editions of works – the publisher was a qualified person when the edition was first published or the first publication took place in Australia (s 92); • performance – the performer is a qualified person or the performance is given in Australia (s 248A). Note that works created overseas are protected in Australia as if they were created in Australia, providing the country in which they are created is signatory to one of the relevant international treaties. In particular, note the Copyright (International Protection) Regulations 1969 (Cth), made in accordance with Australia’s international treaty obligations pursuant to TRIPS and the Berne Convention. Australian works may receive reciprocal copyright protection overseas, provided the overseas country is signatory to the treaty. By the same token, Australia is obliged to extend at least the same level of protection to the other country as it does to its own citizens. There is provision for the making of original works at the direction of the Crown (Commonwealth or State) in which case copyright arises without the author needing to be a qualified person (Copyright Act 1968 (Cth) s 176). Similar principles apply in regard to cinematograph films and sound recordings (s 178), and with respect to original works (s 187) or other subject matter (s 188), made or published by, or at the direction of, certain international organisations.

“Material form” [4.40] The requirement for a copyright work or other subject matter to be created or

otherwise “made” is a corollary of the “idea versus expression” dichotomy discussed in Chapter 3 at [3.130]–[3.150]. However, it merits further examination here. Under the Copyright Act 1968 (Cth), a literary, dramatic, musical or artistic work (Part III works) and other subject matter (Part IV subject matter) must exist in “material form” in order for copyright to subsist in it. In regard to literary, dramatic, musical or artistic works, the material form occurs when the work is “first reduced to writing or to some other material form” (s 22(1)); see Donoghue v Allied Newspapers [1938] Ch 106 (see also [3.110]). Other subject matter is not quite subject to the “material form” requirement, but still needs to be “made”. In the case of sound recordings, the recording is deemed to be “made” when it was first “fixed” – that is, when the first record embodying the sound recording was produced (Copyright Act 1968 (Cth) s 22(3)). Similarly, a cinematographic film is deemed to be made when the first copy of the film is produced. The situation in respect of broadcasts is slightly different: by implication, the broadcast is deemed to be made when it is delivered. A speech, as such, cannot be protected unless it is delivered from a written text; see Walter v Lane [1900] AC 539. A sound recording made from the speech may, however, be protected as a sound recording under s 85. Copyright in sound and television broadcasts can also exist under ss 85 – 88, regardless of the requirement of “material form”: see s 22(3) – (6). Digitisation has created new problems in applying the material form requirement. The objection that copyright should not be used to protect something incapable of being seen or heard was fatal to the plaintiff’s claim to establish copyright in a computer program in Apple 80 [4.40]

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Computer Inc v Computer Edge Pty Ltd (1983) ATPR 40-421. The High Court subsequently upheld this decision of Beaumont J in Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171. Sheppard J in the Federal Court (on appeal from Beaumont J (Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225)) was also of the opinion that, in the context of the existing Copyright Act 1968 (Cth), a literary work or an adaptation thereof needed to be capable of being seen or heard. Computer programs are a type of “literary work” under copyright law, and are now excused from the requirement of being perceptible by human senses. Under the Australia–US Free Trade Agreement, there is a new definition of material form, which: … in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).

This provision applies to all reproductions, in any manner or form, permanent or temporary. Material may be regarded as having been “reproduced” if it is held in a form of storage (such as RAM), even though it may not be possible to reproduce it from that form of storage. However, under Copyright Act 1968 (Cth) s 43B there is no infringement of copyright if the reproduction is “incidentally made as part of a technical process” in using a non-infringing copy of a work. Even with traditional works, the dichotomy between an idea and its expression is not always easy to formulate. In Cummins v Bond [1927] 1 Ch 167, the judge commented: [I]t would almost seem as though the individual who has been dead and buried for some 1900-odd years and the plaintiff (the medium) ought to be regarded as the joint authors and users of the copyright, but inasmuch as I do not feel myself competent to make any declaration in his favour, and recognising as I do that I have no jurisdiction extending to the sphere in which he moves, I think I ought to confine myself when inquiring who is the author to individuals who were alive when the work first came into existence and to conditions which the legislature in 1911 may reasonably be presumed to have contemplated.

Cummins v Bond [4.50] Cummins v Bond [1927] 1 Ch 167 High Court of Justice, Chancery Division (United Kingdom) [The plaintiff engaged in psychic research, acting as a spiritualist and medium at séances during which she practised automatic writing while in a trance state. The defendant was an architect who was interested in recent discoveries at the Abbey of Glastonbury, and automatic writings related to them. Séances with the defendant in attendance resulted in The Chronicle of Cleophas (the Chronicle), which the plaintiff wrote in her automatic writing. The nature of the writing was archaic, of the 16th and 17th centuries. Cleophas is mentioned twice in the New Testament as one of the followers of Christ. A dispute arose as to the ownership of copyright in the Chronicle, the defendant claiming that the writings were addressed to him and inspired by his presence, or that they were not susceptible to copyright protection at all, being communicated in substance and form by a psychic agent.] EVE J: [172] The issue in this action is reduced to the simple question who, if anyone, is the owner of the copyright of this work. Prima facie it is the author, and so far as this world is concerned there can be no doubt who is the author here, for it has been abundantly proved that the plaintiff is the writer of every word to be found in this bundle of original script. But the plaintiff and her witness and the defendant are all of opinion and I do not doubt that the opinion is an honest one that the true [4.50]

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Cummins v Bond cont. originator of all that is to be found in these documents is some being no longer inhabiting this world, and who has been out of it for a length of time sufficient to justify the hope that he has no reasons for wishing to return to it. According to the case put forward by those entertaining the opinion I have referred to the individual in question is particularly desirous of assisting in further discoveries relating to the ancient Abbey of Glastonbury, and he chooses the Brompton Road as the locality in which, and the plaintiff as the medium through whom, his views as to further works to be undertaken on the site of the Abbey shall be communicated to the persons engaged in the work of excavation. He is sufficiently considerate not to do so in language so antiquated as not to be understood by the excavators and others engaged in the interesting operations, but in order not to appear of too modern an epoch he selects a medium capable of translating his messages into language appropriate to a period some 16 or 17 centuries after his death. I am not impugning the honesty of persons who believe, and of the parties to this action who say that they believe, that this long departed being is the true source from which the [173] contents of these documents emanate; but I think I have stated enough with regard to the antiquity of the source and the language in which the communications are written to indicate that they could not have reached us in this form without the active co-operation of some agent competent to translate them from the language in which they were communicated to her into something more intelligible to persons of the present day. The plaintiff claims to be this agent and to possess, and the defendant admits that she does possess, some qualification enabling her, when in a more or less unconscious condition, to reproduce in language understandable by those who have the time and inclination to read it, information supplied to her from the source referred to in language with which the plaintiff has no acquaintance when fully awake. From this it would almost seem as though the individual who has been dead and buried for some 1900 odd years and the plaintiff ought to be regarded as the joint authors and owners of the copyright, but inasmuch as I do not feel myself competent to make any declaration in his favour, and recognising as I do that I have no jurisdiction extending to the sphere in which he moves, I think I ought to confine myself when inquiring who is the author to individuals who were alive when the work first came into existence and to conditions which the legislature in 1911 may reasonably be presumed to have contemplated. So doing it would seem to be clear that the authorship rests with this lady, to whose gift of extremely rapid writing coupled with a peculiar ability to reproduce in archaic English matter communicated to her in some unknown tongue we owe the production of these documents. But the defendant disputes the plaintiff’s right to be considered the sole author, alleging that he was an element and a necessary element in the production, and claiming, if the authorship is to be confined to persons resident in this world, that he is entitled to the rights incident to authorship jointly with the plaintiff. In the course of the trial, after reading the correspondence, [174] and hearing the evidence of Miss Gibbes, I expressed an unfavourable opinion of the defendant’s conduct in certain respects. For one thing he had at a very early stage of his acquaintance with that lady commenced to borrow money from her, and when at a later date he was called upon to repay the sums so borrowed he set up a wholly insupportable story that the moneys had been paid to him as a gift; and for another, when he was submitting a complicated agreement for the approval of the two ladies and inducing them to believe that he desired them to take legal advice thereon, he was at the same time urging a mutual friend to obtain their approval and execution of the same without taking any such advice. Since I expressed that unfavourable opinion I have seen and heard the defendant in the box, and although his conduct in the matters I have referred to cannot but be regarded as involving grave errors of judgment, I do not think he was actuated by the sordid motives which his conduct was certainly calculated to suggest. He is an individual upon whose memory little reliance can be placed, he is of an imaginative temperament and regards the alleged supernatural incidents connected with this work 82 [4.50]

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Cummins v Bond cont. with a reverence that is almost fanatical, and he has, I think, in more than one incident shown that he is occasionally subject to hallucinations. His claim to be considered a joint author is suggestive of an hallucination, for it is based upon the assertion that by his presence at the séances where the writing took place he in some way transmitted from his brain to the unconscious brain of the medium the classical and historical references which are to be found in these documents. He frankly admits that he does not appreciate how it was done, or to what extent he did it; but he has evidently brought himself to believe that he did contribute materially to the composition of the work and that his contribution was made by means of some silent transfer from his brain to that of the unconscious medium of phrases and allusions with which he was familiar but of which she knew nothing. But inasmuch as the medium is credited with a power to translate language of which she knew nothing into archaic English, [175] of which she was almost equally ignorant, and at a phenomenal pace, it does not appear necessary to fall back on the defendant’s presence in order to explain the classical and historical references which he maintains must have emanated from his brain. They may well have originated in the brain of the medium herself. In these circumstances I am quite unable to hold that the defendant has made out any case entitling him to be treated as a joint author. I think he is labouring under a complete delusion in thinking that he in any way contributed to the production of these documents. Alternatively failing to establish any claim on his own behalf he submits that there is no copyright in the work at all, that it has come from a far off locality which I cannot specify, and that the plaintiff is the mere conduit pipe by which it has been conveyed to this world. I do not think that it is a fair appreciation of the plaintiff’s activities, they obviously involved a great deal more than mere repetition; but, apart altogether from these considerations, the conclusion which the defendant invites me to come to in this submission involves the expression of an opinion I am not prepared to make, that the authorship and copyright rest with some one already domiciled on the other side of the inevitable river. That is a matter I must leave for solution by others more competent to decide it than I am. I can only look upon the matter as a terrestrial one, of the earth earthy, and I propose to deal with it on that footing. In my opinion the plaintiff has made out her case, and the copyright rests with her. Upon the same footing it has been further contended on behalf of the defendant that an agreement was come to between him and the plaintiff under which he is beneficially interested in the copyright, or alternatively that the conduct of the plaintiff has been such as to estop her from denying that he has such an interest. In order to determine these questions the evidence and correspondence require some examination. [His Lordship proceeded to go through these in detail and concluded:] It is quite clear that no agreement was ever concluded, and I am quite unable to hold that the [176] plaintiff ever abandoned the position she took up in the latter part of the year 1925 or ever so conducted herself as to preclude her from insisting on the claims put forward in this action. Accordingly I hold she is entitled to the declaration for which she asks, that is to say, a declaration that she is the owner of the copyright in this work it must be identified in some way delivery up of such parts of the original manuscript as have not already been handed to her, and the defendant must pay the costs of the action. The counterclaim by which the defendant seeks a declaration that he is entitled to the copyright is dismissed with costs. Order for the plaintiff.

[4.50]

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“Originality” and merit [4.60] Although the Copyright Act 1968 (Cth) does not require critical acclaim or even

creative merit to attach to a literary, dramatic, musical or artistic work before protection will be afforded, s 32(1) requires that such a work be “original”. To some extent, the concept of what constitutes a “work” within the Act and the concept of originality are intertwined. It is difficult to discuss what amounts to a work without discussing originality, since without a sufficient degree of originality a work will not come into existence. There are general principles of originality that would seem to apply to all classes of works. And with the issue of originality and work comes the contentious notion, implied at least, of whether some quality of human endeavour or application should also apply. In Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 5, Thomas J noted (at 232), that there was general but not universal judicial acceptance that “a literary work” is one that gives “information, instruction or pleasure in the form of literary enjoyment”, rather than literary merit. However, there was an acceptance of a degree of originality comprising labour, skill, judgment or ingenuity involved in the expression of the idea. However, the question is not the novelty or the worth of the thought that a person injects into their work, but whether the expression is original. As Dixon J said in Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511: “… [t]he work need show no literary or other skill or judgment. But it must originate with the author and be more than a copy of other material”. The form of expression of the work must be the result of particular mental effort or exertion by the author or authors and cannot be essentially dictated by the nature of the information. As French CJ, Crennan and Kiefel JJ said in IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14, in explaining the idea–expression dichotomy: • “[C]opyright is given in respect of ‘the particular form of expression in which an author conveys ideas or information to the world’” (at [26]). • “Copyright does not protect facts or information”. To do so “would impede the reading public’s access to and use of facts and information. It protects the particular form of expression of the information”: the words, figures and symbols in which the pieces of information are expressed and the selection and arrangement of that information (at [28]). • “Copyright is not given to reward work distinct from the production of a particular form of expression” (at [28]). In University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, the court considered whether a set of exam papers could be deemed to be literary works and therefore be subject to copyright. Crucial to the consideration was whether the papers enjoyed originality.

University of London Press v University Tutorial Press [4.70] University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 High Court of Justice, Chancery Division (United Kingdom) PETERSON J [after stating the facts]: [608] The first question that is raised is, Are these examination papers subject to copyright? Section 1(1) of the Copyright Act 1911 provides for copyright in “every original literary dramatic musical and artistic work”, subject to certain conditions which for this purpose are immaterial, and the question is, therefore, whether these examination papers are, within the meaning of this Act, original literary works. Although a literary work is not defined in the Act, s 35 84 [4.60]

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University of London Press v University Tutorial Press cont. states what the phrase includes; the definition is not a completely comprehensive one, but the section is intended to show what, amongst other things, is included in the description “literary work”, and the words are “‘Literary work’ includes maps, charts, plans, tables and compilations”. It may be difficult to define “literary work” as used in this Act, but it seems to be plain that it is not confined to “literary work” in the sense in which that phrase is applied, for instance, to Meredith’s novels and the writings of Robert Louis Stevenson. In speaking of such writings as literary works, one thinks of the quality, the style, and the literary finish which they exhibit. Under the Act of 1842, which protected “books”, many things which had no pretentions to literary style acquired copyright; for example, a list of registered bills of sale, a list of foxhounds and hunting days, and trade catalogues; and I see no ground for coming to the conclusion that the present Act was intended to curtail the rights of authors. In my view the words “literary work” cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word “literary” seems to be used in a sense somewhat similar to the use of the word “literature” in political or electioneering literature and refers to written or printed matter. Papers set by examiners are, in my opinion, “literary work” within the meaning of the present Act. Assuming that they are “literary work”, the question then is whether they are original. 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 [609] 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. In the present case it was not suggested that any of the papers were copied. Professor Lodge and Mr Jackson proved that they had thought out the questions which they set, and that they made notes or memoranda for future questions and drew on those notes for the purposes of the questions which they set. The papers which they prepared originated from themselves, and were, within the meaning of the Act, original. It was said, however, that they drew upon the stock of knowledge common to mathematicians, and that the time spent in producing the questions was small. These cannot be tests for determining whether copyright exists. If an author, for purposes of copyright, must not draw on the stock of knowledge which is common to himself and others who are students of the same branch of learning, only those historians who discovered fresh historical facts could acquire copyright for their works. If time expended is to be the test, the rapidity of an author like Lord Byron in producing a short poem might be an impediment in the way of acquiring copyright, and, the completer his mastery of the his subject, the smaller would be the prospect of the author’s success in maintaining his claim to copyright. Some of the questions, it was urged, are questions in book work, that is to say, questions set for the purpose of seeing whether the student has read and understood the books prescribed by the syllabus. But the questions set are not copied from the book; they are questions prepared by the examiner for the purpose of testing the student’s acquaintance with the book, and in any case it was admitted that the papers involved selection, judgment, and experience. This objection has not, in my opinion, any substance; if it had, it would only apply to some of the questions in the elementary papers, and would have little, if any, bearing on the paper on advanced mathematics. Then it was said that the questions in the elementary papers were of a common type; but this only means that somewhat similar questions have been asked by other examiners. I suppose that most elementary books on mathematics may be said to be of a common type, but that fact would not give impunity to a predatory infringer. The book and the papers alike originate from the author and are not copied by him from another book

[4.70]

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University of London Press v University Tutorial Press cont. or other papers. The objections with which I [610] have dealt do not appear to me to have any substance, and, after all, there remains the rough practical test that what is worth copying is prima facie worth protecting. In my judgment, then, the papers set by Professor Lodge and Mr Jackson are “original literary work” and proper subject for copyright under the Act of 1911.

Minimum level of originality [4.80] The issue of minimum levels of originality and human mental effort has been examined on numerous occasions in respect of compilations in various formats – for example, in respect of racing form guides, ballot papers or telephone directories. The format of telephone directories was subject to scrutiny in 2002 and again in 2010, with very different outcomes. In Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112 on appeal before the Federal Court, the court considered whether the factual compilations – comprising the directories – met the threshold requirement of originality in Australian copyright law, and whether the headings books developed by the respondent attracted copyright protection

Desktop Marketing Systems v Telstra [4.90] Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112 Federal Court of Australia (Full Court) [Desktop Marketing Systems was appealing against a decision of the primary court that it had infringed Telstra Corporation’s copyright in the White Pages Directories, the Yellow Pages Directories (Directories) and the Headings Book. Desktop copied the data contained in the directory sections of the White Pages Directories and the Yellow Pages Directories, and separately stored those two bodies of data in databases. Desktop copied headings from the Yellow Pages Directories, using them as descriptions of the lines of business of subscribers whose details it took from those Directories. Accordingly, Telstra’s case in respect of the Headings Books is one of indirect infringement. Desktop did not copy any of the information pages, graphics, enhancements or advertisements. This case also concerned the element of “originality” in respect of compilations of factual information.] LINDGREN J: Conclusion on subsistence of copyright – The White Pages Directories and Yellow Pages Directories 160 While it is possible to distinguish particular cases on their facts, in my opinion the course of authority in England and Australia examined above supports the following propositions of relevance to the subsistence of copyright in compilations of factual information: 1.

The concept of originality is correlative with that of authorship (Sands & McDougall).

2.

Authorship (likewise originality) does not require novelty, inventiveness or creativity, whether of thought or expression, or any form of literary merit (cf Walter v Lane; University of London Press; Sands & McDougall; Victoria Park; Ladbroke).

3.

Not all works, even literary works, are of the same kind and one must identify and keep in mind the particular kind of work within the Act in which copyright is claimed to exist–in the present case, a particular form of literary work, namely, a “compilation” (cf Walter v Lane; Sands & McDougall). (The Act’s definition of “literary work” as including a “compilation” has made

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Desktop Marketing Systems v Telstra cont. extended discussion of the meaning of “literary work” unnecessary, but it is noteworthy that the noun “work” has been defined to mean, in the word’s relevant general sense, “A thing, structure or result produced by the operation, action, or labour of … a person or other agent” (OED) and as “a product of exertion, labour, or activity” (of which an artistic, literary or musical work is given as an example) (Macquarie).) 4.

It appears to be a necessary feature of a factual compilation that it supply “intelligible information” (cf Real Estate Institute discussed at [93], Canterbury Park discussed at [101]-[102]; and cf Exxon). Accordingly, a totally random collection and listing of unrelated pieces of factual information would not be a compilation within the Act. (Apparently the position would be different if the compilation included a statement that it was a random selection, since that very statement would give the whole a significance it would otherwise lack.) A telephone directory satisfies the apparent requirement that a compilation convey a significance of its own which is independent of that of its component items considered individually and in isolation from one another. A telephone directory purports to be an alphabetical listing of particulars of all listable telephone subscribers within a given geographical area, and therefore to perform the function of providing access to the telephone number of every subscriber. It impliedly proclaims: “These are the names, addresses and telephone numbers of all listable subscribers within the stated geographical region, and if a name does not appear in its alphabetical position, there is no listable subscriber by that name”.

5.

One must apply the test of originality to the literary work, including a compilation, in which copyright is claimed to exist, as a whole, rather than dissecting it and applying the test to the individual parts (cf Cambridge University Press; Ladbroke; Warwick Film; A-One).

6.

The test of originality is whether the work was not copied, but originated from the putative author (cf Dicks v Yates; University of London Press; Mander v O’Brien; Victoria Park; Purefoy; Ladbroke; Ogden; Computer Edge; Kalamazoo; Erica Vale; Skybase; Harpur v Lambourne; Data Access).

7.

This test is not an “all or nothing” one but raises a question of fact and degree as to the extent of the putative author’s contribution to the making of the particular literary work in question, in the present case, a compilation (cf Macmillan v Cooper; Cramp; Ladbroke; Computer Edge; Interlego; Flanagan). (In Sampson v Brokensha and Shaw Ltd (1935) 37 WALR 90 (“Sampson”) it was decided that a person who merely bound into a book all the forms prescribed by a set of regulations did not have copyright in the compilation.)

8.

For this purpose, no particular kind of antecedent work contributed by the putative author is, a priori, to be left out of account, except, perhaps, antecedent work which was undertaken for a purpose or purposes which did not include the making of the literary work at all (cf Football League; Ladbroke; Mirror Newspapers; Autospin).

9.

It is not the law that where there is only one way of expressing and arranging a whole-of-universe factual compilation, the compilation cannot attract copyright protection (cf Matthewson v Stockdale; Longman v Winchester; Kelly v Morris; Ibcos).

10.

Decisively for the present case, there is no principle that the labour and expense of collecting, verifying, recording and assembling (albeit routinely) data to be compiled are irrelevant to, or are incapable of themselves establishing, origination, and therefore originality; on the contrary, the authorities strongly suggest that labour of that kind may do so (cf Matthewson v Stockdale; Longman v Winchester; Kelly v Morris; Scott v Stanford; Morris v Ashbee; Cox v Land and Water Journal Company; Morris v Wright; Hogg v Scott; Ager; Collis; Weatherby; ACP v Morgan; Autospin; and the recent Indian case, Burlington’s Home Shopping Ltd v Chibber (1995) Patent & Trademark Cases 278 (noted in Pravin Anand, “Burlington’s Home Shopping Ltd v Chibber” [4.90]

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Desktop Marketing Systems v Telstra cont. (1995) 6 Ent L Rev 159, in which the Delhi High Court, not following Feist, held that a computer database of mail order customers (names, addresses, telephone and fax numbers) was protected as a compilation within the definition of literary work). 161 To recognise copyright in compilations of factual data which do not involve selection or scope for variance in expression or arrangement may be seen, as a practical matter, to be an acceptance of the proposition that copyright can subsist in facts. No doubt policy reasons can be suggested for withholding, as for according, copyright protection in such cases. There are those who point to the advantages of permitting others to build on the first compiler’s work, without first having to repeat that work independently. Others point out that to deny the first compiler copyright protection is to discourage research by would-be first compilers. The Act does not provide for the compulsory licensing of copyright for reasonable remuneration in aid of the commercial objectives of a would-be licensee. Accordingly, the situation in cases such as the present under Australian law is an “all or nothing” one. … 163 The task of carefully identifying and listing all the units constituting a defined universe is usefully and commonly, undertaken. Moreover, alphabetical order is a common form of arrangement according to which such lists are made up. There are two special benefits offered by the compiler in such cases. The first is the assurance that the universe has been thoroughly explored, and that all members of it have been captured. “Whole-of-universe certification” gives value to the list. A compilation which can only profess to have captured “nearly all” the members of a defined universe is not as valuable as one that can claim to have captured all of them. But whole-of-universe certification is a benefit only if the second special benefit to which I referred is also present: an intelligible arrangement of the data compiled. Who would want a telephone directory containing particulars of all subscribers listed randomly and therefore inaccessibly? 164 The making of accessible whole-of-universe compilations is arguably to be encouraged by the giving of copyright protection on account of the industrious collection, verification, recording and assembly necessarily undertaken for the purpose. But ultimately the weighing of the competing policy considerations is a matter for the legislature. 165 For reasons given above, and as a result of proposition (10) in [160], the First Issue should be resolved in favour of Telstra. SACKVILLE J: [comments on “originality”] Subsistence of Copyright – Some preliminary points 335 The principal issue in this case concerns the “innovation threshold” which must be satisfied if a compilation of the names, addresses and telephone numbers of subscribers to a telephone service is to be accorded copyright protection: see S Ricketson, The Law of Intellectual Property (2001), at [7.35], citing a comment by Professor James Lahore. The resolution of this issue and the related question of infringement ultimately depends on the proper construction of the Copyright Act since, as noted earlier, copyright in Australia cannot subsist otherwise than by virtue of the Act: s 8. It is, however, difficult to approach the task of construction without reference to the older authorities which predate the passage of the first comprehensive copyright legislation, namely the Copyright Act 1911 (UK) (the “1911 Act”) declared to operate in Australia, subject to minor modifications, by the Copyright Act 1912 (Cth) (the “1912 Act”). Indeed, the written and oral submissions on the appeal referred to numerous authorities decided both before and after 1911. 336 The earlier authorities may be important, especially if they have been followed or approved in more recent cases based on modern legislation. Telstra relied, for example, on the decisions of the House of Lords in Walter v Lane [1900] AC 539, upholding copyright in reporters’ published records of speeches given by Lord Rosebery, and that of North J in Collis v Cater Stoffell & Fortt Ltd (1898) 78 LT 88 [4.90]

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Desktop Marketing Systems v Telstra cont. 613, upholding copyright in a catalogue of medicines and other articles sold by a chemist. In Sands v McDougall Pty Ltd v Robinson [1917] HCA 14; (1917) 23 CLR 49 Isaacs J (with whom Gavan Duffy and Rich JJ agreed) not only rejected the argument that the expression “original work” in s 1(1) of the 1911 Act implied inventive ingenuity, but stated that the principles stated by the House of Lords in Walter v Lane continued to apply to the new statutory regime (at 55). Similarly, the Court of Appeal in Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd (1955) 72 RPC 89, at 95, a decision post-dating the 1911 Act, remarked that Collis v Cater had never been doubted (see also Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, at 278, per Lord Reid; at 287-288, per Lord Hodson; at 292, per Lord Pearce). 337 Even so, some caution is necessary when reading the earlier authorities. There are significant differences between the nineteenth century law of copyright and the more modern law. At the time the much-cited case of Kelly v Morris (1866) 1 LR Eq 697 was decided (upholding copyright in the “Post Office London Directory”), the legislation in the United Kingdom made no explicit provision for a literary work to include a compilation. A provision to that effect was first introduced by s 35 of the 1911 Act. The reasoning in other cases depends, at least in part, on provisions that have no exact counterpart in modern legislation. In Chilton v Progress Printing and Publishing Company [1895] 2 Ch 29, for example, the Court of Appeal held that there was no copyright in a list of the plaintiff’s selection of horses tipped to win at races to be held in the ensuing week. Lord Halsbury pointed out that the object of the Literary Copyright Act 1842 (UK), as stated in the preamble, was “to afford greater encouragement to the production of literary works of lasting benefit to the world”. That object was, in his Lordship’s view (at 32), not served by regarding the plaintiff’s opinion as to likely winners as a “literary composition such as intended to be protected by the Copyright Act”. The Copyright Act currently in force in Australia makes specific provision for copyright in compilations, but has no preamble or statement of objects corresponding to the provisions relied on by Lord Halsbury. 338 It is also important to bear in mind that copyright protection extends to many different kinds of work. Each particular category of copyright presents its own issues as to the subsistence and infringement of copyright. It ought not to be assumed that the concepts applicable to one form of copyright work necessarily apply, without modification, to others. In Autospin (Oil Seals) Ltd v Beehive Spinning [1995] RPC 683, the issue was whether the defendants, by manufacturing seals, had infringed the copyright in the plaintiff’s drawings of seals and in a compilation of measurements included in the plaintiff’s charts. Laddie J cautioned (at 700-701) against the assumption that the question of “substantial reproduction” must be decided without regard to the nature of the copyright work allegedly infringed: When the court has to decide whether a particular act constitutes a substantial reproduction of a copyright work in my view it must have regard to the nature of the copyright work in issue. What amounts to a substantial reproduction of a particular type of artistic work may well not be a reproduction of a particular type of literary work. Indeed it should be remembered that the categories of copyright work created by copyright legislation are, in some cases, very broad and include materials which have little in common. Maps, charts and plans were protected as literary works under the 1911 Act but as artistic works under the 1956 and 1988 Acts. Therefore under the former Act they were treated as brethren to plays and novels while under the latter they are treated as being in the same category as paintings … When considering what amounts to infringement of the copyright in, say, a compilation, there is no compelling reason why the courts should pretend that the works covered by literary and artistic copyright form a coherent whole. It should be borne in mind that it is not enough to say that the defendant has “used” the plaintiff’s work. He must have reproduced it. In my view the court should ask the question “is it accurate to say that the alleged infringer’s article is, from a common sense point of view, a reproduction of this particular type of literary work?” [4.90]

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Desktop Marketing Systems v Telstra cont. … 339 As the present case demonstrates, policy tensions permeate the law of copyright, especially in the area of factual compilations. In Skybase Nominees Pty Ltd v Fortuity Pty Ltd (1996) 36 IPR 529, Hill J (with whom French J agreed) identified (at 531) the tension in policy between the monopoly rights which are conferred upon the owner of copyright in a literary, dramatic or artistic work on the one hand, and the freedom to express ideas or discuss facts on the other. While there will be an infringement of the copyright of an owner in a literary, dramatic, musical or artistic work where there is a reproduction of that work or a substantial part of it, the fact that another work deals with the same ideas or discusses matters of fact also raised in the work in respect of which copyright is said to subsist will not, of itself, constitute an infringement. Were it otherwise, the copyright laws would be an impediment to free speech, rather than an encouragement of original expression. It is this tension between “incentive and dissemination” (Denicola, supra, at 519) that underlies the difficulties raised by the present case. It also underlies the difficulty of distinguishing between expressions of ideas (which are the subject matter of copyright) and the ideas themselves (which, generally speaking, are not). … … Infringement 437 Desktop in substance relied on two arguments on the question of infringement. The first was that the primary Judge had failed to keep in mind the principle that in determining whether a substantial part of copyright work has been taken it is necessary to consider the originality of the part allegedly taken: Data Access v Powerflex, at 32-33. The second was that the primary judge had failed to pay proper regard to the requirement that the notion of reproduction for the purposes of copyright law requires not only a causal connection between the copyright work and the allegedly infringing work, but a sufficient degree of objective similarity between the two works: S W Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466, at 472, per Gibbs CJ. 438 The answer to the first argument has already been given. The listing information incorporated in Telstra’s directories satisfies the requirement of originality because of the labour and expense involved in the compilation. The originality of the compilation for copyright purposes does not lie in the prosaic method of presentation of the data, that is the listing in alphabetical order of the names and details of each subscriber. 439 Desktop accepts that information electronically stored on its CD-roms includes virtually all the listing data compiled by Telstra and published in its directories. The primary Judge found that around 95 per cent of the headings used by Desktop at the relevant times were identical to those used by Telstra and which had been derived from its headings books. Desktop clearly enough took the great bulk of headings compiled in the headings books (via the Yellow pages directories). Once it is accepted that the originality in Telstra’s compilations lies in the labour and expense involved in compiling the information, the primary Judge was right to conclude that Desktop had taken a substantial part of each of Telstra’s copyright works. It is not to the point that Desktop may not have adopted Telstra’s mode of presentation of the data. 440 So far as the second argument is concerned, I agree in substance with what has been said by Lindgren J. The approach outlined by his Honour is consistent with the authorities to which I have referred: see especially [117], [118]. See also Copinger and Skone James on Copyright (14th ed 1999), par 7-57; Independent Television Productions Ltd v Time Out Ltd [1964] FSR 64, at 72-74, per Whitford J; British Columbia Jockey Club v Standen (1985) 22 DLR (4th) 467 (BC CA). 90

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Desktop Marketing Systems v Telstra cont. 441 Even if it were necessary to demonstrate some degree of visual similarity between Telstra’s directories and headings books, on the one hand, and Desktop’s CD-rom products, on the other, I think that Telstra has discharged the burden, at least in relation to the residential CD-roms and Marketing Pro. 442 In relation to a literary work, including a compilation, “material form” includes “any form (whether visible or not) of storage from which the work … or a substantial part of the work … can be reproduced”. The definition is principally intended to overcome the difficulty under the earlier law that a database stored in electronic form may not have had the required objective similarity to a copyright work in a written form even though the database had been compiled from the copyright work: cf Computer Edge Pty Ltd v Apple Computer Inc [1986] HCA 19; (1986) 161 CLR 171, at 186, per Gibbs CJ; Pacific Gaming Pty Ltd v Aristocrat Leisure Industries Pty Ltd [2002] AIPC 92-759, at 37,090-37,091 [105]-[108], per curiam. … Conclusion 447 The appeal should be dismissed. There is no need to address Telstra’s notice of contention. Desktop should pay Telstra’s costs.

[4.100] In December 2010, Telstra was again before the Full Federal Court to appeal against a

judgment in the primary court that copyright did not subsist in its Yellow Pages and White Pages directories: Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCAFC 149. The court rejected Telstra’s appeal. Crucial in the judgments at first instance and on appeal was the fact that creation of the material form of the directories was carried out by a computer program overseen by persons who had no substantive input into that form. The questions that arose, therefore, were, firstly, could the independent intellectual effort or sufficient effort of a literary nature be directed at the creation of the material form of the work (the directories) or just some anterior activity (the collection of information presented in the directories)? And, secondly, if the intellectual effort must be directed at the creation of the material form of the directories, was there sufficient human effort involved to mean that the directories were reduced to a material form by an author or authors? The court held that this was not the case since the directories were brought into the form in which they were published by computerised and automated processes. In this particular case, if copyright had existed, it would have subsisted in the computer programming/software driving the compilation, rather than the compilation itself.

Telstra v Phone Directories Company [4.110] Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCAFC 149 Federal Court of Australia (Full Court) [In the primary court, the trial judge determined, as an issue separate from the other issues in the case, that copyright did not subsist under the Copyright Act 1968 (Cth) in the White Pages Directory (WPD) and the Yellow Pages Directory (YPD) published by Telstra Corporation Ltd and Senses Pty Ltd (the appellants). Telstra claimed that each WPD and YPD was an original literary work. In particular, each directory was said to be a compilation consisting of the expression of the information in individual listings in their particular form and arrangement as well as in the overall arrangement of the [4.110]

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Telstra v Phone Directories Company cont. individual listings, and, additionally in the case of the YPD, in the cross-referencing of the information under subject matter headings. Telstra appealed the judgment.] KEANE CJ: [5] The trial judge approached the determination of the question by reference to the decision of the High Court of Australia in IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458; 254 ALR 386; 80 IPR 451; [2009] HCA 14 (IceTV). Her Honour held at Telstra Corporation Ltd v Phone Directories Co Pty Ltd (2010) 264 ALR 617; 85 IPR 571; [2010] FCA 44 at [5]: For the reasons that follow, copyright does not subsist in any Work. None is an original literary work. By way of summary: 1. among the many contributors to each Work, the Applicants have not and cannot identify who provided the necessary authorial contribution to each Work. The Applicants concede there are numerous non-identified persons who “contributed” to each Work (including third party sources); 2. even if the human or humans who “contributed” to each Work were capable of being identified (and they are not), much of the contribution to each Work: 2.1 was not “independent intellectual effort” (IceTV [2009] HCA 14; 254 ALR 386 at [33]) and further or alternatively, “sufficient effort of a literary nature” (IceTV [2009] HCA 14; 254 ALR 386 at [99]) for those who made a contribution to be considered an author of the Work within the meaning of the Copyright Act; 2.2 further or alternatively, was anterior to the Work first taking its “material form” (IceTV [2009] HCA 14; 254 ALR 386 at [102]); 2.3 was not the result of human authorship but was computer generated; 3. the Works cannot be considered as “original works” because the creation of each Work did not involve “independent intellectual effort” (IceTV [2009] HCA 14; 254 ALR 386 at [33]) and/or the exercise of “sufficient effort of a literary nature”: IceTV [2009] HCA 14; 254 ALR 386 at [99]; see also IceTV [2009] HCA 14; 254 ALR 386 at [187]-[188]. 6. In this Court, the principal argument of the appellants is that, because each directory is a literary work published in Australia, the only question to be answered is whether it is an original literary work; this question can be answered, they say, without identifying any particular author much less all the authors. That is said to be because copyright in a work first published in Australia can subsist by virtue of s 32(2)(c) of the Act if the work is original in the sense of not being a copy. The appellants contend that it can be inferred that intellectual effort of some kind was applied by some individual or individuals in the production of each directory so that it can be said to be an original literary work. They argue that, neither the decision in IceTV, nor the reasons given by the High Court in that case, compels, or points to, a different conclusion in this case. 7. The principal contention of the respondents is that the directories were compiled, not by the individuals engaged to facilitate the process, but by a computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were published. 8. In my respectful opinion, the principal contention of the respondents should be accepted, and the decision of the trial judge should be upheld for that reason. In order to explain the reasons for my opinion, I propose to set out the relevant provisions of the Act, then set out the facts as found by the learned trial judge, and then proceed to discuss the arguments agitated by the parties on the appeal to this Court. …

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Telstra v Phone Directories Company cont. Desktop Marketing 83. The appellants place particular reliance upon the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112; (2002) 119 FCR 491. In that case the Full Court of the Federal Court held that telephone directories were “original” works in which copyright subsisted because “Telstra had undertaken substantial labour and incurred substantial expense” ((2002) [2002] FCAFC 112; 119 FCR 491 at 599) in compiling and presenting the details of telephone subscribers in a particular region. It was held that there had been an infringement of this copyright by reason of the appropriation of “the benefit of Telstra’s substantial labour and expense” ((2002) [2002] FCAFC 112; 119 FCR 491 at 535-536, 600). 84. In Desktop Marketing at [2002] FCAFC 112; (2002) 119 FCR 491 at [25]-[159], Lindgren J reviewed the English and Australian cases on the subsistence of copyright in compilations. It is important to appreciate that these cases were concerned principally with the issue of the sufficiency of intellectual effort necessary to the subsistence of copyright in a work. None of these cases were concerned with the impact of automation on the process of compilation. Desktop Marketing itself was not concerned with the impact of automation on the process of compilation. The only issue considered in Desktop Marketing in relation to the subsistence of copyright concerned the sufficiency of intellectual effort in compilation necessary for the subsistence of copyright. In the resolution of this issue, the protection of the skill and labour involved in compiling a work was regarded as the decisive consideration. The reasons of the High Court in IceTV for the determination of the present case indicate authoritatively that too much emphasis on protecting another’s skill and labour is apt to skew the enquiry as to the subsistence of copyright away from the centrality of authorship. 85. In Desktop Marketing the subsistence of copyright in the telephone directories was in issue only in relation to the sufficiency of intellectual effort necessary to characterise a work as original. The implications of automation for the subsistence of copyright did not arise for consideration. For that reason it cannot be treated as decisive of the question for determination in this case. There is reason to regard the assumptions on which the court proceeded in Desktop Marketing with scepticism. In IceTV Gummow, Hayne and Heydon JJ said of the decision in Desktop Marketing, at [134]: However, a reason to treat the decision in Desktop Marketing with particular care appears from the reasons of the trial judge. Finkelstein J had observed: There are literally hundreds of appropriately trained or qualified employees who make some contribution towards the production of a telephone directory. When the nature of the work they do is described, there arise three relevant questions to the subsistence of copyright: (a) Must a copyright work have an author? (b) Does a telephone directory have an author? (c) Is every employee who contributes to the final product a joint author of the directory? These are difficult questions for which there are no ready answers. Finkelstein J went on to explain that the parties had sought to elucidate none of those issues in the litigation, with the consequence that, as here, the relevant author or authors of the work in suit remained unidentified. 86. On behalf of the appellants, it is argued that this case can be decided in favour of the respondents only if all the cases which have upheld claims to copyright in compilations (which are collected in Desktop Marketing) can be said to have been wrongly decided. But that is not so. None of those cases, nor Desktop Marketing itself, involved automated compilation as opposed to compilation

[4.110]

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Telstra v Phone Directories Company cont. by individuals. The decision of this Court in Desktop Marketing (and the older cases to which it referred) did not advert at all to the effect of an automated process in the making of the compilation in respect of which copyright was said to subsist.

Note

[4.115]

In late January 2011, Telstra filed an application for special leave to appeal to the High Court from the decision of the Full Federal Court. Its application was refused in September 2011. [4.120] In Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd

[2010] FCA 984 (see [6.430]) before the Federal Court, Bennett J considered whether newspaper headlines could be held to be “literary works” and, thereby, whether copyright would subsist in them. Crucial to this consideration was whether there was any degree of artistic effort as well as originality in the creation of the headlines. The case was brought by Fairfax Media Publications, the publisher of the Australian Financial Review (AFR), against Reed International Books Australia, alleging that Reed had infringed Fairfax’s copyright by taking the AFR headlines as part of its media monitoring service. According to his Honour, the main issue relating to the subsistence of copyright was whether each of the contended works were “original literary works” within the meaning of Copyright Act 1968 (Cth) s 32.

Fairfax Media Publications v Reed International Books [4.130] Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984 Federal Court of Australia BENNETT J: … 9. In assessing the centrality of an author and authorship to the overall scheme of the Act, it is worth remembering that the theoretical underpinning of copyright legislation includes striking a balance of competing interests and competing policy considerations (IceTV at [24] per French CJ, Crennan and Kiefel JJ). Relevantly, it is concerned with rewarding authors of original literary works with commercial benefits having regard to the fact that literary works in turn benefit the reading public (at [24]). The “social contract” is that an author can obtain a monopoly, limited in term, in return for making a work available to the reading public (at [25]). 10. As the Abstracts publish a portion of the headlines of each AFR edition, unchanged, the subsistence of copyright in the headlines was a primary issue. Apart from contending that there is no copyright in headlines, Reed submits that Fairfax has failed to establish originality for the purposes of the Act by failing to prove: • Original skill and labour for the headlines to be works at all; • Originality by proof of authorship of the headline or of the joint authorship of the Article/Headline Combination; and • Originality of what is alleged to be the substantial part taken from the work. … Are headlines literary works in which copyright can subsist? … 32. The precise question of whether copyright subsists in newspaper headlines has not been decided by any Court in Australia. The Scottish case of Shetland Times Ltd v Wills [1997] FSR 604; 94 [4.115]

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Fairfax Media Publications v Reed International Books cont. (1996) 27 IPR 71 concerned an application for an interlocutory injunction. Despite a concession that a headline could be a literary work and an observation that the headlines in question were “designedly put together” for the purpose of imparting information, Lord Hamilton expressed the reservation that, “while literary merit is not a necessary element of a literary work, there may be a question whether headlines, which are essentially brief indicators of the subject matter of the items to which they relate, are protected by copyright” (27 IPR 71 at 74-75). His Lordship did not reach a final conclusion on the question. … 36. Reed contends that headlines are analogous to a title of a book or other work and relies on the fact that titles, slogans and other short phrases have been consistently refused separate protection under Australian and English copyright law. In IceTV, French CJ, Crennan and Kiefel JJ acknowledged that generally speaking, no copyright could be claimed in a programme title alone (IceTV at [27] referring to Garnett K, Davies G, Harbottle G, Copinger and Skone James on Copyright (15th ed, Sweet & Maxwell, 2005) at [3–16] and Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 at 469 per Lord Reid). Reed concedes that there has been not been complete uniformity in reasoning in previous cases and texts and submits that the correct view is the de minimis principle: that titles and the like are simply too insubstantial and too short to qualify for copyright protection as literary works. Reed relies on the following comments of the Privy Council in Francis Day & Hunter Ltd v Twentieth Century Fox Corp Ltd (1940) AC 112 at 123: As a rule, a title does not involve literary composition, and is not sufficiently substantial to justify a claim to protection. That statement does not mean that in particular cases a title may not be on so extensive a scale, and of so important a character, as to be a proper subject of protection against being copied. As Jessel MR said in Dick v Yates … there may be copyright in a title “as, for instance, in a whole page of title of something of that kind requiring invention”. … 40. In my view, the headline of each article functions as the title of the article. Indeed, “headline” is defined in the New Shorter Oxford English Dictionary (5th ed, Oxford University Press, 2002) to mean, relevantly, “The line at the top of a page containing the title etc; a title or subtitle in large type in a newspaper etc” and, in the Macquarie Dictionary (3rd ed, The Macquarie Library, 1998) to mean, relevantly, “a display line over an article etc, as in a newspaper; the line at the top of the page, containing the title, pagination etc”. 41. It may be a clever title. That is not sufficient (cf “Opportunity Knocks” for a game show; “The Man who Broke the Bank at Monte Carlo” for a song; “Splendid Misery” for a novel). It may be an indication of the content of the article and that is not sufficient (cf “The Lawyer’s Diary” for a diary). (See generally Copinger at [3–16] and Laddie et al at [3.62].) It may be a grouping of words that convey, in themselves, the subject matter such that the expression was inseparable from the idea conveyed (“Help-Help-Driver-in-danger-Call-Police-Ph.000” in State of Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) [2009] FCA 737; (2009) 177 FCR 61). In each case it was determined that the contended work did not justify claims of copyright protection, although the reasoning was not identical. In Lamb v Evans [1893] 1 Ch 218, the “headings” in which copyright was held to subsist were more than mere headlines. They included three translations and catch-words. At 232, Kay LJ said: There is sufficient literary labour involved in the production of these headings to make them properly the subject of copyright. That decision does not necessitate a finding of copyright in newspaper headlines generally. 42. The headlines in the AFR range from the more prosaic: “Investors warned on super changes” and “Builders report fall in house sales” to ones that employ what might be thought of as a more interesting and clever use of words, such as “Blackout probe sheds little light” and “Returns after tax [4.130]

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Fairfax Media Publications v Reed International Books cont. will be simply super”. While the use of devices such as puns and double entendres may be clever, evoke admiration and attract attention, the reasons for the denial of copyright protection to “works” that are simply too slight have long been invoked and have formed the basis for much judicial precedent. In some cases the headline represents no more than the fact or idea conveyed. 43. In Exxon Corporation v Exxon Insurance Consultants International Ltd [1982] Ch 119, protection for an invented word (“Exxon”) was denied on the basis that, while the word was original and was created after considerable research and labour, it was not a “literary” work because it was not intended to afford information and instruction or pleasure in the form of literary enjoyment (referring to the definition of “literary work” in Hollinrake). A headline may come within the well-used criteria for a literary work as set out in Hollinrake but those criteria do not afford an exhaustive definition. They may well be necessary but they are not sufficient. Such criteria may well describe a literary work but the mere fact that a word or sequence of words provides information or pleasure is not necessarily sufficient to constitute a literary work for the purposes of the Act. 44. Headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works. The function of the headline is as a title to the article as well as a brief statement of its subject, in a compressed form comparable in length to a book title or the like. It is, generally, too trivial to be a literary work, much as a logo was held to be too trivial to be an artistic work (Cortis Exhaust Systems Pty Ltd v Kitten Software Pty Ltd (2001) ATPR 41-837 at [33] per Tamberlin J), even if skill and labour has been expended on creation (Exxon). 45. Copyright can only subsist in a “work”. Originality does not require novelty, inventiveness or creativity, whether of thought or expression, or any form of literary merit. Any words written by an author, original in that sense and not copied, could be said to satisfy the “literary” part of a literary work for which copyright is claimed. Those words could well convey information and instruction (such as “go outside, the sun is shining”) or pleasure (such as “you look beautiful”). However, not every piece of printing or writing which conveys information will be subject to copyright (IceTV at [45]). To obtain copyright protection under the Act, there must be a literary work. I appreciate that this has been the subject of much judicial consideration but I find it helpful to resort to dictionary definitions of “work”. The Macquarie Dictionary relevantly defines “work” as “that on which exertion or labour is expended; the product of exertion, labour, or activity: a work of art, literary or musical works”. There may well be writings of original words or phrases that simply do not reach the level of constituting a “work”, regardless of literary merit. This is not just because they are short, as a deal of skill and effort can go into producing, for example, a line of exquisite poetry. It is because, on its face and in the absence of evidence justifying its description as a literary “work”, the writing does not, qualitatively or quantitatively, justify that description. A headline is, generally, no more than a combination of common English words (Dicks v Yates at 88 per Jessel MR). It is “does not involve literary composition, and is not sufficiently substantial to justify a claim to protection” (Francis Day at 122-123); it does not, in the words of Jacobson J in Sullivan at [112], have “the requisite degree of judgment, effort and skill to make it an original literary work in which copyright may subsist” for the purposes of the Act. 46. It may be that evidence directed to a particular headline, or a title of so extensive and of such a significant character, could be sufficient to warrant a finding of copyright protection (Francis Day at 123; see also Milwell v Olympic Amusements Pty Ltd (1999) [1999] FCA 63; 85 FCR 436 at [29]) but that is not the case here. Fairfax claims copyright in each and every one of the ten selected headlines. It claims copyright in the headlines as a class of work, based on evidence of a general practice that headlines are determined by staff and settled at meetings of staff to provide a title to a story which also fits into the format of the page of the AFR. That is insufficient to overcome the reasoning for the established practice of denying copyright protection to titles which is the apt characterisation for headlines as a class. 96 [4.130]

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Fairfax Media Publications v Reed International Books cont. 47. The majority of the headlines in the sample editions are short factual statements of the subject of the article. The addition of a pun does not, of itself, in the absence of evidence, convert such statements into literary works. As to the evidence adduced with respect to the Telstra Headline and the Health Headline, I accept Reed’s submission that the evidence is not sufficient to “carry” the rest of the headlines. Further, Mr Bailey’s evidence differentiates the work involved in the headlines of the front page from that for other headlines and demonstrates that the work involved in the Telstra Headline was primarily to ensure that the story was accurate, with the changing headline flowing from a changing appreciation of the facts. It is not the “ideas” of the author that is protected by copyright but their fixed expression (IceTV at [160]). 48. The headline and by-line is, as Reed says, meta-information about the work, not part of the work, the work being the article. The need to identify a work by its name is a reason for the exclusion of titles from copyright protection in the public interest. A proper citation of a newspaper article requires not only reference to the name of the newspaper but also reproduction of the headline. This was a matter of common ground between the witnesses. If titles were subject to copyright protection, conventional bibliographic references to an article would infringe. Such considerations may well be a reason for the fact that headlines and “short phrases” are excluded from copyright in the United States (Alberto Culver v Andrea Dumon [1972] USCA7 202; 466 F2d 705 (7th Cir 1972); Salinger v Random House Inc [1987] USCA2 415; 811 F2d 90 (2d Cir 1987) at 98; CMM Cable Rep Inc v Ocean Coast Props Inc [1996] USCA1 473; 97 F3d 1504 (1st Cir 1996) at 1520 n 21). 49. At IceTV at [161], Gummow, Hayne and Heydon JJ criticised the Full Court in Nine Network Australia Pty Ltd v IceTV (2008) 168 FCR 14 of tipping the balance too far against the interest of viewers in digital free to air television in the dissemination by means of new technology of programme listings in favour of the interest in the protection of Nine against perceived competition by IceTV. Their Honours noted at [163] a submission that no litigation alleging breach of confidence would have succeeded to protect Nine after the information reached the public domain and that the copyright litigation was an attempt to control the further dissemination of the information. This was discussed in the context of broadcasting information but it does raise a matter of possibly more general application. In my view, to afford published headlines, as a class, copyright protection as literary works would tip the balance too far against the interest of the public in the freedom to refer or be referred to articles by their headlines. 50. This does not exclude the possibility of establishing a basis for copyright protection of an individual headline but Fairfax has failed to prove that the ten selected headlines amount to literary works in which copyright can subsist.

CATEGORIES OF PROTECTED WORKS AND SUBJECT MATTER [4.140] The Copyright Act 1968 (Cth) distinguishes between two broad categories of

protectable subject matter, namely: • “Original Literary, Dramatic, Musical and Artistic Works” subsisting under Part III of the Act; and • “Subject Matter other than Works” subsisting under Part IV.

Part III Works [4.150] Copyright Act 1968 (Cth) Part III Works include the following: [4.150]

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• literary works (eg, books, film scripts, and even private correspondence) (both published and unpublished); • dramatic and musical works (eg, plays and music compositions recorded in the form of musical notation); • artistic works and works of applied art (eg, paintings, ceramics and carvings); • maps and technical drawings; • photographic works; • computer programs and databases; • an original artistic work that is a building or which is attached to or forms part of such a building.

Part IV subject matter [4.160] Copyright Act 1968 (Cth) Part IV subject matter includes the following:

• live performances; • sound recordings; • cinematographic films; • television and sound broadcasts; • published editions of works.

CATEGORY OF WORKS – PART III WORKS Literary works [4.170] Literary works are not really defined, or rather interpreted, in any comprehensive

way in the Copyright Act 1968 (Cth) s 10(1), but the section does state that they include: (a) a table, or compilation, expressed in words, figures or symbols; and (b) a computer program or compilation of computer programs.

This clearly protects computer programs and tables, but says nothing about what, in a more traditional context, might be considered “literary”. Business documents, catalogues, advertisements, lists, newspaper reports and so forth have been considered to be “literary works”: almost any kind of writing can qualify, but not single words or titles that are considered in themselves too trivial or inherently unoriginal to have copyright protection. All manner of items have been regarded as literary works for copyright purposes, ranging from the original subject matter of copyright books, to computer-selected numbers arranged in grid form (on a card published by a daily newspaper which enabled their readers to play a form of bingo: see Express Newspapers Plc v Liverpool Daily Post & Echo Plc [1985] FSR 306). Advertisements have not always been, but are now generally regarded as, subject to copyright protection: see O’Brien v Komesaroff (1982) 41 ALR 255. The effect of the adjective “literary” in defining the types of original material in which copyright subsists would appear to be relevant possibly to the form in which the work appears, and the function it should perform. The effect of this would seem to be that “literary” does not mean the work has to display any learning, but must simply amount to the exercise of sufficient effort, to effect a certain type 98 [4.160]

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of result. This result is the conveying of information, or perhaps instruction and pleasure in the form of literary enjoyment: Exxon Corp v Exxon Insurance Consultants International Ltd [1981] 2 All ER 495. In that case, the invented word “Exxon” was not regarded as a literary work because (at 503 per Graham J): It is a word which although invented and therefore original, has no meaning and suggests nothing in itself. To give it substance and meaning, it must be accompanied by other words or used in a particular context or juxtaposition. … It is not in itself a title or distinguishing name and, as I have said, only takes on meaning or significance when actually used with other words. …

The function of a literary work is to afford pleasure or instruction. Note that in Exxon Corporation v Exxon Insurance Ltd [1982] 1 Ch 119 at 143, Stephenson LJ said that “a literary work would be something which was intended to afford either information and instruction, or pleasure in the form of literary enjoyment, whatever those last six words add to the word pleasure”. Titles and single words from, for example, a poem or book are part of a “literary work” when embodied in the larger work, but questions of their protection by copyright when taken alone will revolve around whether such use amounts to taking a substantial part of the whole work so as to amount to an infringement: Exxon Corp v Exxon Insurance Consultants International Ltd [1981] 2 All ER 495 at 504. See also University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601. In Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 498, Latham CJ said (and Dixon J agreed): The law of copyright does not operate to give any person an exclusive right to state or to describe particular facts. A person cannot by first announcing that a man fell off a bus or that a particular horse won a race, prevent other people from stating those facts.

In Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 277, the court stated: [I]f sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright.

It should be noted that the Copyright Act 1968 (Cth) provides that a literary work can subsist in a non-written form (s 22(2)). For example, sounds embodied in an article or thing may constitute the material form of a literary work (inter alia). Therefore, a film or sound recording may have a “literary work” copyright as well as copyright protection as subject matter other than a work. The case of Kalamazoo (Aust) Pty Ltd v Compact Business Systems P/L (1985) 84 FLR 101, pushed the bounds of testing whether compilations as forms for business systems were the product of a sufficient degree of individual skill and care to be deemed a literary work and thus enjoy copyright protection.

Kalamazoo v Compact Business Systems [4.180] Kalamazoo (Aust) Pty Ltd v Compact Business Systems P/L (1985) 84 FLR 101 Supreme Court of Queensland THOMAS J: [102] The plaintiff company (Kalamazoo) claims that the defendant company (Compact Business Systems Pty Ltd) and its directors (Mr Crossley and Mr Spollen) have infringed the [4.180]

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Kalamazoo v Compact Business Systems cont. plaintiff’s copyright in a number of business record systems. References to “the defendant” should be taken to refer to the defendant company unless otherwise indicated. Six systems remain in issue, namely those described as: (a)

medical instant billing system;

(b)

vertical payroll ten entry system;

(c)

vertical payroll eighteen entry system;

(d)

solicitors account system;

(e)

real estate property [103] management and accounting system;

(f)

combined purchases and cash payments system.

Although they have been described as “systems”, the use of that term may be apt to mislead, especially as it is well known that there is no copyright in a system, method or idea. What is intended to be described by the plaintiff in each instance is a compilation of various blank accounting forms for intended use by customers in association with an apparatus known as a pegboard. The plaintiff’s forms were designed and published in combination with one another, and it is central to the plaintiff’s case that they be viewed as a totality or single work. The plaintiff’s counsel submits that copyright exists in the compilation of the various forms. Although conscious of the problems in use of the word “system”, I shall use it in the sense relied on by the plaintiff, that is to say as referring to the group of documents upon which the plaintiff in each instance relies. … Pegboard systems The pegboard holds the particular documents in certain positions in relation to one another by means of punched holes. The system, which is described as a “one-write” system, depends upon carbon or idem copies being made on the lower documents as an entry is written on the top document. General accounting systems of such kind have been in extensive use for many years, and there is evidence of application being made in the US for patent rights (no doubt in relation to the physical clamp-like apparatus and not in relation to the contents of the forms) as early as 1916. To take the first-mentioned “medical instant billing system” as an example, there are three basic forms designed to be used within a single pegboard folder. Although given longer titles, the documents are respectively (from bottom to top) a journal page, a ledger page, and a receipt. When the patient pays for his service the appropriate part of the receipt is written out, and the headings and columns are so ordered that the same words and figures fill out the appropriate details in the underlying ledger and journal. The receipts are prepared in marginally overlapping bundles, so that as each one is torn off (and handed to the patient) the next one will be in the appropriate position one line further down in relation to the underlying documents. Thus the process is repeated until the underlying documents are sufficiently filled out, whereupon they are transferred to the appropriate loose-leaf journal or ledger. … [104] … Issues The primary issue in the case is whether Kalamazoo is entitled to the copyright of the relevant systems. Kalamazoo claims that certain of its servants have spent considerable skill and care in the devising and drawing of the forms that comprise the systems, that they were the original works of such servants, and that as the employer of such persons it is entitled to such copyright as exists in such works. The defendants contended, inter alia, that the forms are insignificant variants of traditional accounting and bookkeeping forms, and that neither individually nor collectively are they original literary works under the Copyright Act 1968. … [120] … Originality 100 [4.180]

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Kalamazoo v Compact Business Systems cont. The next vital question is whether such works were “original” literary works. … [124] … If, as the defendants’ counsel invited me to do, I looked piecemeal at various parts of the documents, it would be possible to say that such parts were either reproductions, paraphrases or minor variations of documents already in general use. Taken alone, the size of the page, the number of columns, the width of the column, the spacing of holes for the punch, the heading of a column, a direction or instruction, the use of the “one-write” system, and the provision of boxes which force the taking of the balance, are trivial variants of commonplace ideas and forms, or applications of a method to which copyright is not available. However, whilst I refuse to find that the authors showed great skill, I did find that their preparation required a degree of concentration, care, analysis, comparison, and a certain facility in using and adapting the altered forms to a composite “one-write” system. In each case, some awareness of contemporary developments and the marketability of such forms played a part in their creation. Looking at each system as expressed, there is sufficient originality of expression, shape and content to comprise an original literary work. Whilst the importance and ingenuity of much of the data on the forms was overstressed in evidence, I am satisfied that, as a whole, the documents are entitled to protection of copyright and that each one forms an integral part of a particular system. Thus, on this piecemeal approach, there is nothing left justifying the protection of copyright. The present case is perhaps a good example of demarcation problems that afflict the law of intellectual property. The present “works” are partly diagrammatic, partly literary, and partly an apparatus designed for the use of customers. It presents problems in identifying work suitable for protection by copyright law as distinct from patent or design. But, in the end, I think that Hollinrake’s Case must be distinguished. The documents have their own character, their own form of expression, and in a sense tell their own story to the user. Therefore, even though it is true that they form part of a tool or device, I do not think that this aspect of their character needs to be severed or disregarded when evaluating their literary and original qualities. I acknowledge that it is central to my finding in favour of the existence of copyright that the documents be looked at compositely, and that the plaintiff’s case gains (rather than loses) weight from the fact that they were prepared and intended for a utilitarian function. If these components should be viewed separately, then my conclusion is wrong because item by item there is negligible originality in the works. Support for the need to look at the work as a whole may be found in Ladbroke Football) Ltd v William Hill (Football) Ltd. I conclude that each system comprised an original work. [THOMAS J later discussed the concept of “literary work”.] Literary work It is as well to repeat that the term “system” should be taken to refer to the respective groups of compatible documents upon which the plaintiff in each instance relies. The copyright asserted in the statement of claim is that of an original literary work, under s 32(2) of the Copyright Act 1968. … [118] … The relevant definition for present purposes is simply that “literary work” includes a written table or compilation. That in no way limits the ordinary meaning of the term, or the wide connotation given to it in decided cases. It will be noted that it expressly includes a compilation. Plaintiff’s counsel submits that each particular group of forms is a compilation of such forms, pointing out that they are specifically designed for use in conjunction with one another, and that in each instance they are part of a cohesive system. They are a compilation just as much as if they were put together in the one book, which in a sense they are. [119] … Mr Cooper QC, for the defendants, submitted that a “literary work” requires, as a minimum, that information, instruction or pleasure in the form of literary enjoyment be conveyed. Reliance was placed upon Exxon Corp v Exxon Insurance Ltd [1981] 3 All ER 241; [1982] Ch 119 at 142-144. Courts have refrained from spelling out any particular degree of skill perceivable from the [4.180]

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Kalamazoo v Compact Business Systems cont. words of the publication, and it is clear that literary merit is irrelevant. The formulation in the Exxon case was not treated as definitive or exhaustive by the members of the Full Court of the Federal Court in Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225 at 234-235, 258-259. The approach taken in Mirror Newspapers Ltd v Queensland Newspapers Pty Ltd [1982] Qd R 305 at 307 and Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465; [1964] 1 WLR 273 at 285, seems to be inconsistent with the proposition derived from the Exxon case. In his valuable work The Law of Intellectual Property, Mr Ricketson considers the denial of copyright on such a ground to be an aspect of “insubstantiality”, a problem which commonly arises in relation to titles of works, slogans, phrases and, sometimes, advertisements (paras 5.61-5.63). This is, I think, the true basis of the rejection of copyright for some works that obviously fail to provide information, instruction or pleasure. The submission points out that the forms are in themselves meaningless, and that they acquire utility and meaning only by additions made by the user after sale. Whilst accepting the force of that submission, it is also apparent that there is intellectual input in the forms inasmuch as they are designed and presented in a way which will produce meaningful results for the user. A similar submission, that a newspaper bingo game lacked meaning and utility in isolation was rejected in Mirror Newspapers Ltd v Queensland Newspapers Pty Ltd (at 308). The submission alternatively described the forms as being concerned with well-known subject matter which, at best, could be set out in a limited way and in a limited number of combinations. The submission described the works as “obvious or commonplace”, and suggested that copyright was being sought in the subject or method rather than in the expression. Reliance was placed upon Kenrick & Co v Lawrence & Co (1890) 25 QBD 99 at 103. That case concerned a voting form on which the publisher printed the representation of a hand holding a pencil in the act of completing a cross within a square. Wills J said, at 104: The copyright must be confined to that which is special to the individual drawing over and above the idea in other words, the copyright is of the extremely limited character which I have endeavoured to describe. A square can only be drawn as a square, a cross can only be drawn as a cross, and for such purposes as the plaintiffs’ drawing was intended to fulfil, there are scarcely more ways than one of drawing a pencil or the hand that holds it. If the particular arrangement of square, cross, hand, or pencil be relied upon it is nothing more than a claim of copyright for the subject, which in my opinion cannot possibly be supported. The submission would be acceptable if the component parts of the forms were considered in isolation. But the present case is, in my view, distinguishable. The forms and the systems, if viewed as a whole, are not so commonplace that they cannot be presented in more that one way. Indeed, the evidence in the case indicates that such forms can be and have been presented in [120] different ways, and no doubt will continue to be presented in different ways from time to time, according to the needs of business and professional communities from time to time. I therefore conclude that each of the systems was a literary work.

Dramatic works [4.190] Again dramatic works are not comprehensively defined in the Copyright Act 1968

(Cth), although s 10(1) states that a “dramatic work” includes: (a) a choreographic show or other dumb show; and (b) a scenario or script for a cinematograph film; but does not include a cinematograph film as distinct from the scenario or script for a cinematograph film. 102 [4.190]

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The Copyright Act 1905 (Cth) s 4 defined a dramatic work as “any tragedy, comedy, play, drama, farce, burlesque, libretto of an opera, entertainment or other work of like nature, whether set to music or other scenic or dramatic composition”. Many dramatic works may also be literary works: see Zeccola v Universal City Studios Inc (Jaws Case) (1982) 67 FLR 225 (at [4.200] below). One of the difficulties here is distinguishing between the idea and the expression thereof. The question is to what extent the dramatic incidents or the plot of a play, for example, may be protected: see Tate v Thomas [1921] 1 Ch 503. The copyright in a film script (as a work) should be distinguished from the copyright in the film itself, which may embody a work and also cinematograph film copyright (Copyright Act 1968 (Cth) s 86). Note that the dramatic or musical work must be reduced to a “material form” in order to be protected (see previous discussion on “material form” at [4.40]). Hence it is not the performance, but the script or score that receives copyright protection. Performances of dramatic and other works are protected independently of any underlying work being performed. Since 1989, the Copyright Act 1968 (Cth) Part XIA has protected live performances from unauthorised recording and this protection now extends to prohibiting communication and “public performance” of a performance or recording without authorisation. See Zeccola v Universal City Studios Inc (Jaws Case), below, and Green v Broadcasting Corporation of New Zealand (1988) 16 IPR 1, in which the difference between a literary work and a dramatic was considered.

Zeccola v Universal City Studios [4.200] Zeccola v Universal City Studios Inc (Jaws Case) (1982) 67 FLR 225 Federal Court of Australia LOCKHART J: The judgment I am about to deliver is the joint judgment of [226] Fitzgerald J and myself. This is an appeal from a judgment of the Supreme Court of Victoria delivered on 4 August 1982 which granted interlocutory injunctions restraining the appellants until the final hearing of the action or further order from infringing the respondent’s copyright in a novel, screenplay and film each entitled Jaws and from infringing the respondent’s registered trade mark in the word Jaws. A problem in these proceedings is that the parties tended to blur the distinction between final and interlocutory proceedings and the problem was exacerbated by the different copyrights asserted by the respondent as the basis of its claim. Many questions have been raised, some of which were dealt with by the learned primary judge, which may be of importance at the trial but do not fall for present decision and indeed are best left open at this juncture for later determination. It is well-established that where the judgment appealed from involves the exercise of discretion by the trial judge this court will not interfere unless an error of the kind mentioned in various cases, including House v The King (1936) 55 CLR 499, is shown to have been made. … We will not trouble to recite all the findings of fact and law made by the primary judge in an extensive judgment. It is sufficient if we refer to them in summary form as follows. The novel Jaws was written by Peter Benchley, a US citizen. It was first published in 1974 in the US. The Jaws screenplay was completed in the same year. The film Jaws was made in the US in 1975 and was first shown to the public there in July of that year. Since then it has been exhibited in most countries of the world, including Italy, where it was called [Lo] Squalo which, translated into English means “The Shark”. [227] [4.200]

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Zeccola v Universal City Studios cont. The film Jaws has been a huge success and has made a lot of money for the respondent. Apart from exhibitions in motion picture theatres it has been shown under contract on television in the US and many other countries. Most of those contracts are still on foot. The sale of video cassettes and disks has also been widespread and is still proceeding. In 1977 the respondent arranged for the making of a sequel to Jaws which was called Jaws II. Jaws II concerns much the same subject matter and character as Jaws. Jaws II was first exhibited to the public in June 1978 and has also been a great success. Both films have been prominently featured as Universal films and some $20 million has been expended in promoting the films throughout the world. Another film Jaws 3-D is presently being made by the respondent and the respondent has also obtained registration in Australia of the word Jaws and of a drawing depicting the head and open jaws of the shark as trade marks in respect of, among other things, cinema films and printed matter. The film Great White was made by Italian film makers in early 1980. A full page advertisement in Weekly Variety, an American periodical, dated 7 May 1980 stated that the film was to be called The Last Jaws. When the film was first shown in Italy later in 1980 its name was [L’Ultimo] Squalo which translated into English as The Last Shark. The appearance of the advertisement in Weekly Variety excited the interest of the respondent. Steps were taken in Italy to prevent the showing of the film Great White and litigation ensued which is still pending. Litigation followed in other countries. The primary judge dealt at length with the various issues between the parties. The appellants do not dispute that the respondent has acquired and is entitled to sue in Australia to enforce any copyright which exists here in the novel, screenplay or film Jaws, but asserts that no such copyright exists. Counsel for the appellants made various submissions impugning the judgment from which they have appealed. Some of these submissions were disposed of in the course of discussion between counsel and the bench and need not be referred to further. Other submissions were put in various ways but in essence were the same as each other. We confine ourselves to the principal submissions made on behalf of the appellants. Counsel for the appellants submitted that the primary judge erred in holding that the novel Jaws was an original work for the purposes of the Copyright Act 1968 (the Act). It was submitted that there was no evidence or at least no sufficiently reliable evidence to support his Honour’s conclusion. The hearing was conducted, as applications for interlocutory injunctions usually are, on evidence by affidavit supplemented where necessary by cross-examination. We see no purpose in analysing in detail the evidence before his Honour touching this question, but it is sufficient to say that there was evidence of the originality of the novel Jaws … it was submitted by counsel for the appellants that the primary judge committed a fundamental error in his approach to the question whether the appellants had infringed the copyright of the respondent in the film Jaws. It was submitted that copyright in a film subsists only in those parts of the film capable of being the subject matter of copyright, that is, having the requisite character of originality, and that it is necessary to excise other parts from the whole. It was said that it is only the residue that can be the subject of copyright and thereby be protected from infringement. … [228] … Counsel for the appellants submitted that both films Jaws and Great White are genre films based upon the idea of a savage monster menacing a community. Each is a film about a killer shark terrorising human beings and it was said that neither film was entitled to protection as there is no copyright in that general idea. The difficulties involved in severing films into parts which are capable of characterisation as original works and other parts that are not is obvious. Indeed, it is the subject of only limited exploration by the laws of this country and the UK. We were referred to certain decisions of US courts where this question has been considered from time to time and we have found those cases helpful in resolving the questions before us. In general, there is no copyright in the central idea or theme of a story or play, 104 [4.200]

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Zeccola v Universal City Studios cont. however original it may be; copyright subsists in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme. If these are totally different the taking of the idea or theme does not constitute an infringement of copyright. Of necessity certain events, incidents or characters are found in many books and plays. Originality, when dealing with incidents and characters familiar in life or fiction, lies in the association, grouping and arrangement of those incidents and characters in such a manner that presents a new concept or a novel arrangement of those events and characters. We accept that where a story is written based on various incidents which, in themselves, are commonplace, a claim for copyright must be confined closely to the story which has been composed by the author. Another author who materially varies the incidents and characters and materially changes the story is not an infringer of the copyright. If a literary or dramatic work is not wholly original there is no copyright in the unoriginal part so as to prevent its use. Additional factors may fall for consideration where the alleged infringement is by cinematograph film. The primary judge closely analysed the two films Jaws and Great White. Notwithstanding that the subject matter of the film Jaws was not particularly striking his Honour held the view, in essence, that the combination of the principal situations, singular events and basic characters was sufficient to constitute an original work that was susceptible of protection under the law of copyright in this country. In our opinion his Honour’s finding has not been shown to be in error. It must be remembered that all his Honour did was make his findings on the basis that a prima facie case was established. [229] He did not make any final or definitive finding on this, or indeed any other question. It was submitted that his Honour erred in holding that the question whether the respondent’s copyright was infringed by the making and showing of the film Great White came down to a question of whether Great White was a substantial adaptation or reproduction of the book or screenplay Jaws or a substantial copy of the film Jaws. Counsel for the appellants submitted that the film Great White could not be said to constitute an infringement of any copyright of the respondents in the film Jaws unless it was an exact or facsimile copy of the film Jaws. The argument was based on various matters including certain sections of the Act. Section 10 which defines the word copy and ss 86 and 101 are some of the sections referred to. No authority was cited for this proposition, but counsel adopted as part of his argument a passage from Lahore’s Intellectual Property in Australia. We do not find it necessary to answer this question. It raises important and difficult questions which, if they are relevant on the final hearing, may be debated then. At its narrowest, the major issue is whether or not the appellants’ film Great White substantially reproduced the novel Jaws or the screenplay based upon that novel from which the respondents’ film Jaws was made. In the resolution of that question it is appropriate to have regard to the operation of s 21 of the Act which deems cinematographic films to be reproductions of literary or dramatic works in certain circumstances. If the primary issue is so stated any problems of statutory interpretation arising out of the definition of “adaptation” in the Act, or as to what constitutes an infringement of one cinematographic film by another, can be avoided without risk of limiting the substance of the relief sought, which is to restrain the exhibition of the appellants’ film Great White. The primary judge correctly realised that two questions were involved in the resolution of what is the major issue: namely, the degree of objective similarity between the appellants’ film and the respondent’s novel and screenplay and, given sufficient objective similarity, whether copying was established. In relation to the question of copying, the appellants sought to show that the inspiration for the film Great White came partly from the imagination of its producer, Dr Tucci, and partly from a book by one Ramon Bravo called Carnada which is published only in Spanish. [4.200]

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Zeccola v Universal City Studios cont. His Honour was provided with a copy of the novel and screenplay Jaws, but did not have time to read them in the circumstances attending the claim for interlocutory relief. However, the proceedings before him were conducted on the basis that the screenplay closely followed the novel and that the film Jaws closely followed the screenplay. Thus the exercise of comparison between the novel and the screenplay Jaws on the one hand, and the film Great White on the other hand, was regarded as appropriately undertaken by a comparison of the two films. Further, all his Honour had of the book Carnada was a translation in condensed form. His Honour, with some degree of fortitude, viewed both films, one after the other. The comparative exercise which his Honour undertook was central to his decision. He considered that there was such a marked degree of similarity between the two films that there was an inescapable inference of copying and that the respondent had an excellent chance of success at the trial. The strength of his views in relation to the similarity between the two films [230] influenced the attitude which he took to much of the evidence, including expert evidence, and to the appellant’s denial of copying, most of which was held to be inadmissible. Much criticism was levelled by the appellants at the approach which his Honour took to such evidence and at the inference of copying which he drew. While our own viewing of the films did not instill in us the same degree of conviction that his Honour felt, we are not persuaded that his Honour was wrong. Appeal dismissed.

Is a public spectacle a dramatic work?

Nine Network v Australian Broadcasting Corp [4.210] Nine Network Australia Pty Ltd v Australian Broadcasting Corp (1999) 48 IPR 333 Federal Court of Australia HILL J: [334] … Around 9 pm on 31 December 1999, and especially around 12 midnight and half an hour thereafter into the year 2000, an event will occur in the City of Sydney focused particularly on Sydney Harbour and the Harbour Bridge. There will be fireworks accompanied by music displays on the Harbour Bridge. Eighteen barges will carry large lantern figures of sea creatures promenading around the harbour. It promises to be an event of significance to the city, to Australia and, indeed, to the world. The event is being financed by the Council of the City of Sydney which is not at least at present, a party to the current proceedings. To obtain some contribution to the cost of this and previous New Year events the Council entered into an agreement with Nine Network Australia Pty Limited (Channel Nine), the commercial television broadcaster which through its network and affiliated TV stations effectively covers in its “footprint” mainland Australia and Tasmania. That agreement takes the form of a letter written by the Council of the City of Sydney to Channel Nine and concerned New Year celebrations in December 1997 through to December 2000. Under it Channel Nine is required to contribute an amount to the costs in accordance with a formula in the letter. According to the evidence before me, the estimated contribution by Channel Nine to the 2000 event is in the order of $450,000. The total cost of the event is estimated to be approximately $3 million. In consideration of this contribution the city named Channel Nine the official television broadcaster and granted to it the exclusive right to record all performances, the fireworks spectacular and other entertainment organised by the city and connected with the event, and televise the coverage it recorded throughout Australia and Papua New Guinea. 106 [4.210]

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Nine Network v Australian Broadcasting Corp cont. The respondent Channel Two is the public television broadcaster in Australia. It has made arrangements with an international consortium of television stations led by the BBC for a worldwide television coverage of some 25 hours illustrating the events which will occur in various countries throughout the world to celebrate the arrival of what at least most people refer to as the new millennium. It is contemplated that that coverage will include a coverage of the happenings on Sydney Harbour. A confidential exhibit details the program as presently scheduled. The Australian segment goes of course beyond Sydney and [335] includes other state capitals, although Channel Two proposes to film the entire spectacle in Sydney Harbour and parts of that will form the international coverage which Channel Two proposes to broadcast in Australia and which will be broadcast internationally throughout a large part of the world to what could be no doubt an audience of millions. The fact that both channels propose to televise (Channel Nine the whole and Channel Two at least part thereof) the Sydney celebrations is not something that has only become known in the past few days. It has been known by the Council, Channel Nine and Channel Two at least since 16 August 1999 when Channel Nine sought from the Council the international television rights for its coverage presumably to block Channel Two passing what Channel Nine in the letter described as “stolen coverage” onto the BBC led international TV consortium of which Channel Two was to be a member. It is also clear that the shape, if I may call it that, of the event was settled by that time, though subject no doubt to fine tuning which fine tuning may well continue until 31 December. However it took until 13 December of this year for Channel Nine to commence proceedings in this Court. It seeks now, but a few working days before the event is to take place, urgent interlocutory relief restraining Channel Two from broadcasting in Australia a television broadcast featuring what are referred to as the bridge face device, the bridge word design, the Sydney Harbour lanterns and the fireworks production at 9 pm and midnight, subject to a proviso that any conduct constituting a fair dealing under s 42 of the Copyright Act 1968 (Copyright Act) would not be prohibited. The original threat made by Channel Nine went much further than the current proceedings do. Indeed they initially seemed to want to restrain Channel Two filming any of these events for inclusion in an international broadcast, although it is clear that Channel Nine’s rights, such as they are, extend only to Australia and Papua New Guinea and no further. However that has now been abandoned. Channel Nine base its claim for relief on copyright rights which it alleges vest in the City Council in each of these “works” of which it claims to be the exclusive licensee for TV broadcasts in Australia. … In what is copyright alleged to exist? … [337] … For Channel Nine its strongest case of copyright is with the drawing of the sea creatures and the lanterns which reproduce those drawings in a three-dimensional form. The drawings are on any view of the matter original and copyright exists, in my view, in those drawings and in the three-dimensional form the drawings take being, at the least, works of artistic craftsmanship. In my view, the weakest copyright case for Channel Nine, on the other hand, is the claimed copyright said to exist in the dramatic work originating from the schedule dealing with the fireworks display and what written submissions of senior counsel for Channel Nine referred to as “the fireworks production”. As I understand it, each type of firework produces a particular effect. Randomly set off the effect of those fireworks might be chaotic. It takes skill and artistry, perhaps, to determine the order in which particular kinds of fireworks are set off and to produce the spectacular effect which is hoped for to meet the occasion. The relationship between the music, its beat or rhythm, and the exploding fireworks is no doubt also of importance. Having said that I have difficulty in the conclusion that if the schedule is itself followed precisely, because that would have to be a prerequisite of the copyright protection (it is certainly contemplated [4.210]

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Nine Network v Australian Broadcasting Corp cont. that that will be the case although I suspect that fine tuning may still be possible between now and 31 December) the exploding fireworks display is a dramatic work within the definition of that expression in s 10(1) of the Copyright Act 1968. That section defines dramatic work to include: (a) a choreographic show or other dumb show; and (b) a scenario or script for a cinematograph film; but does not include a cinematograph film as distinct from the scenario or script for a cinematograph film. The expression of course has its ordinary English meaning in addition to the defined meaning to which I have referred. The question really is whether the setting off of the fireworks spectacular, ephemeral as it is, is a “dramatic work” in the ordinary sense of those words. It is not a matter upon which I have formed a concluded view but there are certainly difficulties it seems to me with the argument. It is or will be if the matter goes to trial the case for Channel Nine, that because the fireworks show alone or in combination with other events such as the barge display is in the nature of a series of composed events and has dramatic unity and interest, it is therefore a dramatic work. There is also the question whether the ultimate fireworks show is really a material form of what was planned. The requirement that it be scripted, directed and staged, assuming Sydney Harbour to be a gigantic outdoor stage for the present purposes may more readily be accepted to the extent that it is planned, but as I have already suggested there may be many a slip between the actual plan and the ultimate performance. It can be argued not to involve improvisation: Karno v Pathé Frères Ltd (1908) 24 TLR 588 at 590-591 affirmed on appeal (1909) 25 TLR 242 and see Australian Olympic Committee Inc v The Big Fights Inc [1999] FCA 1042 (3 August 1999) per Lindgren J at [42]. It is, one would think, common place in at least a half of the present decade that firework shows with music are planned. It has never been suggested to my [338] knowledge, and there is no reported case in which the matter has been subjected to legal analysis which has suggested that copyright subsists in a fireworks show set to music just because the sequence of events is scripted. That does not mean that copyright might not exist. It may merely be the result either of difficulties of enforcing the non-filming of such events or it may be that no one has thought deeply about the issue. At the heart of the problem may well be that copyright is a monopolistic right existing not to protect ideas as such but the physical manifestation of some original literary, artistic or dramatic work. Channel Nine’s argument cannot be said to be doomed to failure although at the present I am inclined to the view that it is not strong. The question of subsistence of copyright in the bridge face or bridge word drawings and the related question of the photography, recording and then showing of images of the actual bridge with the lit designs constituting infringement also had difficulties for Channel Nine. In each case the drawing of the bridge is a substantial part of what is said to be the original artistic work. No doubt a drawing of the bridge is capable of being an original artistic work but what is photographed is the actual Harbour Bridge, on any view an object in the public domain, to which is affixed a representation in lights of either the face or the word “Eternity”. The face itself is, on the evidence as it stands no doubt an original drawing, but I have reservations in whether copyright can subsist in a representation in copperplate in lights of the word “Eternity” made if not popular, at least prominent, as I have said, by Mr Stace …

Musical works [4.220] As with literary and dramatic works, there is no definition of “musical work” in the

Copyright Act 1968 (Cth). As with other categories, the description relates to the character of 108 [4.220]

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the work rather than merit. Hence there is no requirement that the music be of a particular quality. Thus the score of a song is a musical work, whether it is an advertising jingle or an operatic aria. Where words are set to music, the two works (literary and musical) remain separate. If the song is recorded, another copyright exists in the sound recording (in accordance with Part IV of the Act). Selections of existing music as such may attract copyright, separate from that which exists in the original. This is distinct from the issue of infringement of an existing work. The question of what degree of effort constitutes originality – yet another issue – will depend upon general principles. In CBS Records Australia Ltd v Guy Gross (1989) 15 IPR 385 (at [4.230] below), CBS was found not to have infringed any copyright which subsisted in the “multitude of differences” between two works, one the original work and the other a copy of that work. Note that the requirement of “material form” means that improvised or traditional music will not attract copyright protection unless or until it is written down or otherwise recorded. See Schott Musik International GMBH v Colossal Records (1996) 36 IPR 267.

CBS Records Australia v Guy Gross [4.230] CBS Records Australia Ltd v Guy Gross (1989) 15 IPR 385 Federal Court of Australia [Colette, an Australian singer, re-recorded for CBS a song called “Ring My Bell”, which was originally recorded during the 1970s by Anita Ward, an American singer. The original song was “in keeping with the black American ‘funk’ vocal tradition” (at 389) to which Anita Ward belonged. The Colette version was adapted to the style, range and capabilities of that singer resulting in a version which took “what may be called the line of least resistance to the song” (at 389). Colette had made a demonstration tape for CBS using an arrangement of “Ring My Bell” with instrumental parts supplied by Guy Gross, using a synthesiser. Gross claimed that the demonstration tape (the Trackdown version) embodied an original musical work, being an arrangement of the song sufficiently different from the Anita Ward version, and that CBS had infringed that copyright by copying the arrangement.] DAVIES J: … [392] As to whether any copyright subsists in the Trackdown version is a point of difficulty. For copyright in an arrangement to subsist, the differences from the work arranged must be such that a new original work can be identified. Differences resulting from mere interpretation, particularly differences brought about by an arrangement of a work to suit the qualities of a particular singer’s voice, do not result in the creation of an original work. Particularly is this so in the area of popular music where the latitude given to a performer may be much greater than that in classical works, where the notes, phrasing, emphasis and the like tend to be specified in great detail. Creational competition is required to bring into being an original work. [The Trackdown version was considered by Davies J to be an original musical work.] [394] … But this is not a case where a particular feature stands out, where an opera score has been rewritten for piano or where important new harmonisations have been composed. In the present case, I am unable to identify any such element. The work was a song having vocal lines and an instrumental backing. There were not two pieces of music. The vocal and instrumental parts were elements which combined together to form a single work. Whether there may be separate copyright in each map of a street directory, as discussed by Hill J in Universal Press Pty Ltd v Provest Ltd & Brothers Publishing Pty Ltd (1989) 14 IPR 623; 87 ALR 497, or in each chapter of a novel, as mentioned in University of New South Wales v Moorhouse (1975) 133 CLR 1; 6 ALR 193, the present is not such a case.

[4.230]

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Artistic works [4.240] The question of what amounts to an artistic work for copyright purposes is,

unusually, interpreted in the legislation rather than left to general principles. Also unusually, this interpretation imports aesthetic notions into the decision as to whether works of artistic craftsmanship are protected. The Copyright Act 1968 (Cth) provides a fairly exclusive list of “artistic work” at s 10(1), being: (a) a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not; (b) a building or a model of a building, whether the building or model is of artistic quality or not; or (c) a work of artistic craftsmanship whether or not mentioned in paragraph (a) or (b); but does not include a circuit layout within the meaning of the Circuit Layouts Act 1989.

Works of artistic craftsmanship are treated as “artistic” only if they have aesthetic appeal, whereas works encompassed within s 10(1)(a) and (b) above have only to exhibit the originality and substance generally required in order for copyright to subsist. Section 10(1) continues to add to this definition in respect of some of the abovementioned classes of work – such as drawing, engraving, photograph, and sculpture – but still does not exhaustively define them: Painting [4.250] “Painting” does not receive any further explanation in the Copyright Act 1968 (Cth) as to its characteristics, leaving the issue to the eye of the beholder, or, on occasion, to the courts to determine. See, for example, Merchandising Corporation of America v Harpbond [1983] FSR 32 (as per the extract at [4.290] below), in which Lawton LJ commented that “it was fantastic to suggest that make-up on anyone’s face could possibly be a painting”.

Painting or portrait? [4.260] In the following extract from Attorney-General v Trustees of National Art Gallery of New South Wales (1944) 62 WN (NSW) 212 (“Joshua Smith” Case), the court considered whether a caricature could be deemed to be a painting or a drawing.

Attorney General v Trustees of National Art Gallery of NSW [4.270] Attorney General v Trustees of National Art Gallery of NSW (“Joshua Smith” Case) (1944) 62 WN (NSW) 212 Supreme Court of New South Wales [The issue arose not in the context of copyright but as a result of awarding the Archibald Prize for 1943 to William Dobell for his portrait of Joshua Smith. Objection was made to the payment of the prize to Dobell for a work that was termed a caricature and not a likeness of Joshua Smith, when the prize was intended to be awarded for “the best portrait preferentially of some man or woman distinguished in Art, Letters, Science or Politics” from the income of a trust established for that purpose. As to the meaning of “portrait”, Roper J said:] ROPER J: [215] With the assistance of dictionaries and the many works to which I have been referred by counsel in this case, I think that the word “portrait” as used in this will, incorporating in its meaning the limitations imposed by its context, means a pictorial representation of a person, painted by an artist. This definition connotes that some degree of likeness is essential and for the purpose of achieving it the inclusion of the face of the subject is desirable and perhaps also essential. 110

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Attorney General v Trustees of National Art Gallery of NSW cont. The picture in question is characterised by some startling exaggeration and distortion clearly intended by the artist, his technique being too brilliant to admit of any other conclusion. It bears, nevertheless, a strong degree of likeness to the subject and is I think, undoubtedly, a pictorial representation of him. I find as a fact that it is a portrait, within the meaning of the word in this will, and consequently the trustees did not err in admitting it to the competition. Whether as a work of art or a portrait it is good or bad, and whether limits of good taste imposed by the relationship of artist and sitter have been exceeded, are questions which I am not called upon to decide and as the expression of my opinions upon them could serve no useful purpose I refrain from expressing them. I mention those matters, however, because I think that the witnesses for the informant, whose competency to express opinions in the realm of art is very great, were led into expressing their opinions that the work was not a portrait because they held strong views against it upon those questions. They excluded the work from portraiture, in my opinion, because they have come to regard as essential to a portrait characteristics which, on a proper analysis of their opinions, are really only essential to what they consider to be good portraiture. Finally I think that it is necessary to state my opinion on the claim that the picture cannot be included as a portrait because it is proper to classify it in another realm of art or work as caricature according to the information or as fantasy according to a witness for the informant. It is, I think, unnecessary to consider whether the picture could properly be classed as a caricature or a fantasy. If it could be so classed that would only establish to my mind that the fields are not mutually exclusive, because in my opinion it is in any event properly classed as a portrait. In the result I think that this suit must be dismissed. I make a decree accordingly and order that the relators pay the costs of the defendants. Judgment for plaintiff.

[4.280] In the UK case Merchandising Corporation of America v Harpbond (1983) FSR 32, below, Lawton LJ was required to consider the issue of whether face-painting as stage make-up could be deemed to be a work of copyright. In so doing, the issue of the intangible versus the tangible comes under scrutiny.

Merchandising Corp of America v Harpbond [4.290] Merchandising Corp of America Inc v Harpbond Ltd [1983] FSR 32 Court of Appeal (United Kingdom) LAWTON LJ: [42] … This is an appeal by the plaintiffs against an order of Walton J made on 25 November 1981, whereby he granted the plaintiffs some interlocutory relief by way of injunctions. But the plaintiffs, like Oliver Twist, have asked for more and, like Oliver Twist, they are not going to get it. The appeal centres round what seems to me to be a novel and startling proposition, that there can be copyright in unusual facial make-up. Perhaps it is a sign of the times that it does not arise in connection with women’s make-up but in connection with the make-up of the second plaintiff, Mr Stuart Leslie Goddard, it being make-up which he uses in the course of his performances as a pop star and in the publicity material with which he advertises himself to what no doubt is his adoring public. The plaintiffs are four in number. The principal one is Mr Goddard. His stage name is Adam and he is the singer and the leader of a group which perform under the name of “Adam and the Ants”. It is a matter within the knowledge of this court from another appeal a few weeks ago that, since 1979, the [4.290]

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Merchandising Corp of America v Harpbond cont. second plaintiff has arisen from comparative obscurity in the world of pop music to international fame. He has a large following in this country and it would appear from what we know of this case that he has followings outside the UK. The plaintiffs are an American corporation called Merchandising Corporation of America. They specialise in exploiting the commercial opportunities which exist these days out of the reputations of persons in the public eye, particularly those in the world of pop entertainment. The third and fourth plaintiffs are companies associated with Mr Goddard and they exist for various commercial purposes associated with his performances. One of the curiosities of the pop world is that there is a great deal of money to be made by putting on to the market what most of us would regard as garish material about pop stars. The first, second, third and fourth defendants are all concerned with publishing material of that kind. The fifth defendant, Mr Frank Langford, is a commercial artist. He comes into the story briefly but goes out again quickly. The reason he comes into the story is this, that at one stage, in the course of the activities of the first, second, third and fourth defendants, he was asked to paint a portrait of Mr Goddard, and he did so. That portrait was reproduced in various publications produced by the other defendants. The plaintiffs have taken exception to that portrait, alleging that it was published in breach of their copyright in the facial make-up of Mr Goddard. Mr Langford has, wisely, made his peace with the plaintiffs. So he is no longer involved in this litigation. He did, perhaps as part of making his peace (I know not), provide the plaintiffs with some information which he put into an affidavit to which I shall be referring later, stating the circumstances in which he came to paint the portrait and how he went about it. … [46] … Mr Wilson’s bold submission at the beginning of his presentation of his clients’ case was that the marks on Mr Goddard’s face by way of facial make-up were painting. That caused me very considerable surprise, because, although there are various statutory provisions in the Act defining various words used in it, there is no statutory definition of a painting. “Painting” is a word in the ordinary usage of the English language and it is a question of fact in any particular case whether that which is under discussion is or is not a painting. It seemed to me, right at the beginning of Mr Wilson’s submissions (and I want to be restrained in my language), that it was fantastic to suggest that make-up on anyone’s face could possibly be a painting. Mr Swift, in his succinct and concise reply, pointed out what had occurred to me and I had mentioned to Mr Wilson in the course of argument, that a painting must be on a surface of some kind. The surface upon which the startling make-up was put was Mr Goddard’s face and, if there were a painting, it must be the marks plus Mr Goddard’s face. If the marks are taken off the face there cannot be a painting. A painting is not an idea: it is an object; and paint without a surface is not a painting. Make-up, as such, however idiosyncratic it may be as an idea, cannot possibly be a painting for the purposes of the Copyright Act 1956. The next submission made by Mr Wilson was that there had been indirect copying of the sketch. That indirect copying was alleged to have been partly in the kind of photographs which were reproduced in the defendants’ magazines, to which I have already referred and clearly they were not reproductions of the sketch and partly (said Mr Wilson) in the portrait, because what had happened was that Mr Langford had used the concept of the make-up and, for the purposes of using that concept, had taken into account the photograph published in the Sun newspaper and had produced that which was remarkably like the photographs taken by Mr Ballard. Mr Swift, in a careful analysis of the portrait and the sketch, showed that there were a number of dissimilarities. Clearly the portrait was not a copy of the sketch. It was something entirely different. Mr Wilson was no doubt alive to that way of looking at the problem, because he based his argument largely on the assertion that what Mr Langford had done in the portrait and what the first, second, third and fourth defendants had done by reproducing the portrait in their magazines was to use a substantial part of the sketch, the part which he had used being the lines on the face. 112 [4.290]

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Merchandising Corp of America v Harpbond cont. Mr Wilson relied upon part of the speech of Lord Reid in Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273. In [47] the course of his speech Lord Reid had referred to a “substantial” reproduction being something which was a “striking” part of the artistic work. But there are other passages in the case of Ladbroke which are of very considerable importance. The one which, in my judgment, is of particular importance occurs in the speech of Lord Pearce at 293. He asked this question: Did the defendants reproduce a substantial part of it? 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. For that which would not attract copyright except by reason of its collocation will, when robbed of that collocation, not be a substantial part of the copyright and therefore the courts will not hold its reproduction to be an infringement. Two straight lines drawn with grease-paint with another line in between them drawn with some other colouring matter, in my judgment, by itself could not possibly attract copyright. It is only when they are put on Mr Goddard’s face that anything particularly relevant to Mr Goddard comes into existence. When they are taken away from the sketch, as they must be taken away if their reproduction on anything else is said to be a reproduction of a striking part of the artistic work, then Lord Pearce’s words apply.

Sculpture [4.300] “Sculpture” in Copyright Act 1968 (Cth) s 10(1) “includes a cast or model made for

purposes of sculpture”. See Lincoln Industries Ltd v Wham-O Manufacturing Co (1984) 3 IPR 115; and see also Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417, below.

Greenfield Products v Rover-Scott Bonnar [4.310] Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 Federal Court of Australia PINCUS J: [419] The applicant and the respondent are competing manufacturers of ride-on mowers for use in parks and gardens. The applicant’s substantial case is that it designed a new kind of drive mechanism for its mowers; the respondent later used the same basic design, having carefully inspected the applicant’s. The suit seeks an injunction to restrain further breaches of copyright, damages for infringement of copyright, an account of profits and other relief. … [420] … There being no doubt that the respondent imitated the applicant’s design to a considerable extent, taking advantage of the applicant’s inventiveness and its development of that design over some years, some might have thought that the law would give the applicant some right of redress. The most obvious basis of a suit of that kind is the patent law, but the applicant had no patent for its invention (assuming it to be patentable) so that applicant has sued, as I have said, for breach of copyright, saying that the respondent copied its design. In a very broad sense it did, and there are high authorities which suggest that such a claim as this is proved if copying is proved: LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 at 619: The protection given by the law of copyright is against copying, the basis of the protection being that one man must not be permitted to appropriate the result of another’s labour. That [4.310]

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Greenfield Products v Rover-Scott Bonnar cont. copying has taken place is for the plaintiff to establish and prove as a matter of fact. The beginning of the necessary proof normally lies in the establishment of similarity combined with proof of access to the plaintiff’s productions. … [426] … Copyright in three-dimensional objects There are no two-dimensional objects; the above heading is intended as a shorthand way of referring to the applicant’s claim to copyright in certain moulds and in a drive mechanism, as opposed to its claim to copyright in drawings. The relevant parts of the statement of claim are paras 11(iii) (p 4) and 13 (pp 10, 11). These allege, in effect, that there is copyright in “moulds used in connection with the casting of” certain pulleys and clutch plates and in a certain drive mechanism. It is argued on behalf of the applicant that the Copyright Act, as presently construed, is wide enough to encompass such objects. Under Pt III of the Act, copyright may subsist in, inter alia, an artistic work and the applicant contends that the moulds and the drive mechanism [427] are artistic works. The expression “artistic work” is defined in s 10 to mean, inter alia: A painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not. Each of the words “sculpture” and “engraving” is separately defined: “Sculpture” includes a cast or model made for purposes of sculpture. “Engraving” includes an etching, lithograph, product of photogravure, woodcut, print or similar work, not being a photograph. It was argued on behalf of the applicant that copyright can subsist in the moulds and machine parts because they are “engravings” and that the drive mechanism is an “artistic work”, being made up of its components which are themselves sculptures and therefore artistic works. It is convenient to take the latter point first. Although the definition of “sculpture” is not exhaustive, in so far as the word remains undefined it must be given its ordinary meaning, in accordance with orthodox principles of construction. It is for that reason that I rejected evidence proffered on behalf of the respondent to prove what “sculpture” means in certain circles. The word “sculpture” is, at least in this context, not a technical term so as to make evidence admissible on the issue of statutory construction. It appears to me clear that neither the moulds nor the drive mechanism, nor the parts of the latter, are sculptures in the ordinary case. It is true, as was pointed out in the course of argument, that some modern sculptures consist of or include parts of machines, but that does not warrant the conclusion that all machines and parts thereof are properly called sculpture, and similar reasoning applies to moulds. I respectfully agree with the conclusion arrived at in the New Zealand Court of Appeal, in Lincoln Industries Ltd v Wham-O Manufacturing Co (1984) 3 IPR 115 at 131 that frisbees are not sculptures under the Copyright Act 1962 (NZ); that conclusion is consistent with mine. I therefore reject the submission that there can be copyright in the drive mechanism. I do so with more confidence having regard to the concept of infringement by copying objects made from a copyright drawing; the development of that doctrine would have been unnecessary if machinery were itself the subject of copyright. A submission which is not quite so easily disposed of is that moulds are “engravings” under the Act; this has some support from the Lincoln Industries case just referred to and from the reasons of the Court of Appeal of Hong Kong in Interlego AG v Tyco Industries Inc [1987] FSR 409 at 421 and 453. In the former case, there was evidence that the frisbee moulds were made by use of a tool, cutting medal blanks on a lathe. The court remarked (at 127): 114 [4.310]

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Greenfield Products v Rover-Scott Bonnar cont. We see no reason why the process involved in the production of the die or mould, particularly the creation of the cuts to produce the ribs and rings should not be regarded as the act of engraving within the provisions of s 2(1)(a) of the Act, and the mould or die so created an “engraving” just as a “print” is an engraving in terms of the extended definition in s 2 of the Act. The definition of “engraving” in issue there differed slightly from that with which I am concerned, but the difference is not of present significance. I do not well understand why the court thought that working at a lathe cutting into a rotating piece of metal with a tool is the work of engraving. One can use a tool fixed in a lathe to inscribe a pattern onto the surface of metal or other materials, but even that would not, perhaps, ordinarily be [428] called engraving. It is true that dictionary definitions of engraving refer to cutting, but it is not all cutting which is engraving; for example, to cut a piece of steel rod into lengths is not to engrave it. Nor, in my opinion, is the process of cutting metal from a block spinning of a lathe a process of engraving the block, in the ordinary sense of the word. The term does not cover shaping a piece of metal or wood on a lathe, but has to do with marking, cutting or working the surface typically, a fat surface of an object. The second edition of the Oxford English Dictionary cites usages of the word “engrave” which appear to support the New Zealand decision. For example, a translation of the Metamorphoses has: “The fatall steele … he waues Deepe in his guts, and wounds on wounds ingraues.” But that was published in 1626 and no modern similar example is given. More generally, the text under “engrave” supports the view that in current usage the physical meaning is confined to cutting, marking or otherwise working a surface. The same may be said of the dictionary’s treatment of “engraving”, except that “engraving” can mean the product as well as the process. I note that the Court of Appeal went on to say (at 219) that each frisbee made from a mould is an “image produced from an engraved plate” and therefore a “print”. I was urged by Mr Hanger QC to adopt what he described as the “flexible approach” evinced in this decision, particularly as it has at least the tentative approval of the Hong Kong Court of Appeal in the Interlego case. No consideration of policy, or other orthodox approach, could justify straining the English language so far as to call the moulds engravings. Despite the respect which one must have for any decision of the New Zealand Court of Appeal, I find myself unable to follow the approach in the Lincoln Industries case. In particular, I cannot, with respect, agree with the view that a frisbee is an image or that it is a print. Similarly, in my opinion, the moulds from which these machine parts are made are not engravings. It is unnecessary to consider the question whether “engraving” in the Act includes such objects as were dealt with in James Arnold & Co Ltd v Miafern Ltd [1980] RPC 397. I should add that I am by no means convinced that the New Zealand decision, even if correct, produces success for the applicant on this point; as was pointed out on behalf of the respondent, the basis of that decision appears to have been that operations which involve cutting to create a shape are properly called engraving. But here there was no evidence that the moulds were produced by any sort of cutting. The applicant also contended that the machine parts are themselves “engravings”. Counsel did not shrink from the proposition that a machined steel shaft, however enormous, is an “engraving”. That seems to me preposterous.

[4.310]

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Greenfield Products v Rover-Scott Bonnar cont. I therefore arrive at the conclusion that the applicant’s claim to copyright in the moulds and machine parts is ill-founded and cannot succeed, because they cannot be the subject of copyright.

Drawing [4.320] “Drawing” in the Copyright Act 1968 (Cth) s 10(1) “includes a diagram, map, chart or plan”. The question of whether a work amounts to a “drawing” is not usually in dispute. In view of the vast array of items that can begin life as a drawing in which copyright subsists, any difficulties are usually found when considering reproduction of the work in another dimension, which will amount to infringement. There may be a point at which a drawing is so close to an idea that copyright protection is of little value: Kenrick & Co v Lawrence & Co (1890) 25 QBD 99; Beck v Montana Constructions Pty Ltd [1964–65] NSWR 229; FAI Insurance Ltd v Advance Bank Aust Ltd (1986) 7 IPR 217. Almost certainly, the main area of commercial activity, with respect to litigating copyright in drawings, concerns the “architect’s plans” cases. See Eagle Homes Pty Ltd v Austec Homes Pty Ltd (1999) 43 IPR 1; (1999) 44 IPR 535; LED Builders v Eagle Homes (1999) 44 IPR 24; Carlisle County Homes v Brown [1999] QDC 284; Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (1999) 46 IPR 309; Tolmark Homes v Paul (1999) 46 IPR 321; New England Country Homes Pty Ltd v Moore (1998) 45 IPR 186. Note the finding of “originality” in drawings of blocks similar to Lego blocks in Interlego AG v Croner Trading Pty Ltd (1993) 25 IPR 65.

Engraving [4.330] “Engraving” in the Copyright Act 1968 (Cth) s 10(1) “includes an etching,

lithograph, product of photogravure, woodcut, print or similar work, not being a photograph”. Lincoln Industries Ltd v Wham-O Manufacturing Co (1984) 3 IPR 115 appears to give a wide interpretation to “engraving”. In Greenfield Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417 (at [4.310] above), Pincus J said “I do not well understand why the court thought that working at a lathe cutting into a rotating piece of metal with a tool is the work of engraving”. Photograph [4.340] “Photograph” in Copyright Act 1968 (Cth) s 10(1) “means a product of photography

or a process similar to photography, other than an article or thing in which visual images forming part of a cinematographic film have been embodied, and includes a product of xerography …”. However, note that taking another identical photograph of the same subject matter as an earlier photograph does not infringe copyright: copying the first photograph creates the infringement. Building [4.350] “Building” in Copyright Act 1968 (Cth) s 10(1) “includes a structure of any kind”.

The copyright subsisting in a building is separate from any copyright in plans or drawings for that building. In Half Court Tennis Pty Ltd v Seymour (1980) 53 FLR 240, it was held that a half-sized tennis court was a copyright work. Dunn J said (at 248): The plaintiffs’ case was that Wills and K had, by using considerable industry and skill, produced an artistic work, namely a building, in which copyright subsists. The building in question, in my opinion, was a concrete slab with special markings upon it … 116 [4.320]

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The fact that a half court can scarcely be described as a thing of beauty does not matter. What does matter is that it is the result of skill and labour by Wills and K.

In Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649, it was held that a fibreglass swimming pool was a “structure” and therefore capable of being a building since it had the size and permanence of a building and was substantial enough to be within copyright concepts. The mould from which the pool was cast was a model of a building, since “the mould stores the form, or a substantial part of the form of the pool in a three dimensional way, from which it would be relatively easy to copy the form of the ideas therein expressed” (at 656). However, the Copyright Act 1968 (Cth) s 66 allows a two-dimensional – that is, a painting, drawing, engraving or photograph – copy of a three-dimensional building or model of a building to be made, without infringing copyright. Nor does the inclusion of a building or model in a film or television broadcast infringe copyright. Works of artistic craftsmanship [4.360] “Works of artistic craftsmanship” also do not receive any further explanation in the

Act as to their characteristics, leaving the issue to the eye of the beholder, or, on occasion, to the courts to determine. Despite the apparently narrow scope of protection offered under this heading, its importance lies in the fact that this is the only category of protection for three-dimensional objects, apart from sculptures, buildings and models of buildings. Many cases have sought protection as a “work of artistic craftsmanship” for what is otherwise an industrial mass-produced item. Furthermore, this is the only category of work where there needs to be some assessment of the merits of the creative effort. “Artistic” in this context seems to connote some aesthetic element: see Burke & Margot Burke Ltd v Spicers Dress Designs [1936] Ch 400; George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64; [1975] RPC 31. The restriction placed on works of artistic craftsmanship reflects the law’s anxiety not to protect for the duration of copyright objects which may be more readily regarded as items of commerce, while at the same time recognising that artistic endeavour may be manifested in various media. A work of artistic craftsmanship must be fixed in material form to be protected, so moving sand landscapes, for example, would not protected by copyright (Komesaroff v Mickle (1986) 7 IPR 295). Aesthetic considerations are relevant to the existence of copyright in this category. The courts are reluctant to make aesthetic judgments themselves. In Cuisenaire v Reed [1963] VR 719 at 729, Pape J suggested that the test may be whether “the main object of the creator was to create an article which, even if it be utilitarian, nevertheless would have a substantial appeal to the aesthetic tastes of those who observed it”. His Honour continued (at 730): … it seems to me that it cannot be said that, objectively, these pieces of coloured wood present any indication of beauty or appeal to the aesthetic feelings or emotions of the beholder, or that the person or firm who made them applied his skill and taste to the production of an article intending to produce something which would have a substantial aesthetic appeal to its possessor. The rods are little more than tools or counters to be used for a particular purpose. Their function is primarily utilitarian and they present no aesthetic attraction …

However, in Coogi Australia v Hysport International (1998) 86 FCR 154; 41 IPR 593, below, the court held that a mass-produced and machine-made article can still be a work of artistic craftsmanship. [4.360]

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Coogi Australia v Hysport International [4.370] Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154; 41 IPR 593 Federal Court of Australia DRUMMOND J: [594] … The applicant has long been a designer and manufacturer of machine knitted fabrics and garments made up from its fabrics. In the early 1990s it made and [595] sold garments from a fabric it manufactured which embodied a design described as its “XYZ design”. The first respondent (of which the second to sixth respondents are directors) is a competitor. The applicant claims that the first respondent has “since at least May 1992” made and sold three styles of knitted garments (together with variations of those styles) which are identified as HY95, HY82 and HY96. The applicant claims that, by doing this, the first respondent has infringed its copyright: (1)

in two “artistic works”, viz, its fabrics and its garments that bear the XYZ design. It is said that each piece of fabric and each garment is an “artistic work” for the purposes of ss 31 and 32 of the Copyright Act 1911 because it is a “work of artistic craftsmanship” within the definition of “artistic work” in s 10 of that Act;

(2)

in a “literary work”, viz, “the computer program and/or data comprised in the computer program, made in or about 1989, used for the manufacture by computerised knitting machines of garments bearing the XYZ design, including the print out of the programming codes, known as the XYZ control program, and the XYZ graph in symbol form contained therein”.

It is said that this program is a “literary work” for the purposes of ss 31 and 32 of the Act because it is a “computer program” within the meaning of that term in the definition in s 10 of “literary work”, ie, it is within the definition of “computer program” in that section of the Act. … While Coogi, in its pleading, identified the subject matter of the first of its copyright claims as works of artistic craftsmanship comprising “fabric and/or garments manufactured by the applicant since 1989 bearing the XYZ design”, at trial it put this part of its case more narrowly. In the course of the hearing, Coogi’s counsel limited the subject matter of its copyright claim in the XYZ fabric to the form of the stitch structure of the fabric: Coogi produced the fabric in a total of eight colour ranges, but it made no attempt to identify them and disavowed that its colour selections comprised any part of this particular copyright claim. At trial, Coogi put its claim that Hysport had infringed its copyright in the XYZ fabric on the basis that there were so many similarities between the stitch structures of the two fabrics that Hysport had reproduced not the whole, but a substantial part, of the structure of the XYZ fabric. … [596] … The applicant’s case, as refined in counsel’s closing submissions, of infringement of copyright in its computer program is one of infringement by unauthorised adaptation, rather than reproduction. Counsel for the applicant also said that no claim was made to copyright in the data associated with the program, save in so far as that data actually forms part of the Coogi computer program. … [601] … The XYZ fabric as a work of artistic craftsmanship A substantial argument by Hysport against Coogi’s claim that its XYZ fabric is a work of artistic craftsmanship turns on the proposition, which I accept, that Coogi’s design effort was directed entirely to setting up a system for the mass production of fabric having particular features. The product of such a process, so Hysport says, is the antithesis of a work of artistic craftsmanship. In order to deal with this argument, it is first necessary to dispose of Coogi’s contention that each of the many mass-produced runs of fabric embodying the XYZ design (and each of the many garments made from that fabric) is itself an “original work of artistic craftsmanship” within s 32. Such a claim is not sustainable. Copyright only subsists, pursuant to s 32 of the Act, in an original work of which the author was a qualified person “when the work was made”. It is clear from s 22 that, since a work is made for the purposes of s 32 when it “was first reduced to … some … material form”, 118 [4.370]

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Coogi Australia v Hysport International cont. it is only the first expression or fixation of the author’s skill and labour that can constitute the work in which copyright subsists. If the fact that Coogi produced fabric to the XYZ design in eight separate colour ranges is ignored for the moment, Coogi [602] can, at most, have copyright only in that portion of the first roll of fabric produced by it in which the XYZ design was first completely embodied: it cannot sustain its claim to copyright in every length of fabric bearing the XYZ design. But the question remains: can Coogi claim copyright in the first embodiment of the XYZ design as a “work of artistic craftsmanship”, given that it too was the result of Coogi’s efforts in setting up a process for the mass production of fabric to that design. (If Coogi can make out this claim, it would be an infringement for Hysport to reproduce that copyright subject matter by indirectly copying it from any one of the 2,500 or so Coogi garments that incorporated it.) The law as to what is a work of artistic craftsmanship is not in a very satisfactory state: cf Lord Kilbrandon’s comment in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 at 98. But current authority supports, I think, a number of propositions: (1)

The phrase “works of artistic craftsmanship” is a composite phrase that must be construed as a whole. There is nothing to suggest that any of the words is used in other than one of its ordinary senses: Hensher, per Lord Simon, at 91.

(2)

As is suggested by a comparison of paras (a) and (b) with para (c) of the definition of “artistic work” in s 10, a work will qualify as one of artistic craftsmanship only if it has an element of real artistic, ie, aesthetic, quality, whether or not it is a utilitarian article: Cuisenaire v Reed [1963] VR 719 at 730 lines 30 to 35; Hensher at 77F and 78F-G, 81H, 85H and 86E, 96G-H; Merlet v Mothercare PLC (1984) 2 IPR 456 at 465 and Bonz Group (Pty) Ltd v Cooke (1994) 3 NZLR 216 at 224.

(3)

Implicit in the proposition that the existence of utilitarian features will not disqualify an article from being a work of artistic craftsmanship is the further proposition that the article need not have such a high level of aesthetic quality as to make it a work of fine art. In Hensher, Lord Reid at 78H and Lord Simon at 90F-G said as much. Lord Simon explained why (at 90): the object of giving copyright protection to “works of artistic craftsmanship”, first conferred by the Copyright Act (UK), was to extend to works of applied art the protection formerly restricted to works of fine art, an extension made under the infiuence of the Arts and Crafts Movement.

(4)

The level of aesthetic appeal required for a work of artistic craftsmanship is higher than mere visual appeal (one of the tests for design registrability); Hensher at 79C-F, 81E-F, 84F-G and 93E-F, 95F-H.

(5)

In determining whether an article has sufficient aesthetic quality to be a work of artistic craftsmanship the Court is determining a question of fact on the basis of the evidence before it: Hensher at 82B, 87A-B, 94H and 97C-D. It has been said that in deciding whether a work of craftsmanship has artistic quality the Court must not act on its own aesthetic judgment: Hensher at 78CD, 87BC, 94G and 96H-97A; Bonz at 224 lines 1-5. Accordingly, Laddie, Prescott and Vitoria, in The Modern Law of Copyright and Designs (2nd ed), p 208, favour Lord Reid’s test in Hensher and suggest that the necessary artistic element in a work of artistic craftsmanship will be shown by evidence that the visual appearance of the article is such as to cause at least some members of the public to wish to acquire and retain the article “on especial account” thereof. That, the authors say, is a fact capable of objective ascertainment by the Court and the Court is not required to base its decision on its own aesthetic opinion. Viscount Dilhorne at 87D rejected this sort of test as did Lord Simon, at 93D-H. It cannot be right. The statute by its definition of “artistic work” requires that a work of artistic craftsmanship be “of artistic quality”; in this context, that seems clearly [603] to require that it have some aesthetic value. That a segment of the public can be found [4.370]

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Coogi Australia v Hysport International cont. which may have been persuaded by advertising or by a transient fad to want to own the work because of its visual appeal does not necessarily mean that it must have the requisite minimum level of aesthetic value. I do not think the Court can, in determining whether a work is one of artistic craftsmanship, avoid the task of making a judgment, on the evidence before it, whether the work has a sufficient level of aesthetic appeal to be “of artistic quality”. Forming a view, on confiicting evidence, as to what is essentially a matter of aesthetic taste is not a novel task for a court: see, eg, Attorney-General for NSW v Trustees of the National Art Gallery of New South Wales (1944) 62 WN (NSW) 212. (6)

Whether a work has the requisite aesthetic quality must be determined objectively: Hensher 81F-G (and cf 95B-C, where it was said that it is “the intent of the creator and its result” which will determine whether the work is one of artistic craftsmanship); Cuisenaire at 730 lines 50-55 and Bonz at 223-224.

(7)

In determining whether an article has the requisite aesthetic quality, evidence that the creator intended to make an article possessing aesthetic quality is important, although not essential: Hensher 78F-G, 81G, 95B-C; Merlet at 465 ll 25-30 and Cuisenaire at 730 lines 50-55. Because the test is objective, whether the work has aesthetic quality cannot depend solely upon the subjective intent of the creator, since he may have failed to realise his intent, if it was an aesthetic one: Bonz at 223-224 and Merlet at 465. In Hensher, Lord Kilbrandon, at 96F-H, appears to suggest that the presence of such an intention in the creator is determinative of whether the work will have the necessary artistic quality, although he also seems to say this is an objective test at bottom, in so far as he says that “[i]t must be possible to deduce the conscious purpose of artistic creation from the work itself or from the circumstances of its creation”. But the way he then qualifies this statement makes it difficult to be certain just what he means.

(8)

Expert evidence as to whether a work possesses the requisite aesthetic quality is admissible: Hensher at 78G, 82B-C, 87C, 94G-H (although the members of the House place differing emphases on the cogency of such evidence).

(9)

Beyond this, it is difficult to find any guidance as to the considerations relevant to identifying the existence of the requisite aesthetic quality. But one thing is clear enough: the presence of non-functional features cannot be the test since, as Lord Simon observes in Hensher at 93B-C, the anthesis between function and beauty is a false one, especially in the context of the Arts and Crafts Movement.

(10)

Before a work will qualify as a work of craftsmanship, it must be a manifestation of pride in sound workmanship and the result of the exercise of skill on the part of its creator in using the materials of which the article is made and the devices by which those materials are turned into the article. Lord Simon in Hensher said, at 91: A work of craftsmanship, even though it cannot be confined to handicraft, at least presupposes special training, skill and knowledge for its production: see Cuisenaire v Reed [1963] VLR 719; Cuisenaire v South West Imports Ltd [1968] 1 ExCR 493, 514. “Craftsmanship”, particularly when considered in its historical context, implies a manifestation of pride in sound workmanship–a rejection of the shoddy, the meretricious, the facile.

See also Merlet at 460, Bonz at 224 and Cuisenaire at 729. [604] (11)

There is a difference of judicial opinion as to whether craftsmanship connotes only something hand made. In Hensher Lord Reid at 77E referred to a work of craftsmanship suggesting “a durable useful handmade object” and Viscount Dilhorne at 84D said: “[a] work of craftsmanship is, in my opinion, something made by hand and not something mass produced”. Pape J, in Cuisenaire at 729, spoke of craftsmanship as involving the display of

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Coogi Australia v Hysport International cont. manual skill. In Hensher, Lord Simon, however, observed at 90F that Parliament deliberately used the words “artistic craftsmanship” not “artistic handicraft” and, in discussing the reason why copyright protection was given by the 1911 Act to works of artistic craftsmanship, viz, to give protection to works of applied art, in response to the influence of the Arts and Crafts Movement, said, at 91: [A]lthough “works of artistic craftsmanship” cannot be adequately construed without bearing in mind the aims and achievements of the Arts and Crafts movement, “craftsmanship” in the statutory phrase cannot be limited to handicraft; nor is the word “artistic” incompatible with machine production: see Britain v Hanks Brothers and Co (1902) 86 LT 765. … Pape J, in Cuisenaire, found support for his view that manual involvement was necessary to craftsmanship in the 1952 UK Copyright Committee’s comment that copyright protection given to works of artistic craftsmanship was not intended to be given to mass-produced articles, which could obtain protection under the registered designs legislation, even if they might otherwise qualify as works of artistic craftsmanship: s 22 of the Copyright Act 1911 (UK) then in force (the legislation with which Pape J was concerned – [605] see [1963] VR at 725) denied copyright protection to designs capable of registration under the designs legislation. Pape J therefore read down the expression to cover only unique, handmade objects. … Hysport put a similar argument to that which Pape J accepted. It contended that, since the object of Div 8 of Part III the Copyright Act was to deny copyright protection to artistic works applied in mass production and to permit only design protection for such works, achievement of that object would be impeded if the exemption of works of artistic craftsmanship from the general rule in Div 8 against dual protection for artistic works were widened by widening the meaning of the expression “a work of a artistic craftsmanship” to include mass-produced articles. But the Copyright Act treats works of artistic craftsmanship differently from other artistic works. Unlike the position reflected in s 22 of the 1911 UK Act and that which obtained under Div 8 of Part III the Copyright Act 1968 prior to the 1989 amendments, protection under both the Copyright Act 1968 and the Designs Act 1906 (Cth) is now available to works of artistic craftsmanship. It matters not whether such a work is intended to be the subject of or used in mass production. Copyright protection is only lost for a work of artistic craftsmanship if the owner chooses to obtain design registration for that work. Otherwise, he can enforce his intellectual property rights in such a work by relying only on the Copyright Act, even though it was always his intention that the work would be industrially exploited. See ss 75 and 77 of the Act. The Explanatory Memorandum to the Bill which became the 1989 amending Act suggests that the reason why works of artistic craftsmanship were exempted from the general rule in Div 8 that copyright should not be available to protect artistic works capable of industrial application was that, even though such works can embrace a wide range of works well capable of industrial application, they are a special case: “it is considered these articles are more appropriately protected under the [Copyright] Act whether industrially applied or not” (para 24). What may justify the special status conferred on works of artistic craftsmanship by ss 74-77 is recognition that the real artistic quality that is an essential feature of such works and the desirability of encouraging real artistic effort directed to industrial design is sufficient to warrant the greater protection and the accompanying stifling effect on manufacturing development that long copyright gives, in contrast to relatively short designprotection. Division 8 therefore provides no foundation for arguing that an expression “a work of artistic craftsmanship” should be narrowly construed.

[4.370]

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Coogi Australia v Hysport International cont. (12)

There is also a conflict of judicial opinion whether a work can be one of artistic craftsmanship only if it is the product of a person who combines both artistic and craft skills in making it or whether it is enough that the work meets the two criteria of being a work of craftsmanship and a work possessing the requisite minimum degree of aesthetic quality.

In Hensher at 94E-F, Lord Simon said that whether a work was one of artistic craftsmanship depended on whether it was produced by a person who is an artist-craftsman, not on whether it had two separate characteristics, viz, first, that it was produced by a craftsman and, secondly, that it had artistic quality: see also 95B-C. Statements in Cuisenaire at 729 and 730 suggest Pape J was of the same opinion. I have difficulty in accepting what is said in Cuisenaire (at 730 [606] lines 25-30) to the effect that the word “artistic” refers to some quality in the acts performed by the maker in the physical operation of making the article as distinct from “earlier cogitation and thought which produced the idea upon which the work was based”. It must be possible for many works of artistic craftsmanship to come into existence as a result of an artistic design fully realised before any of the skilled work to implement that design is undertaken, even where it is all the work of a single person. Despite what he said in Bonz, at 224, in apparent acceptance of Lord Simon’s view on the point, Tipping J in the passage immediately following considered that a work could be one of artistic craftsmanship even “[i]f two or more people combined to design and make the ultimate product”. He held that the garments there in question were works of artistic craftsmanship because “the designer of the garments can fairly be called an artist and the handknitters can fairly be described as craftsmen”. Once it is accepted, as I think it should be, that “works of artistic craftsmanship” are not confined to handmade objects, there is no reason why it should be essential for such a work to be the product of the efforts of a single person, ie, of an artist-craftsman. It is enough that it satisfies the two criteria of craftsmanship and aesthetic quality. It cannot be contended that the XYZ fabric does not have aesthetic value sufficient to show that it is “of artistic quality”. The way Coogi has used stitch structures and colour to produce an unusual textured and multi-coloured fabric for fashion garments suggests this. The experts, Mr Sonday, Mr Buckingham and Dr Dutton, agree that the fabric has aesthetic quality. Mass production is not inconsistent with the articles so produced each having aesthetic value. Many mass-produced articles, such as nails, screws, etc made as purely functional fasteners, will not be capable of being works of artistic craftsmanship simply because they lack any aesthetic element in themselves (even though their display by Marcel Duchamp might be said by some to transmute them into works of art). But other mass-produced articles (such as the works of Charles and Ray Eames, “American designers best-known for the beauty, comfort, elegance and delicacy of their massproducible furniture”: New Encyclopaedia Britannica, 15th ed, Vol 4, p 317) have real aesthetic quality. Nor do I accept that the only article capable of attracting copyright here, viz, the first production run of the XYZ fabric that was the first piece of fabric that the Coogi design team accepted as realising their design objective, was not also a work of craftsmanship. There is no necessary difference between a skilled person who makes an article with handheld tools and a skilled person who uses those skills to set up and operate a machine which produces an article. Such an article can still be a work of craftsmanship even though the creator has used a highly sophisticated computer-controlled machine to produce it, if nevertheless it is a manifestation of the creator’s skill with computer-controlled machinery, knowledge of materials and pride in workmanship. The expert witnesses, Dr Dutton, Mr Sonday and Mr Buckingham did not suggest the contrary. To hold otherwise would be to import a Luddite philosophy into copyright legislation enacted against a background of modern industrial organisation and intended to regulate rights of value to persons involved in that area of activity … [608] … In my opinion, the first run of the XYZ fabric is a “work of artistic craftsmanship” for the purposes of the Copyright Act, notwithstanding that it was made as, and intended by those involved in its creation 122 [4.370]

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Coogi Australia v Hysport International cont. to be, the first of many identical runs of fabric bearing that design. None of the runs of the fabric subsequent to the first one to bear the XYZ design is, however, capable of being such a work (subject only to the consideration that needs to be given to the significance to its copyright claim of the fact that Coogi produced XYZ design fabric in a limited number of different colourways).

Computer programs as literary works [4.380] Internationally, copyright is the preferred vehicle for protecting the IP in computer

software. The Copyright Act 1968 (Cth) s 10(1) interprets a computer program as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”. The protection of computer programs in Australian copyright law came about following a High Court decision to the effect that computer programs were not literary works (or any other sort of subject matter known to copyright law) and could be copied with impunity: see Computer Edge Pty Ltd v Apple Computer Inc (1986) 65 ALR 33; [1986] HCA 19. In Apple Computer Inc v Computer Edge Pty Ltd (1983) 50 ALR 581, the trial judge held that computer programs in source code and object code were not literary works within the Copyright Act 1968 (Cth) because they did not afford information, pleasure or instruction, but merely drove a machine – that is, controlled the sequence of operations carried out by a computer, without performing those other functions. This was reversed on appeal to the Full Federal Court: Apple Computer Inc v Computer Edge Pty Ltd (1984) 53 ALR 225. On appeal, it was held that the source code was copyright as a literary work and the object code was an adaptation thereof within the Copyright Act 1968 (Cth) s 31(1)(a)(vi) since it could be viewed as a translation. The source code conveyed a meaning to suitably trained people and there is a distinction between the functioning of the machine due to electro-magnetic functions and the computer program itself, which contained instructions for the storage and reproduction of knowledge: Apple Computer Inc v Computer Edge Pty Ltd (1984) 2 IPR 1 at 11. The High Court restored the judgment of the trial judge. The majority held that the object code was not a literary work because, although original, they “were not visible or otherwise perceptible, and they were not, and were not intended to be, capable by themselves of conveying a meaning which could be understood by human beings”: Computer Edge Pty Ltd v Apple Computer Inc (1986) 65 ALR 33 at 39 per Gibbs CJ. Gibbs CJ and Mason, Wilson and Brennan JJ held that Apple source codes were literary works within Copyright Act 1968 (Cth) s 32. The decision led to consternation in the software industry, and in 1984, following a national symposium, computer software was hastily given the status of a “literary work” by amending the legislation. Amongst other changes, the Copyright Amendment Act 1984 (Cth) added to s 10(1) of the Copyright Act 1968 (Cth) the provision that literary work now included: (a) a table, or compilation, expressed in words, figures or symbols; and (b) a computer program or compilation of computer programs

The 1984 definition has achieved unexpected longevity and was subjected to fairly minor amendments as part of the “Digital Agenda” amendments in 2001. Those amendments to the Copyright Act 1968 (Cth) also introduced ss 47AB – 47H, which deal with the issue of [4.380]

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decompilation for the purposes of interoperability. Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1, below, discusses the meaning of “computer program”. However, the case was the subject of submissions to a review committee set up to examine problems arising out of IP law that needed to be addressed in order to enhance the effectiveness of the law for users of the copyright system.

Data Access v Powerflex Services [4.390] Data Access Corporation v Powerflex Services Pty Ltd (1999) 202 CLR 1 High Court of Australia GLEESON CJ, McHUGH, GUMMOW AND HAYNE JJ: Pursuant to the grant of special leave to appeal, Data [9] Access Corporation (Data Access) appeals to this Court against orders of the Full Court of the Federal Court (Black CJ, Hill and Sundberg JJ) which were based on a holding that copyright as original literary works did not subsist in commands in the Dataflex computer language contained in a computer program developed by Data Access in the US. The Full Court, reversing the judgment of the trial judge, Jenkinson J, held that those commands were not “computer programs” within the meaning of the definition in s 10 of the Copyright Act 1968 (Cth) (the Act) and were not entitled to protection under that statute. The provisions of the Act apply to the proceedings because, although Dataflex appears first to have been published in the US, the international arrangements implemented by s 184(1)(a) of the Act and by reg 4(1) of the Copyright (International Protection) Regulations (Cth) treat Dataflex as if it had been first published in Australia. … [12] … The Dataflex system Development of the Dataflex application development system commenced in 1979, and it was first published in 1981. Dataflex has been the subject of 18 revisions since that time, is well known, and has achieved a significant share of the market for programs of its kind. It is a system which allows a programmer or developer to develop customised database applications or databases. … Mr Cory Casanave, Executive Vice-President of Data Access, gave evidence as to the nature of the language used in computer programs. He said: A computer language defines the names of each word in the language and the rules governing the use of each word (syntax). Each word in a computer language is an instruction to the computer to invoke lower level processes, the word chosen to invoke those processes is generally chosen to suggest the nature of the process that will be invoked. A computer language is comprised of a set of reserved words which are used in accordance with the rules of syntax governing their use. A computer language syntax, like the syntax of a human [13] language, comprises the rules by which the words can be combined to form statements which are correct for the language. For each command or function there is a specific syntax which describes how arguments may be applied to the command. Arguments can be likened to a noun phrase, they describe what the command will act on. Various documents also refer to “functions” as well as commands. Functions are a type of command which perform a computation and return a result. Two hundred and fifty-four words of the Dataflex language are listed in the Dataflex encyclopedia. However, 29 of those words, which express commands for developing graphics, are not used at all in the PFXplus language. Of the other 225, 192 are used in the PFXplus language in a way which eventually causes the computer to perform the same function as those words perform in the Dataflex language. At first instance, the reasons of Jenkinson J suggest that he considered that copyright subsisted in each of these 192 common words and that the use of them in PFXplus infringed Data Access’ copyright in them. However, the orders made by his Honour restrain the use of only 169 of the 124 [4.390]

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Data Access v Powerflex Services cont. common words, three of which are “Macros”. It may be that, after judgment but before the orders were made, Data Access conceded that the remaining 23 words (which include words such as “SHOW” and “ENTRY”) were not protected by copyright. Perhaps a concession was made during argument and, in a complex case, overlooked when the reasons for judgment were being prepared. But whatever the reason for not dealing with these 23 words, the issue of copyright in this Court is confined to the 169 words the subject of the order made by his Honour. We will deal with the three “Macros” separately from the remaining 166 common words which can conveniently be called the “Reserved Words”. Of these Reserved Words, at least 55 are unique to the Dataflex program. But many are ordinary English words–such as “BOX”, “CHART”, and “RETAIN”. Others are a combination of two English words such as “PAGEBREAK”. Some are not only common English words but are used in most, if not all, computer programs. Examples are “DIRECTORY” and “SAVE”. The issues The only allegations of copyright infringement that are now in issue are the claims that by publishing PFXplus the respondents have infringed the copyright which Data Access has in: A.

The Reserved Words.

B.

The Macros.

C.

The Dataflex Huffman compression table, to which reference will later be made.

A. The Reserved Words … 1. Is each of the Reserved Words a “computer program” within the meaning of s 10(1) of the Act? The appellant contends that each of the Reserved Words is itself a “computer program” within the meaning of the definition in s 10(1) [15] of the Act. In order to determine the validity of the appellant’s submissions, it is convenient to divide the definition of “computer program” into its component parts. The definition of “computer program” requires that each Reserved Word be: (i)

“an expression”;

(ii)

“in any language, code or notation”;

(iii) (iv)

“of a set of instructions (whether with or without related information)”; “intended, either directly or after either or both of the following”: (a) conversion to another language, code or notation; (b) reproduction in a different material form; to cause;

(v)

“a device having digital information processing capabilities to perform a particular function.”

Each of the first four of these elements qualifies what follows and the scope of the definition is marked out by the requirement of an intention that the device be caused “to perform a particular function”. In form, the definition of a computer program seems to have more in common with the subject matter of a patent than a copyright. Inventions when formulated as a manner of new manufacture traditionally fell within the province of patent law, with the scope of the monopoly protection being fixed by the terms of a public document, the patent specification. In Australia claims to computer programs which are novel, not obvious and otherwise satisfy the Patents Act 1990 (Cth) and which have the effect of controlling computers to operate in a particular way, have been held to be proper subject matter for letters patent, as “achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour”, within the meaning of National Research Development Corporation v Commissioner of Patents. [4.390]

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Data Access v Powerflex Services cont. The amendment of the definition of “literary work” in s 10(1) of the Act to include as item (b) “a computer program or compilation of computer programs” obviously marked a significant departure from what previously had been the understanding of what was required for subsistence of copyright in an original literary work. It is true that copyright may subsist in a literary work which is related to the exercise of mechanical functions. A set of written instructions for the assembly and operation of a domestic appliance is an example. However, it is not to the point in copyright law that, if followed, the instructions do not cause the appliance to function. The protection of the function performed by the appliance will be for the patent law, including the law as to inutility. This is what was indicated by Bradley J in a passage in Baker v Selden which was repeated by Brennan J in Computer Edge. Bradley J said that no one would contend that the exclusive right to the manner of manufacture [16] described in a treatise would be given by the subsistence of copyright in that work, and continued: The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subject-matter. … To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. Further, the requirement in copyright law that a work be “original” is to be distinguished from the requirements that an alleged invention be novel and that it not be obvious. The question for copyright law is whether “the work emanates from the person claiming to be its author, in the sense that he has originated it or brought it into existence and has not copied it from another”. If so, the work does not lack originality because of the anterior independent work of another, although, in such circumstances, an invention might lack novelty. Finally, to say that the copyright law does not protect function and extends only to the expression of systems or methods does not deny that a work may serve utilitarian rather than aesthetic ends. A map and a recipe book are obvious examples. There is, with respect, some oversimplification of these principles in the following statement by Dawson J in Autodesk Inc v Dyason (Autodesk No 1): [W]hen the expression of an idea is inseparable from its function, it forms part of the idea and is not entitled to the protection of copyright. The 1984 amendment departed from traditional principles by identifying for copyright purposes a species of literary work, the very subsistence of which requires an expression of a set of instructions intended to cause a device to perform a particular function. The difficulties which arise from accommodating computer technology protection to principles of copyright law have been remarked upon but the Act now expressly requires such an accommodation. … [17] … In our opinion, none of the Reserved Words satisfies the statutory definition. Each Reserved Word is undoubtedly in “code or notation” – the Dataflex language. It follows that whether a Reserved Word is a “computer program” within the meaning of the definition depends on whether it is an “expression … of a set of instructions … intended … to cause a device having digital information processing capabilities to perform a particular function”. However, each of the Reserved Words is a single word; none is a set of instructions in the Dataflex language. Further, none of the Reserved Words intends to express, directly or indirectly, an algorithmic or logical relationship between the function desired to be performed and the physical capabilities of the “device having digital information processing capabilities”. Two competing interpretations of “computer program” … [24] … 126 [4.390]

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Data Access v Powerflex Services cont. The meaning of the phrase “expression … of a set of instructions” was referred to in the Explanatory Memorandum to the Copyright Amendment Bill 1984: The phrase “expression … of a set of instructions” is intended to make clear that it is not an abstract idea, algorithm or mathematical principle which is protected but rather a particular expression of that abstraction. The word “set” indicates that the instructions are related to one another rather than being a mere collection. It is the particular selection, ordering, combination and arrangement of instructions within a computer program which provide its expression. A computer program in a particular language may be relatively inefficient because it uses many instructions to achieve the function that a single instruction could achieve. A computer program in a particular language may also operate relatively inefficiently because of the way it is structured, in terms of the ordering of the instructions and the sequence in which they are executed. Considerations of efficiency are largely a function of the particular language which is used. It is the skill of the programmer in a particular language which determines the expression of the program in that language. … [26] … In our opinion, whether what is claimed to be a “computer program” is an “expression … of a set of instructions … intended … to cause a device having digital information processing capabilities to perform a particular function” must be answered separately for each language in which the item in question is said to be a computer program. Moreover, something is not a “computer program” within the meaning of the definition in s 10(1) unless it intends to express, either directly or indirectly, an algorithmic or logical relationship between the function desired to be performed and the physical capabilities of the “device having digital information processing capabilities”. Thus, in the sense employed by the definition, a program in object code causes a device to perform a particular function “directly” when executed. A program in source code does so “after … conversion to another language, code or notation”. Some support, by way of analogy, may be derived from considering the position in the US. In Baystate Technologies Inc v Bentley Systems Inc, it was held that whilst the computer program comprising “CADKEY” was protected, the particular “data structures” [27] with which the case was concerned “[did] not bring about any result on their own”, so that they were protected, if at all, only as part of the whole computer program. This was because, as was later expressed in the judgment: “a computer cannot read data structures and perform any function”. Once these principles are applied to each Reserved Word in the Dataflex language, it is clear that they are not “computer programs”. Each Reserved Word comprises but a single instruction in that language. Each Reserved Word, considered alone, is not a “set of instructions” in that language. It is not a “computer program” expressed in the Dataflex language. Meaning and syntax There remains to be addressed the further argument of the appellant that the relevant set of instructions at the level of the Dataflex language is the “meaning and syntax of the word or command in question”. In response to questions from members of this Court during the argument of the appeal, counsel for the appellant was asked on a number of occasions to identify the relevant “set of instructions”. His answer was that it was the “meaning and syntax of the word or command in question”. However, the function which will be executed by a particular Reserved Word depends entirely on the source code underlying the Reserved Word. Thus, its “meaning” depends on the source code underlying it. This is also the case with the “syntax”. There are, of course, grammatical and syntactical rules for the use of the Reserved Words. These rules would be written in the source code underlying the Dataflex commands. Equivalent rules would be written in the source code underlying the PFXplus [4.390]

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Data Access v Powerflex Services cont. commands. The meaning of the Reserved Words, and the grammatical and syntactical rules for their use, are not an “expression” until they are reduced to the underlying source code. However, the appellant does not, and could not, contend that Dr Bennett’s source code expression of the meaning of commands or of the grammatical and syntactical rules in PFXplus is a reproduction of the source code expression of those meanings or rules in the Dataflex language. There was a finding that the source code of PFXplus was dissimilar to the source code of Dataflex. … [29] … 2. Is the collocation of the Reserved Words a computer program? Furthermore, the collocation of the Reserved Words is not a “computer program”. Although the Reserved Words together form “an expression … of a set of instructions”, their simple listing together, without more, does not cause a computer to perform any identifiable function. There is no interrelationship of the instructions with one another which is an expression of a logical or algorithmic relationship between an identifiable function and the physical capabilities of the computer via the medium of the Dataflex language. It is no answer that there is a set of instructions with a single identifiable function in that it provides a programmer with the vocabulary to enable him or her to program in the Dataflex language. As in the case of each individual Reserved Word, this is a function which the author of the Reserved Words intended them to perform in relation to the user, not in relation to the computer. As we have indicated, the definition of a “computer program” requires that the set of instructions be intended to cause the computer to perform a particular function. … 4. Does copyright subsist in the table or compilation of the Reserved Words in the Dataflex User’s Guide? The Reserved Words are contained in the Dataflex User’s Guide. The appellant did not submit that any of the Reserved Words [35] themselves were traditional literary works protected by copyright, no doubt because they would face significant hurdles in the form of originality and substantiality. Given that the Reserved Words are arranged in alphabetical order in the Dataflex User’s Guide, very little skill or labour was involved in compiling the Reserved Words in the form in which they appear in the User’s Guide over and above the sum of the skill and labour involved in devising each individual Reserved Word. As the Full Court said: This is not a case where disconnected words are used in a particular order so that the order becomes the linchpin for copyright. Furthermore, as we have already said, each of the Reserved Words is suggestive of the function it performs. In many cases, it is an ordinary English word, or a concatenation of two or more ordinary English words. Even if the skill and labour involved in devising each individual Reserved Word is combined and consideration given to the total skill and labour, there may still be a real question as to whether there is sufficient originality for copyright to subsist in the combination. This is so even allowing for the inclusion in the definition of para (b) of “literary work” of a “compilation of computer programs”. The totality of the Reserved Words cannot be protected as a “compilation” within the definition because it requires a “compilation of computer programs” and the Reserved Words are not themselves programs. This does not necessarily preclude them together from protection as constituting a single program, but the set of instructions said to constitute such a program would still require identification. For the reasons leading to the conclusion that each of the Reserved Words does not constitute programs, a collection thereof does not constitute a program. The English letters which make them up are never at any stage executed by the computer. They are not instructions. They never cause a computer to perform a function. Their totality might be considered a “set”, but of labels or data, rather than of instructions as required by the definition. 128 [4.390]

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Data Access v Powerflex Services cont. In any event, even if copyright does subsist in the table or compilation of the Reserved Words, we do not think that the respondents have infringed this copyright. The Reserved Words appear in the PFXplus source code program not as an alphabetical list, but as literal strings to which certain commands are assigned. [36] B. The Macros The appellant also contends that copyright subsists in what are referred to as “Macros”. It contends that each of these commands is a “computer program” within the statutory definition and that Dr Bennett made an adaptation of the Dataflex Macro commands. Consequently, it submits that Dr Bennett infringed the appellant’s copyright in them. Three particular commands in the Dataflex language, “REPORT”, “ENTERGROUP” and “ENTER”, are described as “Macros” because they cause the performance of a more complex function than any of the other Reserved Words. Executing a Macro command causes a sequence of other functions to be executed, so that the overall effect of performing a more complex function is achieved. Are the macros computer programs in Dataflex? It follows from the nature of a “computer program” as defined in s 10(1) of the Act that the words assigned to the Macros, comprising as they do one instruction in the Dataflex language, cannot qualify as a “computer program”. However, the underlying source code of each Macro may qualify as a “computer program”. In practice, the source code underlying each Macro is a small fragment of the source code of the overall Dataflex computer program (the relevant portion was said by the Full Court of the Federal Court to be some 229 lines). The Full Court said that the question of whether a component part of a computer program is itself a computer program for the purposes of the Act is a question of fact. However, the Full Court went on to say that “[i]f a particular set of instructions is functionally separate from the entirety of the program, then … there is no difficulty in treating that set of instructions as being a literary work separate from the balance of the program”. Although it did not expressly say so, the Full Court must have considered that the particular set of instructions comprising each Macro was not functionally separate from the remainder of the Dataflex compiler program. This is because it said that “the relevant program to be considered here would not be that small fragment of program which causes the macro command to perform its function (some 229 lines), but the Dataflex compiler program itself”. … [37] … Reproduction or adaptation of the macros? The learned trial judge found strong objective similarity between the underlying source code of the PFXplus Macros and the underlying source code of the Dataflex Macros. Jenkinson J did not find that Dr Bennett had reproduced the Dataflex Macros, but instead found that Dr Bennett had “made an adaptation of the expression in I-Code of each of the three sets of instructions”. The finding of no reproduction was not challenged; the appellant contended that there was an adaptation. The meaning of “adaptation” in relation to computer programs, as set out in s 10(1) of the Act, is “a version of the work (whether or not in the language, code or notation in which the work was originally expressed) not being a reproduction of the work”. In examining the meaning of the word “version”, the Full Court referred to the meanings of the word “version” given by the Macquarie Dictionary: “2. a translation. 3. a particular form or variant of anything”. The Full Court also quoted the following passages from the Explanatory Memorandum: 11. Copyright in literary works includes exclusive rights to reproduce or adapt such works and computer programs will be treated as literary works. However, the present definition of adaptation in relation to literary works only includes translation, conversion between dramatic and non-dramatic forms, and [38] conversion to a pictorial form. [4.390]

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Data Access v Powerflex Services cont. 12. Of these, only translation is likely to be relevant to adaptation of programs and there are legal doubts as to whether this refers only to translations between human languages. 13. The new definition is intended to cover translation either way between the various so-called “high-level programming languages” in which the programs may be written by humans (often called “source code”) and languages, codes or notations which actually control computer operations (often called “machine code” or “object code”). Thus “adaptation” is intended, for example, to cover the compilation of a FORTRAN program to produce machine code which will directly control the operation of a computer. Languages, etc of intermediate level would also be covered. 14. It is also possible for a program to be converted from object code into source code, or between different languages of similar level. In some circumstances this process will result largely in a substantial reproduction of the original program. In other cases, however, such as compilation followed by de-compilation, the differences may be so substantial that one cannot speak of a reproduction although the final product is clearly derived from the original. The new definition of adaptation is intended to cover such situations. The Full Court said: The evidence is clear that while Dr D Bennett carefully studied the Dataflex program so as to ensure that the PFXplus commands in question performed the same functions as the Dataflex commands, the expression of the source program as written by him was an original expression, albeit having much which was objectively similar to the expression of the source code in the Dataflex program. But it is clear that the process involved no translation from one form or language to another, nor did it involve the kind of process referred to in para 14 of the Explanatory Memorandum involving compilation followed by decompilation, or vice versa. In our view, a process of devising a source code to perform the same function as is performed in some other source code expressed in original language does not involve creating a version of the original source code. Thus, the Full Court was of the opinion that there needed to be “translation from one form or language to another”, or, alternatively, “the kind of process referred to in para 14 of the Explanatory Memorandum involving compilation followed by decompilation, or vice versa” in order for there to be a “version” within the meaning of the statute. [39] … Paragraph 12 of the Explanatory Memorandum states that “only translation is likely to be relevant to adaptation of programs”. This indicates that Parliament did not intend the word “version” to cover situations where, although the functionality of a computer program was copied, original code has been written to perform that function. The focus on translation indicates that Parliament was concerned to ensure that the different languages in which a computer program may be expressed did not provide a means by which copying could occur and infringement be avoided on the ground that the expression in the new language was not a “reproduction”. The use of the words “derived from the original” in para 14 of the Explanatory Memorandum also indicates that the focus is on copying. In accordance with the fundamental principle that copyright protects expression and not ideas, this must relate to the copying of the code (the “expression … of a set of instructions”), rather than a copying of the idea or function underlying the code. There was no adaptation of the Macros. C. The Dataflex Huffman Compression Table The respondents seek special leave to cross-appeal against the Full Court’s finding that they infringed the copyright which the appellant held in the Huffman compression table embedded in the Dataflex program. 130 [4.390]

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Data Access v Powerflex Services cont. Usually, in storing data, all of the 256 characters which a computer recognises are stored in memory as bit strings which are eight bits in length. Huffman compression is a method of reducing the amount of memory space consumed by data files. It stores characters in a data file as bit strings which have a length which relates to the character’s frequency of occurrence in the data file. If a character occurs frequently in the data file, it is stored as a bit string of shorter length than a character which occurs infrequently in a data file. … The Huffman algorithm, when expressed in source code, analyses a data file to determine the relative frequency of the occurrence of characters, and then assigns a bit string of appropriate length to each character, depending on its frequency of occurrence. There is no allegation in this case that Dr Bennett copied the source code of the Huffman algorithm from the Dataflex program. Dr Bennett states that he obtained “freely distributable” source code for this purpose. … The definition of “literary work” in the Act includes: a table, or compilation, expressed in words, figures or symbols (whether or not in a visible form). The Explanatory Memorandum to the Copyright Amendment Bill 1984 stated: By removing the requirement that tables or compilations be in a visible form it is made clear that a computerised data bank, for example, may be treated as a compilation being a literary work. It is also important because data is often stored in a computer as a table. These changes are consistent with the definition of material form. In our opinion, the Dataflex Huffman table is a table expressed in figures and symbols, and falls squarely within the statutory definition of a “literary work”. The reference in the Explanatory Memorandum to “data … stored in a computer as a table” clearly describes the Dataflex Huffman table. The Dataflex Huffman table is similar to the look-up table in Widget C which, in Autodesk No 1, Dawson J considered was a “literary work” within the meaning of the above definition. His Honour thought this was so even though no reliance was placed on that point by Autodesk. For copyright to subsist in the standard Dataflex Huffman table, it must be an “original literary … work”. As we have indicated, the requirement that a work be “original” in copyright law is a requirement that “the work emanates from the person claiming to be its author, in the sense that he has originated it or brought it into existence and has not copied it from another”. At first instance, Jenkinson J found that “[t]he use of the Huffman system [42] to produce a compression table requires the employment of substantial skill and judgment and a very great deal of hard work”. The Full Court agreed with this finding. The skill and judgment employed by Dataflex was perhaps more directed to writing the program setting out the Huffman algorithm and applying this program to a representative sample of data than to composing the bit strings in the Huffman table. Nevertheless, the standard Dataflex Huffman table emanates from Dataflex as a result of substantial skill and judgment. That being so, the Full Court was correct in holding that the standard Dataflex Huffman table constituted an original literary work. In addition, in our opinion the Full Court was correct in holding that the process undertaken by Dr Bennett constituted a “reproduction” of the standard Dataflex Huffman table. The fact that Dr Bennett used an ingenious method of determining the bit string assigned to each character does not make the output of such a process any less a “reproduction” than if Dr Bennett had sat down with a print-out of the table and copy-typed it into the PFXplus program. The finding that the respondents infringed the appellant’s copyright in the Huffman table embedded in the Dataflex program may well have considerable practical consequences. Not only may the finding affect the relations between the parties to these proceedings, it may also have wider [4.390]

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Data Access v Powerflex Services cont. ramifications for anyone who seeks to produce a computer program that is compatible with a program produced by others. These are, however, matters that can be resolved only by the legislature reconsidering and, if it thinks it necessary or desirable, rewriting the whole of the provisions that deal with copyright in computer programs.

PART IV COPYRIGHT: SUBJECT MATTER OTHER THAN WORKS [4.400] The Copyright Act 1968 (Cth) Part IV introduces newer subject matter for copyright

protection, essentially in recognition of the broader nature of neighbouring rights. The purpose of these more recent categories is really to protect entrepreneurial investment, rather than authorship or the well recognised expression of creative endeavour inherent in the adjectives “literary, dramatic, musical and artistic”. Part IV protects sound recordings, cinematograph films, television and sound broadcasts, and published editions of works.

Sound recordings [4.410] “Sound recordings”, according to the Copyright Act 1968 (Cth) s 10(1), “means the aggregation of sounds embodied in a record”, while “record” includes (and thus is not limited to) a disc, tape, paper, electronic file or other device in which sounds are embodied. Section 85 protects sound recordings whether embodied in a video tape, cassette tape, DVD or some other form. In the case of a live performance, protection is provided to a sound recording made and recorded at the time of performance, including the actual sounds of the performance. Hence a cover recording made at a different time will not infringe that sound recording (although it may infringe copyright subsisting in the literary and musical works concerned. Protection is not available for sound recordings made prior to the commencement of the Act, although copyright might be claimed in some aspect of the recording, such as the literary work on which it is based. Note that the protection is only for the actual recording itself, and would not prevent “sound alike” or cover versions. Performers have very limited rights in relation to sound recordings made before 1 January 2005. Unless they have reached some agreement on assignment with the owners of the copyright in the sound recordings at the time they make their own recording, performers are not entitled to exercise these rights where this would interfere with the rights of the original copyright owners. Even for recordings made on or after 1 January 2005, performers’ rights are likely to be very limited in practice as a result of a number of the new provisions. In particular, unless the performer reaches an agreement assigning all or part of the future copyright to him or her, a performer will not own a share in the copyright in the sound recording if:

• the performance was in the course of his or her employment; or • the recording was commissioned (eg, a record company engages a production studio to produce a master recording: see Cope Allan (Marrickville) Ltd v Farrow (1984) 3 IPR 567). Note that in respect of sound recordings, amendments to the Copyright Act 1968 (Cth) in January 2005 as a result of the Australia–US Free Trade Agreement give performers the possibility of exercising some rights in relation to authorised recordings. The maker of a recording is the person who owns the first embodiment of that recording which is produced 132 [4.400]

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(Copyright Act 1968 (Cth) s 22(3)). As a result, the first owners of copyright in a sound recording of a performance may include both the performer and the person who owns the recording medium (the master recording).

Cinematographic films [4.420] “Cinematographic film” is defined in Copyright Act 1968 (Cth) s 10(1) as: … the aggregate of the visual images embodied in an article or thing so as to be capable by the use of that article or thing: (a) of being shown as a moving picture; or (b) of being embodied in another article or thing by the use of which it can be so shown; and included the aggregate of the sounds embodied in a sound track associated with such visual images.

It attracts a separate copyright from any underlying copyright in the script, choreography or score: see ss 10(1), 86, 90. This is a relatively narrow type of copyright protection, covering only the film itself: it does not therefore cover copyright infringements of the type which occurred in Zeccola v Universal City Studios Inc (Jaws Case) (1982) 67 FLR 225. Video games involving computer-generated images have been held to be cinematographic films for the purposes of this definition: see Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 145 ALR 21. The difficulty in interpreting provisions that are designed specifically for this “new” subject matter and reconciling them with the traditional principles of protection for works can be seen in Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 37 IPR 462, below, and “The Panel” High Court appeal case in respect of television broadcasts that follows at [4.450].

Galaxy Electronics v Sega Enterprises [4.430] Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 37 IPR 462 Federal Court of Australia WILCOX J: [469] … I agree with Burchett J [trial judge] that it would be wrong to interpret narrowly the definition of “cinematograph film” in s 10 and s 24. These provisions were intended to cover new technologies, the emphasis being on the end product – motion pictures – rather than the means adopted to create those pictures. Nonetheless, the definition will apply to any particular new technology only if that technology satisfies the words of the definition, liberally read. [470] … The definition of “cinematograph film” refers to “the aggregate of the visual images embodied in an article or thing”. Section 24 sets out circumstances under which “visual images shall be taken to have been embodied in an article or thing”. I also agree that the word “embodied” refers to the giving of a material or discernible form to an abstract principle or concept. The Lord Chancellor’s “Iolanthe” song neatly illustrates this meaning. According to his Lordship, the abstract concept of excellence achieves material manifestation in the Law; and the Law, in turn, is manifested in his noble person. It seems inherent in both the dictionary definition and the “Iolanthe” illustration that the abstraction must pre-exist the material manifestation. Counsel for the appellants argue that the images visible to players of the games do not exist before the moment of visibility; accordingly, it cannot be said that they represent an embodiment of pre-existing images. Counsel make the point that computer-generated images are fundamentally different to film or video images; in the latter case the images are fixed on celluloid or videotape before the moment of projection and viewing. This analysis is superficially attractive; but, I think, unsound. The visual images depicted in these video games did exist before the game was played. They existed in the minds of their creators and the [4.430]

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Galaxy Electronics v Sega Enterprises cont. drawings and models they made. The images were embodied in the computer program built into the video game machine so as to be capable, by the use of that program, of being shown as a moving picture. It does not matter that they were embodied in a different form; that is, three-dimension vertices of the polygon model, rather than a two-dimensional image. The statutory definition says nothing about the form of embodiment. Nor does it matter that the images seen by players are created by computer calculations only immediately before their appearance on the screen of the video game machine. Although that means, in a sense, that they are new, they are exact recreations of images previously devised by the graphic designers. Similarly, of course, it is unimportant that the images could not be seen on the screen as a moving picture until generated by the computer, any more than it matters that a length of video tape is incapable of being seen as a moving picture until passed through a video player. … Upon analysis, the present case seems to fall directly within the terms of the s 10 definition of “cinematograph film”, without the necessity of resorting to s 24. However, that section puts the matter beyond doubt. The visual images that constitute the moving picture are taken to have been “embodied” in the computer program because the computer program was so treated in relation to those images as to be capable of reproducing them. Counsel for the appellants argue it is not enough that a particular article was capable of producing particular sounds or visual images. If capability is the test, they say, every piano would have to be held a “sound recording” of Beethoven’s “Moonlight Sonata”. Every piano is capable of producing the notes that constitute that work. Counsel have in mind that the term “sound recording” is defined by s 10 as meaning “the aggregate of the sounds embodied in a record” and a “record” includes any “device in which sounds are embodied”. … [472] … I accept capability is not enough. It is important to note the requirement of s 24 that the article or thing “has been so treated in relation to those sounds or visual images” that they are capable of being reproduced from the article or thing. There must have been a treatment of the article or thing that is related to specific sounds or visual images. This can be said of a computer program, not of a piano. It is necessary to include a keyboard in a piano, if it is to be capable of reproducing the notes that constitute the “Moonlight Sonata”. But the inclusion of a keyboard is not something done “in relation to” those particular sounds; it is done in relation to piano music generally. I think Burchett J was correct in holding that the aggregate of the visual images generated by the playing of each of the two subject video games constituted a “cinematograph film” within the meaning of s 10 of the Copyright Act 1968. [Lockhart and Lindgren JJ concurred.]

Sound and television broadcasts [4.440] “Television broadcast” and “sound broadcast” are, again, a separate copyright: see

their definitions in s 10(1), and also in Copyright Act 1968 (Cth) ss 87 and 91. Broadcasts made before the 1968 Act are not protected by copyright law. Before the Copyright Amendment (Digital Agenda) Act 2000 (Cth), the definition of broadcasting included broadcasting to the public at large. There were, therefore, considerable difficulties with copyright for pay television (eg, Sky Channel), since those broadcasts were arguably only transmitted to a narrow range of subscribers and hence not to the public at large. There is now no distinction between free-to-air and cable services. Note that in Network Ten Pty Ltd v TCN 134

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Channel Nine Pty Ltd (The Panel Case) (2004) 59 IPR 1 below, the decision of the Full Federal Court decision was overturned by the High Court on appeal. The Panel High Court decision

Network Ten v TCN Channel Nine [4.450] Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (“The Panel” Case) (2004) 59 IPR 1 High Court of Australia McHUGH ACJ, GUMMOW AND HAYNE JJ: [3] … Nine seeks to uphold the Full Court decision in its favour that each visual image capable of being observed as a separate image on a television screen and accompanying sounds is “a television broadcast” in which copyright subsists. The gist of Ten’s complaint is that the term “a television broadcast” as it appears in the Act was misread by the Full Court, with the result that the content of that expression is so reduced that questions of substantiality have no practical operation and the ambit of the copyright monopoly is expanded beyond the interests the legislation seeks to protect. Ten’s submissions should be accepted and the appeal allowed. … [4] … The context in which the broadcasting right was introduced, including well-established principles of copyright law, the inconvenience and improbability of the result obtained in the Full Court, and a close consideration of the text of various provisions of the Act relating to the broadcasting right, combine to constrain the construction given to the Act by the Full Court and to indicate that the appeal to this Court should be allowed. … [6] … The legislative context In 1968, at the time of the enactment of the Act, the predecessor of the Broadcasting Act, the Broadcasting and Television Act 1942 (Cth) (“the 1942 Act”), was in force. As it stood in 1968, s 99(1) of the 1942 Act required the holder of a commercial television station licence to “provide programmes … in accordance with standards determined by the [Australian Broadcasting Control] Board”. With respect to what was then the Australian Broadcasting Commission, s 59 of the 1942 Act required the Commission to “provide, and … broadcast or televise from transmitting stations made available by the Postmaster-General, adequate and comprehensive programmes”. Section 121 of [7] the 1942 Act prohibited the broadcasting of programmes of other stations, and s 132 rendered an offence the contravention of any provision of the 1942 Act. The Act was preceded by the Report (“the Spicer Report”) delivered in 1959 of the Committee appointed by the Attorney-General of the Commonwealth to consider what alterations were desirable in the copyright law of the Commonwealth (“the Spicer Committee”). The Spicer Report had said it was significant that neither the Brussels Convention nor the Universal Copyright Convention recognised a copyright in sound broadcasts or television broadcasts (para 285). In the end, the Spicer Report concluded (paras 288, 289) that protection for broadcasters could properly be included in the copyright law with an adaptation of the provision then recently made by s 14 of the UK Act. The introduction by s 14 of the UK Act of the new species of copyright protection followed Recommendation 31 in the Report of the Copyright Committee (“the Gregory Report”) which had been presented in 1952. Recommendation 31 had been: That a broadcasting authority should have the right to prevent the copying of its programmes either by re-broadcasting, or by the making of records for sale and subsequent performance. (Paragraph 117) [4.450]

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Network Ten v TCN Channel Nine cont. Paragraphs 116 and 117 of the Gregory Report state the policy and objectives which were subsequently to find expression in the provisions of the Australian legislation upon which this appeal turns. Accordingly, pars 116 and 117 should be set out in full: 116. We now turn to the question whether a new right should be given to the broadcasting organisations in their own programme, additional to any copyright there may be in the individual items which go to make up those programmes, and we deal at this stage solely with a right to prevent other persons from copying the programme either by way of again broadcasting a programme (in the event of there being more than one broadcasting authority in the future) or by way of recording such programmes for subsequent performance in some other way. 117. On the question of copyright in the ordinary sense, the position of the [British Broadcasting Corporation (the BBC)], as we see it, is not, in principle, very different from that of a gramophone company or a film company. It assembles its own programmes and transmits them at considerable cost and skill. When using copyright material it pays the copyright owner, and it seems to us nothing more than natural justice that it should be given the power to control any subsequent copying of these programmes by any means. It has been represented to us that the absence of such a right [8] has already caused considerable embarrassment to the BBC. Apparently, indifferent reproductions both of sound and television programmes have been made, and sold to the public, to the detriment alike of the [BBC] and of those taking part. We consider that a right should be given to the BBC or any other broadcasting organisation to prevent this happening again. Any right so conferred would be additional to the right of the author or composer to prevent mechanical recording where copyright material is broadcast. It would also extend to prevent the mechanical recording of a broadcast of material which is either non-copyright, or of a nature in which a right to prevent recording may not, under the present law, subsist at all, eg news, talks, music-hall “gags”. [emphasis in original] In Australia, the Spicer Committee stressed the significance of the new head of copyright protection, saying (para 282): The conception of copyright which has hitherto been accepted is one which extends protection against copying and performing in public any work insofar as it is reduced to a permanent form. Copyright has not been extended to confer such protection in relation to a mere spectacle or performance which is transitory of its very nature. In Victoria Park Racing and Recreation Grounds Co Ltd v Taylor, the High Court had rejected the submission that by the expenditure of money the plaintiff had created a spectacle at its racecourse so that it had “a quasi-property in the spectacle which the law would protect” by enjoining the broadcast of a race-meeting there. The issue before the Spicer Committee was a different one, namely the protection of broadcasts themselves. The Spicer Committee added (par 284): It is true that in many cases the broadcast will be recorded on tape or film, in which case the record or film will enjoy its own copyright protection, but the copyright here being considered is one which attaches to the broadcast itself. In the second reading speech on the Bill for the Act, the Attorney-General, Mr N H Bowen QC, said that the matters of records and broadcasts were dealt with in the UK Act and that it was appropriate to deal with them in the Bill. He also referred to the provisions of the Rome Convention which had postdated the UK Act but to which Australia was yet to accede. The Rome Convention also provided for the grant of “neighbouring rights” to various persons including broadcasters. Article 13 of the Rome Convention provided that “[b]roadcasting organisations [were to] enjoy the right to authorise or prohibit”, among other things, “the rebroadcasting of their broadcasts”, “the fixation of their broadcasts” and “the reproduction … of fixations, made without their consent, of their broadcasts”. 136

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Network Ten v TCN Channel Nine cont. [On first Federal Court hearing of the dispute] Conti J noted that the Gregory Report had spoken of the right to prevent the copying of the “programmes” of broadcasting authorities, and the [9] broadcasting systems established by the 1942 Act spoke of the provision of “programmes” broadcast or televised from transmitting stations, and the Spicer Report spoke both of the protection of “broadcasts” and (in par 286) of “the programme received”. The Rome Convention, like the Act, used the term “broadcast”. There was no significant step taken with this shift in language. At this time, the use of “broadcast” as a noun indicated: a Broadcasting as a medium of transmission. b The material, music, or pictures broadcast; also, a single program of such material. The policy and objective in the recommendations of both Committees was to protect the cost to, and the skill of, broadcasters in producing and transmitting their programmes, in addition to what copyrights may have subsisted in underlying works used in those programmes. There is no indication, as Nine would have it, that, with respect to television broadcasting, the interest for which legislative protection was to be provided was that in each and every image discernible by the viewer of such programmes, so as to place broadcasters in a position of advantage over that of other stakeholders in copyright law, such as the owners of cinematograph films or the owners of the copyrights in underlying original works. The television broadcasting right Part III (ss 31-83) of the Act provides for copyright in original literary, dramatic, musical and artistic works. Part IV (ss 84-113) provides for copyright in subject-matter other than works, namely sound recordings, cinematograph films, television broadcasts and sound broadcasts, and published editions of works. Of Pt IV copyrights, it is accurately observed: In general, these subject matters receive a lower level of protection than works, with shorter terms and more restricted exclusive rights. … [10] … There are various points of contact made in the Act between the copyrights conferred by Pt III in respect of original works and the newer forms of copyright provided for in Pt IV … What is significant for present purposes is that the exclusive rights with respect to original literary, dramatic and musical works include the right to broadcast the works (s 31(1)(a)(iv)) whether by way of sound broadcasting or television (s 25(1)), and the exclusive rights with respect to original artistic works include the right to include the works in television broadcasts (s 31(1)(b)(iii)). The result is that a television broadcast may be more than a broadcast of some event or spectacle; it also in some cases may reproduce one or more works in which copyright subsists under Pt III and is vested in a different ownership to that of the broadcast. … [11] … However, for this appeal … what is comprehended by the “subject-matter” of the protection under Pt IV given to “a television broadcast”. That is the phrase used in ss 91, 95, 99 and 101(4). It should be observed that s 101(4) uses the phrase “the visual images and sounds comprised in the broadcast”. Likewise, for the purposes, for example, of fixing the commencement of the 50 year period specified in s 95(1), the television broadcast is treated by s 22(5) as having been made “by the person by whom, at the time when, and from the place from which, the visual images or sounds constituting the broadcast … were broadcast”. The decision which Ten challenges appears to discount the force of that phrase, redolent of plurality and interconnection of images and sounds, by treating as “a television broadcast” that which is capable of being observed as a separate image and (in an unexplained fashion) that capable [sic] of being heard and distinguished as the accompanying sounds (if any). The medium of communication [4.450]

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Network Ten v TCN Channel Nine cont. Where the “subject-matter” of copyright protection is of an incorporeal and transient nature, such as that involved in the technology of broadcasting, it is to be expected that the legislative identification of the monopoly (eg, by s 87) and its infringement (eg, by s 101) of necessity will involve reference to that technology. But that does not mean that the phrase “a television broadcast” comprehends no more than any use, however fleeting, of a medium of communication. Rather, as the Gregory Report indicated, protection was given to that which had the attribute of commercial significance to the broadcaster, identified by the use of the term “a broadcast” in its sense of “a programme”. In the same way, the words, figures and symbols which constitute a “literary work”, such as a novel, are protected not for their intrinsic character as the means of communication to readers but because of what, taken together, they convey to the comprehension of the reader. In fixing upon that which was capable of perception as a separate image upon a television screen and what were said to be accompanying sounds as the subject-matter comprehended by the phrase “a television broadcast”, the Full Court appears to have fixed upon the medium of transmission, not the message conveyed by its use. Because the medium is ephemeral, it is necessary to capture what a television broadcaster transmits if any practical use is to be made of the signal that is broadcast. … [12] … Section 87 of the Act, in pars (a) and (b), identifies the nature of copyright in a television broadcast by reference to two methods by which what is transmitted can be captured and recorded in permanent or semi-permanent form. One method (s 87(a)) is to take a still visual image of what otherwise appears on a television set as part of a continuous visual transmission. In that context it may be sensible to speak of a single visual image that is broadcast. However, it by no means follows that it is sensible to confine the understanding of “a television broadcast” by basing the meaning that is given to the expression upon the capacity to capture and record singular visual images. Especially is that so when it makes little sense to speak of a single “moment” of sound accompanying that image. The instantaneous fixing of single visual images is familiar, but the instantaneous fixing of single sounds is not. When it is further observed that s 87(c), with its reference to re-broadcasting, at least encompasses the capture and simultaneous retransmission of a television broadcaster’s signal, it is apparent that to understand “a television broadcast” as a singular and very small portion of the signal which a broadcaster transmits virtually continuously, and a person receiving is intended to receive continuously, is to give the expression a very artificial meaning. Yet that is what the Full Court did. The reasoning of the Full Court The conclusion of the Full Court with respect to s 87(a) rested largely upon a view taken of the significance of s 25(4). That sub-section treats the reference in s 87(a) to the making of “a cinematograph film” of “a television broadcast” as “including a reference to a cinematograph film … of any of the visual images comprised in the broadcast”. In that regard, Hely J held that “the expression ‘any of the visual images’ encompasses any one or more of those images, without any requirement that the images should amount to a substantial part of the broadcast” … [14] … The outcome of the decision of the Full Court now under appeal is that the interests of broadcasters are placed by the Act in a privileged position above that of the owners of copyright in the literary, dramatic, musical and artistic works which may have been utilised in providing the subject of the images and sounds broadcast. This is because the diminished requirements in respect of infringement of television broadcasts for the taking of a substantial part of the subject-matter facilitate the proof of infringement there while leaving the owners of copyrights under Pt III with a heavier burden. Ten points to this apparent incongruity as favouring a construction of the Act contrary to that adopted by the Full Court. [Their Honours discuss at length, and then reject, the Full Federal Court interpretation of s 87, its relation to s 25(4) and the relevance of substantial part.] 138 [4.450]

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Network Ten v TCN Channel Nine cont. … [19] … What is “a television broadcast”? The definition given in s 10 is “television broadcast”, which is drawn in terms of the technology of broadcasting which is to be utilised. But the phrase in the exclusive right provisions of s 87 (as also in ss 91, 95, 99 and 101(4)) is “a television broadcast” … In the present case, Hely J focused attention not upon the statutory phrase “a television broadcast”, but upon the use of technical language in the definition of “television broadcast”. His Honour concluded: Here the interest protected by the copyright is the visual images broadcast by way of television and any accompanying sounds. It is the actual images and sounds broadcast which constitute the interest protected. The interest protected is not defined in terms of some larger “whole” of which the visual images and sounds broadcast are but a part. The ephemeral nature of a broadcast, and the fact that copyright protection is conferred by reference to a broadcaster’s output, rather than by reference to the originality of what is broadcast, may also help to explain why the interest protected is defined in this way. That identification of the interest sought to be protected by the broadcast copyright should not be accepted. The interest sought to be protected by the conferral of the television broadcast copyright was identified by the Spicer Committee with reference to the experience of the BBC and the Independent Television Authority. The latter was established by the Television Act 1954 (UK) and charged by s 3 to “broadcast … programmes” of a certain standard. … [Their Honours set out the statutory obligations of the broadcasters TCN Ten and Channel Nine to provide free-to-air “programs”, noting that programs are defined under s 6(1) of the Broadcasting Act as:] (a) matter the primary purpose of which is to entertain, to educate or to inform an audience; or (b) advertising or sponsorship matter, whether or not of a commercial kind. … [21] … There can be no absolute precision as to what in any of an infinite possibility of circumstances will constitute “a television broadcast”. However, the programmes which Nine identified in pars 5.1-5.11 of its pleading as the Nine Programs, and which are listed with their dates of broadcast in the reasons of Conti J, answer that description. These broadcasts were put out to the public, the object of the activity of broadcasting, as discrete periods of broadcasting identified and promoted by a title, such as The Today Show, Nightline, Wide World of Sports, and the like, which would attract the attention of the public. However, Conti J was, with respect, correct in adding, with reference to Copinger and Skone James on Copyright, that: Television advertisements should be treated as discrete television broadcasts, particularly since “A television or cinema commercial is typically the product of the creative and administrative work of many separate individuals” … I would reject Ten’s submission that because advertising is the “life blood” of commercial television broadcasting, it is “impossible for [Nine] to avoid the conclusion that these advertisements are part of that program”. His Honour added: Moreover, where a given program divides into segments, it may be legitimate in the facts of a given case to use a segment of a program for measurement of the television broadcast, rather than the whole of the program. [4.450]

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Network Ten v TCN Channel Nine cont. We would reserve consideration of that proposition for a particular case where the point arises. However, the circumstance that a prime time news broadcast includes various segments, items or “stories” does not necessarily render each of these “a television broadcast” in which copyright subsists under s 91 of the Act. … [22] … Conclusions The appeal should be allowed with costs. … [The question as to what constitutes a “substantiality” under s 14(1)(a) of the Copyright Act 1968 (Cth) was sent back to the Full Court for determination. See discussion on “substantial part” at [6.50] and extract at [6.230] TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (No 2) (2005) 145 FCR 35. KIRBY J: [dissent] … I agree in the conclusion reached by Callinan J. In my view, the approach adopted by the Full Court was correct. … … [25] … Criticisms of the ambit of copyright protection I reach my conclusion without quite the same enthusiasm as Callinan J appears to feel for it. The opinion of the Full Court has been described as “highly literal”. Perhaps it is; but the language of the Act leaves no scope for another approach. The most telling criticism voiced of the Full Court’s interpretation is that it makes television broadcast copyright “an extraordinarily strong right, easily the strongest of all copyrights in Australia, able to be infringed by taking less than a substantial part of the broadcast”. This, it is said, is counterintuitive given the ephemeral nature of television broadcasts and the original reasons for granting copyright in them. If I were free of the constraints of the language of the Act, I would be happy to agree in the conclusion reached in this Court by McHugh ACJ, Gummow and Hayne JJ, whilst feeling anxiety about the lack of precision as to what, in any of an infinite range of circumstances, will constitute “a television broadcast” on that view. I also have some sympathy for the opinion expressed by Ms de Zwart in a comment upon the Full Court’s opinion in these proceedings: There are … many circumstances in which the public interest lies in permitting the use of a work without the permission of the owner of copyright, with or without payment. The Panel decision provides a good example of circumstances in which a licence would not be granted (between competitors). … It is vital to recognise the public interest element of copyright … Copyright is not solely concerned with economic returns for the owner. Neither was copyright intended to enable owners to exploit all possible uses and derivations of the work. The public domain is an important legacy of copyright law and its existence should also be protected in the face of the growth of digital capture and licensing of works. … The Panel serves as a vehicle for social comment and criticism, albeit in a relaxed, humorous fashion. … Copyright is a social as well as a commercial construct and its role in facilitating new creations as well as protecting existing creations should not be forgotten. (de Zwart, “Seriously entertaining: The Panel and the future of fair dealing” (2003) 8 Media & Arts Law Review 1 at 16-17). [26] … The Act contemplated a form of copyright apt to the particular technology involved in television broadcasting. It therefore provided that copyright would attach to “the visual images comprised in the broadcast”. Those who conceive the Parliament as confining the scope of the new copyright protection for television broadcasts to entire programmes (or defined and undefined sections and segments of a continuous day’s broadcasting) must not watch much television. It is the very power of particular, and often quite limited (even fragmentary) portions of “visual images” on television that makes it such a potent and commercially valuable means of expressing thoughts and ideas: noble and banal, serious and humorous, uplifting and discouraging. 140 [4.450]

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Network Ten v TCN Channel Nine cont. Everyone knows that still images or very brief segments in television broadcasts can constitute commercially valuable commodities, standing alone. The acquisition by a broadcaster of comparatively short filmed sequences will sometimes represent very important and commercially valuable rights that exist without the need of a surrounding context, let alone an extended programme or particular segment of a day’s broadcast. The parties to the present appeal were in commercial competition with each other. That fact is itself also a consideration that generally favours the claim of a copyright owner. … [27] … The proper approach to the meaning of the Act It follows that the Parliament did not envisage the striking of a balance between public and private interests in the Act by the adoption of an unspecified and ultimately undefinable notion of “a television broadcast” in the sense of a “unit of programming”. The Act does not refer to that notion of a “programme” or unit thereof. It might have done so. But it did not. CALLINAN J: [dissent] [39] … The Act falls to be read therefore against the background of these indisputable facts. The parties compete with each other. The production of any programme, indeed each and every frame and segment of it, comes at a cost. It is produced in order to make money by inducing advertisers to pay to have their activities advertised in association with its broadcast one or more times. Further value may arise from the isolation, reproduction and broadcasting of an image or images, with or without sound, from it, and the licensing of it or an isolated image or images from it, whether by and in a photograph, a film or a video film. What is clear in this case is that value did lie in the copying, reproduction and rebroadcasting of segments, albeit generally fairly brief segments, of the respondents’ programmes. That value had two aspects: it enabled the appellant to gain revenue from advertising associated with The Panel; and it relieved the appellant of the cost of buying or producing other matter to occupy the time taken by the rebroadcasting, during The Panel, of the copied and reproduced segments. The intention of Pt IV Div 2 of the Act was, as the Attorney-General said, broadly not only to place television footage on at least the same basis as other original work, particularly moving films, protected by the Act, but as appears from the language used in it, with necessary adaptations to suit the medium and the means available to competitors to exploit it, and in consequence to create new rights. Why should, it is reasonable to ask, the appellant, save to the extent that it deals fairly with any of the respondents’ valuable broadcasted matter, get it and rebroadcast it for its own commercial benefit, for nothing? The question in this case is whether the Act prevents it from doing that. The use by the appellant of excerpts from the respondents’ broadcasts was blatant. And although blatant appropriation of the kind which has occurred here might not be such as to warrant an evangelical fervour in responding to it, in the nakedly commercial context of television broadcasting in Australia, the test of “what is worth copying is prima facie worth protecting” posed by Peterson J in University of London Press Ltd v University Tutorial Press Ltd has much to commend it, and provides at least a reasonable starting point. After all, in recognising the validity of the respondents’ copyright in excerpts from their programmes, the Court would not be denying access to the general public of the golden words of a new Shakespeare. This is a case of blatant commercial exploitation, neither more nor less. It has always been the respondents’ case that the appellant has infringed both ss 87(a) and 87(c) of the Act. The appellant has never denied that it copied by reproducing in full the respondents’ programmes. It has therefore infringed, on any view, s 87(a) of the Act. As to s 87(c) however, the appellant argues that because it did not rebroadcast other than an excerpt from, that is to say, less, indeed much less than, [40] the whole of any of the programmes of the respondents, it did not rebroadcast “a television broadcast” of the respondents. In short the appellant submits that a television broadcast within s 87 of the Act cannot be less than the whole or a [4.450]

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Network Ten v TCN Channel Nine cont. substantial part of a television programme, notwithstanding that the relevant sections do not anywhere use that term, and the Act attempts no definition of it. The appellant’s proposition, it further argues, is correct because otherwise there is no, or little work for s 14 of the Act to do. I am unable to agree. … That the appellant thought a few seconds of the respondents’ broadcast worth rebroadcasting provides some indication of the understanding in the industry of what is sufficient to constitute a broadcast. Hely J was right to hold that “any of the visual images”, the expression used in s 25(4) of the Act, means a visual image, that is something that can be isolated and fixated. The Act was not enacted in a vacuum of awareness as to how the industry operated, or without regard to practicalities. Those practicalities include the certain knowledge that one television licensee would only seek to use what would be of real value to it: it would have no interest, commercial or otherwise, in anything less than something complete enough in itself to be viewed, in short, a broadcast. In that sense the term “broadcast” is almost self-defining. To regard a broadcast differently, as for example, a “programme”, is not only to introduce a concept not reduced to concrete language or even implied anywhere in the Act, but is also to create a deal of uncertainty about its operation. … [41] … Nothing turns, in my opinion, upon any perceived differences between the quality or nature of the copyright afforded by the Act to television broadcasts and other copyright holders. It was and was intended to be a new and unique right. The medium is very different from others. To exploit it, different and perhaps more expansive infrastructures, fees, techniques and resources are required. The industry is, and has always been in this country, a highly competitive, and, as this case shows, a highly commercialised one. There may have been good reason for the legislature to single it out for special treatment. It is for the Court to give effect to the language of the Act and not to speculate about that. I would dismiss the appeal with costs.

Published editions of works [4.460] “Published editions of works” is a special category under Copyright Act 1968 (Cth)

ss 88 and 92 to protect publishers who make beautiful “special editions” of works (particularly those on which copyright has expired). In the case of works or editions of works, s 29(1)(e) deems “publication” to have occurred if reproductions of a work or edition have been supplied (whether by sale or otherwise) to the public. While “the public” may be very small, even if it consists of only one or two people, it must not be limited to particular classes of people. Thus underground circulation of a politically sensitive work is not publication.

Adaptation of works [4.470] The idea–expression dichotomy implies that certain kinds of uses of another’s work are permissible as long as the forms of expression of the two works remain different. However, free access to a copyright work needs to be qualified in view of the exclusive right under the Copyright Act 1968 (Cth) s 31(1)(a)(vi) to “make an adaptation” of a literary, dramatic and musical work. Note there is no adaptation right for artistic works, or in relation to other copyright subject matter. 142 [4.460]

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Section 10 defines the meaning of adaptation. In relation to literary works, the adaptation right includes an exclusive right to make dramatised versions of non-dramatic forms of literary works. For example, Peter Benchley, as author of the novel (literary work) Jaws, has an exclusive right to adapt it into the form of a film script (dramatic work) Jaws. The adaptation right also includes the reverse situation of making non-dramatic versions of a dramatic form of a literary work. There is also a right to make a version of a work where the story is conveyed solely or principally in pictures, such as in a printed format. Translating a work is also included as part of the “adaptation” right for literary works, (whether or not the work is in dramatic or non-dramatic form). The adaptation right in relation to musical works is a right to make an arrangement or transcription of the work. With respect to computer programs, “adaptation” means a right to make a version of a work, whether or not in the same language, code or expression as the original program. Thus, with literary works expressed as computer programs, an infringement may occur through reproducing the computer program and through making a different version of it, and in both instances the literary expression of an infringing computer work may differ from that of the original computer program. This has led to ongoing confusion over defining the role of the idea–expression dichotomy in relation to computer programs. Adaptation of a computer program

Coogi Australia v Hysport International [4.480] Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154; 41 IPR 593 Federal Court of Australia [See [4.370] for the facts of this case.] DRUMMOND J: … [620] … Do the Hysport programs infringe Coogi’s copyright in its XYZ program? Hysport’s major answer to the charge of infringement of copyright in the Coogi XYZ computer program, however, is that there is no objective similarity between the XYZ and the Hysport programs so Coogi cannot prove an essential element of its infringement claim. Alternatively, it was submitted that if there is such similarity between them, as Professor Goldschlager asserts, and which is revealed by his manipulation of the XYZ program in order to compare it with the Hysport programs, that must be the consequence of such form of expression as is common to both being entirely determined by function. That is, if there is any objective similarity between the forms of expression that constitute the two programs at a particular level of programming language, that is a consequence of it being impossible to write the instructions comprising a program to cause any computer-controlled knitting machine to knit fabric to the XYZ design in any other form because that particular form of expression is wholly dictated by that particular function. … [621] … Despite the criticisms that have been made of the accuracy of the proposition, it is settled law in Australia that copyright protects not the underlying idea, but only the form of expression of the idea. See Autodesk (No 1) at 344-345 and Powerflex Services at 450. It is also the law in Australia that merely because one program performs the same function as another, that is insufficient to make the one an infringement of copyright in the other: Autodesk (No 1) at 344; Autodesk (No 2) at 304 and Powerflex Services at 455. Consistently with this, a computer program can only be an “adaptation” of another when it is “a version of the work”, ie, a version of the particular form of expression of that other in which alone copyright can subsist, and not merely an expression of the idea or function of that other program. [4.480]

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Coogi Australia v Hysport International cont. In Powerflex Services, the Full Court placed a precise and limiting gloss on the statutory definition, holding, at 454, that, while the word “version” in the statutory definition of “adaptation” is used in its ordinary English sense, the legislature intended that it should bear one particular meaning of those which it has in ordinary speech, viz, a translation; at 457 it repeated that “the word ‘adaptation’, as used in s 10, means ‘translation’”. In ordinary usage, the term “version” is applicable to a wider range of renderings of the original literary work than is the term “translation”: a version can apply to as literal as possible a [622] rendering of the original in another language, as well as to a work in the same or another language that is only recognisable as related to the original because that is the identifiable source of the theme of the version. The term “translation” has a much narrower reach. In ordinary speech, Piave’s libretto in Italian for Verdi’s opera “Macbeth” could fairly be called a version of Shakespeare’s play; it could not, however, be properly described as a translation of the English original. … [624] … Translation, as that term is ordinarily used, connotes more than conveying in a different language the same ideas expressed in another language. It describes a closer connection between the original and the translated text than that. I do not think an activity could be described in ordinary speech as a translation unless it involves the expenditure of effort on the original words or text to render them into words or text in a different language that conveys with precision the same meaning as that conveyed by the original. A person can probably be said to make a translation, in the ordinary meaning of that term, indirectly, eg, by translating into English from a French rendering of the original German text. But there can be no translation without the expenditure of effort, directly or indirectly, on the original text. Further, translation into a second language of instructions for achieving a result expressed in another language involves more than describing in the second language some method for achieving that same result: to be a translation, as that term is ordinarily used, of the original instructions, the new text would have to describe the particular sequence of steps for achieving the result that are expressed in the original text. Assume A writes in German a set of instructions for the making of a device, eg, a clock, and that someone uses those instructions to make a clock. B does not make a translation of A’s original instructions by taking the clock, breaking it down into its parts and then writing his own set of instructions in English for reproducing the clock. The reason is that he has not produced his manual of instructions in English by working directly or indirectly (via a translation of the original in a third language) from the original text in German. It is, I think, in this narrow sense which the word “translation” has in ordinary speech that the Full Court in Powerflex Services considered that the definition of “adaptation” applicable to computer programs should be understood. One computer program will therefore be an unauthorised “adaptation” of another firstly, only if the whole or a substantial part of the particular form of expression of the program in which copyright is claimed appears in the allegedly infringing program in a different computer language, either at the same language level or at a different language level and, secondly, only if the allegedly infringing program has been produced by direct or indirect use, in the sense described, of the copyright program. It is a meaning of “adaptation” that is supported by paras 13 and 14 of the Explanatory Memorandum and one which preserves, so far as concerns copyright in computer programs, the function/expression dichotomy that is currently entrenched in Australian copyright law. … [625] … I consider that a computer program will be an infringing “adaptation”, ie, translation, of an original program only if the Court can be convinced that, although the two programs are quite different so far as their forms of expression are concerned, use has been made of the original not just to identify the idea of the original or the function it performs, but as an aid to devising the descriptions of the activities (and any accompanying data) which together comprise the allegedly infringing program. Unless the expression “objective similarity” as used in copyright infringement law is to be given a new, 144 [4.480]

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Coogi Australia v Hysport International cont. highly artificial and technical meaning, instead of the ordinary usage meaning it has hitherto had, so that it will import into infringement law tests like that adopted in the American case, Computer Associates International Inc v Altai Inc (1992) 23 IPR 385 and favoured by the Copyright Law Review Committee Report (Canberra, 1995), para 9.27, it cannot sensibly be employed, in my opinion, in order to determine whether one program is an unauthorised adaptation of another. In my opinion, the F823 program is not an adaptation, in the sense of a translation, of the particular form of expression of instructions that constitutes the Coogi XYZ program. … [626] … I would therefore dismiss Coogi’s claim against all respondents for this reason. … Here, on the view I have taken of the evidence, Shima Seiki, and thus Hysport, never had access to any literary form in which the XYZ computer program was expressed, only to a garment manufactured by running that program in the computer control of a knitting machine. They could never therefore be in a position to make a translation, directly or indirectly, of the XYZ program. Instead, the F823 program and the Hysport programs based on it were the product of the extensive skill and effort of their own which they put into writing those programs. In my opinion, it will never be possible to make out a case that one program constitutes an infringement of another computer program where the purpose of the original is to control the manufacture of an object and the alleged infringer has produced its own computer program to enable it to manufacture a like object by reverse engineering the original object, ie, by analysing it to see how it has been constructed and then by writing its own program to identify the steps that have to be gone through to make the object. I reject Coogi’s submission to the contrary.

DURATION OF COPYRIGHT [4.490] Under the Statute of Anne 1709 (ENG), copyright protection was originally granted

for a term of 14 years – equal to two terms of an apprenticeship. It could be renewed for a further 14 years if the author remained alive. Under pressure from well-connected romantic creators, such as William Wordsworth, who claimed they could not publish in their lifetime as they needed to reserve texts for their family to live off after their deaths, the Literary Copyright Act 1842 (UK) introduced a life-plus term. This allowed copyright protection for life plus seven years, with a maximum of 42 years. Since those times, the duration of protection terms has varied; however the life-plus term model was established as the norm for most original works. The TRIPS Agreement, when it entered into force in 1995, established a virtually universal minimum standard of life of creator plus 50 years in the case of literary and artistic works (except for photographs and works of applied art, which were protected for only 25 years). In the case of performers and producers of phonograms, its declared term of protection was 50 years from date of performance or fixation of the recording. Broadcasts were protected for a period of 20 years from end of the year of broadcast. Until recently Australia generally agreed with the TRIPS Agreement minimum standards, although it extended that standard to include photographs and works of applied art. Where the original work has joint authorship, the relevant date for computation of the protection period is the death of the last surviving author (Copyright Act 1968 (Cth) s 80). The duration of copyright remains tied to the creator’s lifetime, even though ownership may be transferred. [4.490]

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For subject matter other than works, such as film and sound recordings (s 181), and Crown copyright (s 180(1)(b), (3)), protection was originally and generally a term of 50 years from the end of the year of first publication. Unpublished works had indefinite copyright until such time as they are published, at which point the term periods of protection come into effect. The European Union (EU), in 1995, extended the copyright term for its member states to life of the author plus 70 years. This extension does not apply to sound recordings. The change is a consequence of a Directive of the European Commission in 1993 requiring member states to increase their basic term of protection to this standard. Ostensibly, the purpose of the Directive was to harmonise the laws of EU members on the matter of term, as national laws ranged from between life plus 50 years (the minimum Berne Convention requirement), life plus 60 years (Spain) and life plus 70 years (Germany). The United States also extended the term of copyright protection in line with the European move with the passing of the Sonny Bono Copyright Term Extension Act 1998 (US). Sonny Bono, from the 1970s pop group and variety hour television show Sonny and Cher, believed copyright should last forever. As a Florida senator, he introduced the American legislation. Critics of the term extension argue that the effect of expanding the copyright term is to prevent valuable copyright works – for example, Disney’s Mickey Mouse – from falling into the public domain, but without any “incentive” effect leading to greater creative activity. While expansion of the copyright term in the interest of “harmonisation” has a level of support within Australia, as a net importer of copyright material, this would have a detrimental effect on balance of trade figures since payment for material that would otherwise be in the public domain would be required. A number of changes to Australia’s terms of protection were made pursuant to the Australia–US Free Trade Agreement coming into effect on 1 January 2005. Under this Agreement, copyright duration was generally extended to 70 years from the end of the year of the death of the creator or when the material was first published. Copyright does not revive for works in which copyright had expired under the Copyright Act 1968 (Cth). However, photographs are now entitled to protection for the term of the life of the author plus 70 years. Rather incongruously, performances remain protected for only 20 years, although performers now also have economic rights in relation to authorised sound recordings of their performances. Determining whether a work is within or out of copyright can be problematic and rather complex. The term of protection for different kinds of works can vary depending on the applicable legislative provision. For example, it will require translating a piece of music into the respective rights that attach to the literary and musical works, and to the sound recordings. These will most likely belong to different parties. It will then require knowledge of the date of first publication or date of the death of the author for each of the rights, and knowledge of the various applicable statutory schemes that have applied. In some instances, some rights may have expired, but not all of them.

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[4.500]

TABLE 4.1 Duration of copyright Duration of Copyright Copyright Act section s 33(2)

Subject matter

Duration

Published literary, musical, dramatic and artistic works etc Unpublished or non-performed literary, musical, dramatic works at time of author’s death Unpublished engravings at time of author’s death Anonymous and pseudonymous works Sound recordings Unpublished films

From time made to 70 years after end of year of author’s death 70 years after first publication, performance, broadcast or public offering 70 years after first publication

s 33(5)

70 years after first publication

s 34(1)

70 years after first publication From time made to 70 years after first publication 70 years after year of first publication 50 years after year of first made 25 years after year of publication From time made to 50 years after year of first publication 50 years after year made

s 93 s 94(1)

50 years after year of first publication 50 years after year of first publication 70 years after year of first publication 70 years after year of first publication 25 years after year of first publication 20 years after year of first performance 50 years after first performed

s 180(3)

Published films Television and sound broadcasts Published editions of works Literary, dramatic and musical works subject to Crown copyright Artistic works subject to Crown copyright Engravings and photographs subject to Crown copyright Sound recordings and films subject to Crown copyright Works by international organisations Sound recordings and films made by international organisations Published editions made by international organisations Performances Sound recording of a performance

s 33(3)

s 94(2) s 95 s 96 s 180(1) s 180(2)

s 181 s 187 s 188(1) s 188(3) s 248CA(1) s 248CA(3)

Overlap between copyright and circuit layouts legislation [4.510] It is ordinarily said that there is no dual protection between the Circuits Layouts Act 1989 (Cth) and the Copyright Act 1968 (Cth) or Designs Act 2003 (Cth). This is true in the sense that those aspects of the design for a circuit or the circuit itself which give rise to “eligible layout” rights are not the subject matter of the copyright or designs systems. However, a computer chip as a memory device can hold or store “embodiments” or “aggregations” of information that are works or subject matter other than works within the meaning of the [4.510]

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Copyright Act 1968 (Cth). This question was addressed by the Australian courts on two occasions. In Avel Pty Ltd v Wells (1992) 23 IPR 353 at 362, the court said: [A] chip, that is to say an integrated circuit, may embody two different subject matters of protection: a circuit layout and a copyright work. The subject of copyright protection, usually a computer program, has protection only under one Act, namely the Copyright Act. A person importing a chip into Australia having purchased it as a result of a commercial exploitation abroad does not obtain as a result of s 24 or any other section of the Layouts Act the right to reproduce the computer program. To do so would remain an infringement of the Copyright Act. All that subs (2) of s 24 ensures is that the commercial exploitation of the chip in Australia will not be hindered in such a case, provided that the making of a copy or adaptation of the work stored in the chip and otherwise the subject of copyright protection did not constitute a copyright infringement.

In Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1996) 35 IPR 161, Burchett J held that certain computer games, “Virtua Cop” and “Daytona USA”, which were stored in integrated circuits imported into Australia, were “cinematographic films” within the meaning of the Copyright Act 1968 (Cth). His Honour rejected an argument that the fact that these games were stored within a computer meant that they should find protection, if at all, in the Circuits Layouts Act 1989 (Cth). His Honour stated (at 168): The fact that there are here integrated circuits and that these give rise to the application of particular statutory provisions, does not subtract from the further and relevant fact that the use of the integrated circuits is capable of bringing to the screen, so as to be shown as a moving picture, the aggregate of visual images making up Virtua Cop. That attracts the operation of the provisions of the Copyright Act in respect of cinematographic films.

In the recent case of Acohs Pty Ltd v Ucorp Pty Ltd [2010] FCA 577 before the Federal Court, the court was asked to determine whether Ucorp had breached copyright by reproducing in a material form utilising source codes in which Acohs claimed copyright, and electronic information sheets on hazardous substances and dangerous goods (MSDSs). Acohs and Ucorp prepared and supplied MSDSs (material safety data sheets) respectively: Acohs prepared MSDSs by way of a central database and a software program through which Acohs employees entered the appropriate data, while Ucorp supplied MSDSs to subscribers by providing access to an electronic library containing MSDSs created by Ucorp as well as existing MSDSs downloaded from the internet. While Jessup J found that the source codes could be “literary works” within the meaning of the Copyright Act 1968 (Cth), they were not original literary works as they were generated by a computer software program manipulating raw data, rather than created by a human author or authors. Accordingly, copyright did not subsist in them. Jessup J also rejected Acohs’ assertion that the source codes were works of joint authorship between the computer programmers who originally wrote the software and its employees who entered the MSDS raw data pursuant to s 10 of the Act. His Honour found (at [59]): In short, the respective contributions of the programmers and the authors/transcribers to the source code for a particular MSDS were separate each from the other along the axes of communication, time, expertise and content. Only by a quite artificial straining of the language … might those contributions be regarded as a matter of collaboration in the statutory sense. I do not consider that the source code for any of the MSDSs on which Acohs sues was a work of joint authorship.

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Circuit layout litigation in Australia [4.520] During the period in which the Circuit Layouts Act 1989 (Cth) has been in force there

have been only a limited number of relevant reported cases. They include Brooktree Corp v Advanced Micro Devices Inc (1998) 14 IPR 85 (a copyright case); Avel Pty Ltd v Jonathan Wells (1991) 22 IPR 305; Avel Pty Ltd v Wells (1992) 23 IPR 353; Nintendo Co Ltd v Centronics Systems Pty Ltd (1991) 23 IPR 119; Centronics Systems Pty Ltd v Nintendo Co Ltd (1992) 24 IPR 481; Nintendo Co Ltd v Centronics Systems Pty Ltd (1994) 28 IPR 431; Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1996) 35 IPR 161. These cases involved either gambling machine chips or computer game chips. There are several possible explanations for the low level of attempted enforcement through court action. One is that the possibility of litigation has discouraged infringement. Another is that rights owners are able to use the threat of litigation to successfully resolve any dispute. Yet another possibility is that it is simply not worthwhile to copy chips of leading manufacturers directly because of the costs and difficulty in reproducing the process technology. Genuine chips are readily available and cheap for nearly all applications. If this last explanation is the major reason, it may be that the copying of chips is not, in fact, the significant problem it was feared it would become. Another possibility is that most protection for computer technology is achieved through the Copyright Act 1968 (Cth), and litigation tends to rely on that Act.

Overlap between copyright and designs legislation [4.530] In certain circumstances, artistic works may be protectable under both copyright and

design law (currently the Designs Act 2003 (Cth)). This potential overlap may occur, for example, where a two-dimensional architectural design or a three-dimensional sculpture or model may satisfy the definition of an artistic work for copyright purposes, and may also satisfy registration requirements under the designs legislation. Without some limiting provisions, dual statutory recognition creates the undesirable potential for a design to be protected for 70 years or more under copyright provisions instead of the maximum 10 years under designs legislation. General policy strategy in respect of the copyright and designs overlap is that artistic works that are commercially exploited or “applied industrially”, should be denied copyright protection and rely on the designs legislation for protection. The Copyright Act 1968 (Cth) ss 74 – 77A are designed to minimise this overlap by recognising a “corresponding design” as being: … in relation to artistic work, … visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work, whether or not the visual features constitute a design that is capable of being registered under the Designs Act 2003.

By virtue of being “embodied” – that is, woven into, impressed on, or worked into the product – overlap occurs where the corresponding design becomes three-dimensional. The Copyright Act 1968 (Cth) s 77(4) defers to the Copyright Regulations 1969 (Cth) to specify the circumstances in which a design is taken to be applied industrially; the Copyright Regulations 1969 (Cth) reg 17 stipulates that a design is deemed to have been applied industrially where it is applied to 50 or more articles. Hence, two situations arise where copyright protection will no longer apply to an artistic work; namely, where a corresponding design has been industrially manufactured or commercially made, and where a corresponding design has been registered under designs legislation. See Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 120; Gold [4.530]

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Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd [2005] FCA 1521; Burge and Others v Swarbrick [2007] HCA 17; 72 IPR 235; Polo/Lauren Co LP v Ziliani Holdings Pty Ltd (2008) 80 IPR 531, [2008] FCAFC 195; Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85. In the recent case of Seafolly Pty Ltd v Fewstone Pty Ltd (2014) 106 IPR 85, before the Federal Court, the applicant, which designs, manufactures and sells swimwear and beachwear, alleged that the respondent (trading as City Beach Australia) which also designs, manufactures and sells swimwear and beachwear, had infringed its copyright in three artistic works. The action proceeded under a number of sections of the Copyright Act 1968 (Cth), including ss 74, 75 and 77 in respect of “corresponding designs”. The respondent contended that certain design elements in the “Senorita” garment was a three-dimensional embodiment of the artwork which was woven into, and had become part of, the “Senorita” garment structure. Accordingly, artwork applied to the fabric used to make garments was a “corresponding design” for the purposes of Copyright Act 1968 (Cth) s 74(1) and thus infringement had not occurred. His Honour held that the “Senorita” diamond pattern embroidery design was not embodied in the “Senorita” garments because the garments did not embody the features of shape or configuration of the underlying artwork. Rather, it was included as a constituent element. Therefore, the “Senorita” artwork was not a corresponding design within the meaning of Copyright Act 1968 (Cth) s 74 and City Beach was unable to rely on a defence to copyright infringement pursuant to Copyright Act 1968 (Cth) s 77: at [466], [470]–[472], [483].

Sheldon & Hammond v Metrokane [4.540] Sheldon & Hammond Pty Ltd v Metrokane Inc (2004) 135 FCR 34 Federal Court of Australia CONTI J: [36] … This litigation has its origins in a corkscrew product called Rabbit, the development whereof was initiated in the United States of America, in or about September 1997 by the Respondent/Cross-Claimant Metrokane Inc (“Metrokane”), a company established in 1983 in the United States. Metrokane conducts the business of designing and selling unique houseware products … In about October 1997, Metrokane engaged Edward Kilduff, (“Mr Kilduff”) being the second cross-claimant and a citizen of the United States, and then associated informally with Daniel Winigrad (“Mr Winigrad”) … to develop a new design for a corkscrew having a lever-action. His instructions were to produce a design which would be refined and elegant yet be “utilitarian and homely”. It was also to have award winning aesthetics, with a distinctive design and an aesthetically visual appeal, rather than something merely utilitarian and functional … The mechanism of the corkscrew was to be based upon the technical principles of a patent for lever action corkscrews, owned by the multinational manufacturer Le Creuset, which was due to expire in July 1999. The trade name of the Le Creuset corkscrew was and apparently still is Screwpull. Mr Larimer informed Mr Kilduff that he expected that a number of lever-action corkscrews would be produced and arrive on the market after the expiry of that patent … [38] … Mr Kilduff said that he oversaw the design and assembly in the factory in China, in order “… to make sure it is what I had in mind”. Although the Rabbit corkscrew is a so-called “functional or utilitarian article”, Metrokane’s case was that the same had nevertheless “real aesthetic qualities”. The design of the Rabbit corkscrew received the following two awards in 2001: (i)

150

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Sheldon & Hammond v Metrokane cont. (ii)

The Good Design Award from the Chicago Athenaeum Museum for “The World’s Best and Most Innovative New Product Designs”. The IDSA press release described the Rabbit corkscrew as having “… an ergonomic design that sets a new standard for ease of use without sacrificing beauty”. … [47] …

The controversy as to boundaries of statutory protection of copyright and designs S & H drew attention to what was described as the enigma of the so-called copyright/design “overlap” protection provisions, in support of a contention that s 77 could not sensibly have been intended, as a matter of legislative intention, to permit an article, said by S & H to be registrable under the Designs Act, to secure so much longer protection as an artistic work under the Copyright Act. [49] … It is … apparent that the presence within s 77 of the undefined expression “artistic craftsmanship” has left open for the Courts to determine its parameters. So much was in effect acknowledged by the Gregory Committee Report of 1953 in the following terms: It is clear that some protection of this kind is required to cover works of art other than such things as works of painting, drawing and sculpture, which are mentioned by name. We are here concerned not with articles manufactured under conditions of ordinary industrial production (artistically meritorious as many of these are) which can secure their own appropriate protection under the Registered Designs Act, but with the works of craftsmen working in many media (silversmiths, potters, woodworkers, hand-embroiderers and many others) in circumstances for which that Act does not provide appropriate protection. We do not think it will be questioned that original works of the kind we have in mind are fully entitled to protection and but for the Copyright Act this would be lacking. We believe that copyright provides the proper basis for protecting these works and to ensure this protection we believe that it is necessary to retain the term “works of artistic craftsmanship” in the Act. It is by no means certain that full preliminary sketches or drawings are prepared for all kinds of articles made by the craftsman (in which case copying the article itself might infringe copyright as a reproduction of the sketch), or, even where there is a full design, that the finally finished article as it leaves the craftsman’s hands would unquestionably be regarded in every case as a reproduction of that copyright design. In these circumstances the only safe way to ensure protection is by making specific mention of this class of work. In doing so, it will be necessary, we believe, to retain the word “artistic” in conjunction with “craftsmanship”, but we do not believe it is practicable to draft a statutory definition equally applicable to each of the whole range of activities and of the varieties of materials used. Faced with these almost endless possibilities we feel that, as now, the decision in doubtful cases must be left to the courts to decide on the facts before them, and we recommend that while the protection given to “works of artistic craftsmanship” should remain, the term should not be defined in the Act. It would appear that the copyright protection which Metrokane seeks to enforce in the present proceedings is conceptually beyond the scope of what was envisaged by the Gregory Committee Report, unless Metrokane could establish its claim as one of the “doubtful cases” which the Report seemingly had in mind. To that observation I would add reference to dictum in Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR 65 at 97, where Gummow J, with whom Black CJ and Lockhart J agreed, said as follows, in terms of the distinction between the principles of protection respectively afforded by the general law as to copyright, designs and patents: It is well established that in copyright law originality is a concept distinct from novelty in design law and patent law and from obviousness in patent law. Whilst the author of what is claimed to be an original artistic work must have expended a significant amount of his skill and labour, “originality” does not mean novelty or uniqueness and does not require inventiveness in the sense of patent law … The degree of skill and labour required of the artist will vary with the nature of the work. My resolution of the issue as to whether the Rabbit corkscrew constituted a work of artistic craftsmanship [4.540]

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Sheldon & Hammond v Metrokane cont. … There is something antithetical in the notion of a manufacturer gaining exclusive protection of a mass-produced article by way of copyright, for a period of time substantially longer than that provided by statute law in relation to designs and patents. The circumstances of the present case exemplify the kind of conceptual enigmas which may thus arise. Inferentially essential to the purpose of creation and distribution of this mass-produced Rabbit corkscrew is its function as a corkscrew based upon its lever-action mechanism being the same as or virtually identical to the celebrated Le Creuset mechanism the subject of recently expired international patent protection. No member of the public would have sensibly purchased the Rabbit corkscrew, I would infer, in the absence of its mechanism, or in other words, would have purchased the same merely to enjoy the sight and feel of its handle or body structure, attractive as they may be. The emphasis of the Australian authorities, to which I have earlier referred, is upon the object of the author in purportedly creating a work of artistic craftsmanship, rather than upon the reaction of the viewer to the completed work, the merit or otherwise thereof being immaterial for qualification within that statutory description. That emphasis also appears from what I have cited from the speeches in the House of Lords in Hensher of Lord Reid and Lord Simon. Moreover the related theme as to the inappropriateness of the courts making aesthetic judgments also appears in what I have cited from the speeches in Hensher of Viscount Dilhorne, Lord Simon and Lord Kilbrandon, and has been similarly emphasised in the Australian authorities which I have reviewed, and to which I would add reference to the opening observation in the judgment of Hill J, as a member of a Full Federal Court, in Schott Musik International GMBH & Co v Colossal Records of Australia Pty Ltd (1997) 75 FCR 321 at 325. I am unable to accept the submission of Metrokane that the object of Metrokane in creating the Rabbit corkscrew was for a sole or dominant purpose of creating a work of artistic craftsmanship per se. … [81] … As I have already inferred, the motivation of Metrokane in manufacturing the Rabbit corkscrew originated in the pending expiration of the Le Creuset patent relating to what appears to have been a somewhat sophisticated corkscrew mechanism. It could not sensibly be postulated, nor was it postulated, that consumers would buy the Rabbit corkscrew without that mechanism. The attraction to consumers, I would infer, has been to acquire an efficient corkscrew mechanism contained within an attractively presented framework. The present circumstances are thus distinguishable from those in Coogi. The manufactured fabric there involved would have been purchased by consumers for use as clothing per se, and not as a framework for an every day consumer facility. … What is here claimed to reflect “the main object of appealing to the aesthetic tastes of those who view it”, to cite further from Cuisenaire, consists only of the body or framework of something which would not be acquired by a consumer, at least in the normal course, without the working parts installed within that framework. It is in that respect that I think there is something to be said in favour of the contention of S & H to the effect that the law of copyright should not be afforded an “overlapping” operation, notwithstanding that I have not given effect to that contention. The objective of Metrokane in creating the Rabbit corkscrew may be described, perhaps repetitively, as the reproduction in attractive clothing of the mechanism of an expired, and apparently well known patent earlier developed by a third party (Le Creuset), with a view to mass production for the sole purpose of substantial profit-making by sale. That objective appears to have been achieved. … [83] … In the result, as a judge of fact at first instance, I would reject the characterisation of the Rabbit corkscrew as a work of artistic craftsmanship.

152 [4.540]

CHAPTER 5 Copyright: Ownership, Rights and Exploitation [5.10] [5.10]

EXCLUSIVE RIGHTS PROVIDED BY COPYRIGHT ................................................. 154 Economic rights ..................................................................................................... 154

[5.20] [5.20] [5.30] [5.40] [5.50] [5.70]

MORAL RIGHTS ...................................................................................................... 156 Moral rights ............................................................................................................ 156 Duration of moral rights ....................................................................................... 157 Performers’ rights and moral rights ..................................................................... 157 Film directors, screenwriters and producers’ rights and moral rights .............. 158 Performer or author of musical works ................................................................. 158 [5.70]

Hadley v Kemp ...................................................................... 158

[5.80] [5.90]

AUTHORSHIP OF WORKS ...................................................................................... 163 Joint authorship and ownership ........................................................................... 164

[5.110]

Joint ownership ...................................................................................................... 165

[5.100] [5.120]

Prior v Lansdowne Press ........................................................ 164 Primary Health Care v Commissioner of Taxation .................... 166

[5.130] [5.130] [5.140]

NON-AUTHORS ..................................................................................................... 169 Commissioned works ............................................................................................ 169 Journalists’ copyright ............................................................................................. 170

[5.160]

Employment: Contract of service or apprenticeship .......................................... 173

[5.150] [5.170]

[5.200]

Redrock Holdings v Adam Hinkley ........................................... 179

Community ownership ......................................................................................... 182 [5.230]

[5.240]

University of Western Australia v Gray .................................... 175

Employee or independent contractor? ............................................. 178 [5.210]

[5.220]

De Garis v Neville Jeffress Pidler .............................................. 171

John Bulun Bulun v R & T Textiles ........................................... 182

CROWN COPYRIGHT ............................................................................................ 187 [5.250]

Copyright Agency v New South Wales ..................................... 188

[5.260]

EXPLOITATION ....................................................................................................... 190

[5.270]

ASSIGNMENT ......................................................................................................... 191

[5.290]

Effect of assignment .............................................................................................. 196

[5.300]

LICENSING ............................................................................................................. 196

[5.320] [5.330]

Exclusive licence ..................................................................................................... 200 Implied licences ..................................................................................................... 200

[5.280]

[5.310]

[5.340] [5.360]

[5.370] [5.380] [5.400]

Wilson v Weiss Art ................................................................. 192

Seven Network (Operations) v TCN Channel Nine ................... 197

Gruzman v Percy Marks ........................................................ De Garis v Neville Jeffress Pidler .............................................. Compulsory licence ............................................................................................... The Copyright Tribunal ......................................................................................... [5.390] Re Phonographic Performance Company of Australia ............... Collecting societies ................................................................................................ [5.420] Resale Royalty Right for Visual Artists Act 2009 (Cth) ...............

201 203 205 205 206 208 209 153

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[5.430]

PARALLEL IMPORTING ........................................................................................... 211 [5.440]

[5.460] [5.460]

Ozi-Soft v Wong .................................................................... 212

RESALE ROYALTY RIGHTS ...................................................................................... 217 Resale Royalty Right for Visual Artists Act 2009 .................................................. 217 [5.470]

Resale Royalty Right for Visual Artists Act 2009 (Cth) ............... 218

EXCLUSIVE RIGHTS PROVIDED BY COPYRIGHT Economic rights [5.10] The right enjoyed by the holder of a copyright in a work or other subject matter is an exclusive right to do something with the work or other subject matter. Thus it is essentially a right of economic exploitation. Although the Copyright Act 1968 (Cth) also provides for other forms of right – that is, the moral rights of attribution and recognition – they are in essence a secondary addition to the Act, having only being introduced in 2000 by the Copyright Amendment (Moral Rights) Act 2000 (Cth). The Copyright Act 1968 (Cth) s 31 lists the rights relating to original literary, dramatic, musical and artistic works, while ss 85 – 88 list the rights relating to other subject matter, such as, sound recordings, cinematographic films, television and sound broadcasts and published editions of works. In respect of works that come within Part III – Original Literary, Dramatic, Musical and Artistic Works, the owner (although this term is not actually used) has the exclusive right to do the following s 31(1)(a):

(a)

in respect of a literary, dramatic or musical work, to (s 31(1)(a)): • reproduce the work in a material form; • publish the work; • perform the work in public; • communicate the work to the public; • make an adaptation of the work (to which the above rights would also apply); • enter into a commercial rental arrangement for sound recording of the work.

(b)

In respect of a computer program, to enter into a commercial rental arrangement (s 31(1)(d)):

(c)

In respect of an artistic work, to (s 31(1)(b)): • reproduce the work in a material form; • publish the work;

• communicate the work to the public. In respect of works that come within Part IV – Subject Matter Other Than Works, the owner (although this term is not actually used) has the exclusive right to do the following (ss 85 – 89): For subject matter other than works, the exclusive rights include the following (ss 85 – 89): (a)

in respect of sound recordings, to (s 85): • make a copy of the sound recording; • cause the sound recording to be heard in public; • communicate the sound recording to the public;

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• enter into a commercial rental arrangement in respect of the sound recording; (b)

in respect of cinematographic films, to (s 86): • make a copy of the film; • cause the film to be seen or heard in public; • communicate the film to the public;

(c)

in respect of television and sound broadcasts, to (s 87): • insofar as it consists of visual images, make a film of the broadcast or a copy of such a film; • insofar as it consists of sounds, make a sound recording of the broadcast or a copy of the sound recording; • in either case, to re-broadcast it or to communicate it to the public other than by broadcasting it.

(d)

in respect of published editions of a work, to make a facsimile of the edition (s 88). In respect of Performances, Part XIA recognises some level of protection for performers. Prior to amendments to the Copyright Act 1968 (Cth) in 2004, performers gained virtually no protection for their live performances, although playwrights, composers, set designers and choreographers acquired copyright protection for their work. If the performance was recorded the copyright belonged to the maker of the recording. The unsatisfactory convention was that performers relied on some form of protection through a contractual arrangement with the producer or entrepreneur. The limited form of performers’ rights was not proprietary in nature, and only lasted for 20 years. Consequent upon changes arising from the AustraliaUnited States free trade agreement, as given effect by the US Free Trade Agreement Implementation Act 2004 (Cth), performers now have proprietary rights over their performances. Section 248CA(1) provides for a period of protection of a performance for 20 years beginning on the day the performance was given and ending at the end of the 20th calendar year. Section 248CA(3), however, provides a period of protection of 50 years in the case of a sound recording of the performance. Hence performers may enjoy similar exclusive rights as other owners of recordings. These changes are also retrospective to 1994. A performer may: • refuse any request to allow a performance to be taped, recorded or filmed; • stipulate, as a condition of entry to a performance, that any taping, recording or filming done is to be used for domestic and non-commercial purposes only; • negotiate a contractual arrangement with anyone filming, taping or recording for commercial purposes with regard to any or all subsequent uses of the filmed, recorded or taped material. Note also that a person who records a performance may be infringing on the rights of the writer or musician who wrote the work being performed. The inclusion in the definition of performance in s 248(1) of an expression of folklore has significance, since it may extend protection to certain indigenous performers and groups whose work has not otherwise been reduced to material form. The definition of performance also includes provision that a live performance does not necessarily need to be in the presence of a performance. [5.10]

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MORAL RIGHTS Moral rights [5.20] Moral rights are rights which an author, artist or creator possesses, and retains even after the right to exploit the copyright in the work (the economic rights) has been transferred. They are personal rights which cannot be transferred or sold. They give the author or artist the right to be credited as the creator of a work, and to restrain derogatory treatment of it which might affect their honour or reputation. It is only relatively recently in Australian law that there has been any consideration of copyright as encompassing personal, non-economic rights, known as moral rights. To some extent, this reflection has been prompted by the requirements of international treaties to which Australia belongs, beginning with the fact that Australia is a signatory to the Berne Convention, which, in Article 6bis, sets up an obligation for members to protect the rights of “paternity” and “integrity”. However, Article 6bis and moral rights were explicitly excluded from the TRIPS Agreement. Traditionally, copyright laws in Australia were only concerned with economic rights. They did not prevent work being distorted, mutilated, or used in an insulting, prejudicial or offensive way. Nor did they protect a person’s right to be recognised as the creator of the work. Moral rights were finally introduced in December 2000 by the Copyright Amendment (Moral Rights) Act 2000 (Cth). Part IX of the Copyright Act 1968 (Cth) is headed “moral rights of performers and of authors of literary, dramatic, musical, or artistic works and cinematographic films”. It now makes provision for the following moral rights:

• the right of attribution – an author’s right to be identified as the author of a work (ss 193-195AB); • the right to take action against false attribution by another (s 195AC-AH); and • the right of integrity – the right to object to derogatory treatment of a work which prejudicially affects the author’s honour or reputation (s 195AI-AW). Under the right of attribution, the creator’s right to recognition as creator of a work consists of four sub-rights, which are to: (a)

be known as the creator of a work;

(b)

prevent others from claiming to be the creator of a work;

(c)

prevent the false attribution of works to the creator; and

(d) prevent attribution to the creator of unauthorised altered versions of a work. The right of integrity is the creator’s right to object to derogatory treatment of a work, and covers both changes made to the work itself (ie, distortion, mutilation or other modification of the work), or the manner in which the work is presented. Section 193 stipulates in particular that “the moral rights of an author of a work are in addition to any other rights in relation to the work ...”, while s 195AN(3) emphasises the personal nature of the right by stipulating that “a moral right in respect of a work is not transmissible by assignment, by will, or by devolution by operation of law”. Moral rights apply to all works, except films, that existed on 21 December 2000 and which are still protected by copyright, as well as to all works, including films, that were created after that date. With the exception of the right of integrity in film, moral rights normally last as long as the author’s economic rights. Authors can consent in some circumstances to an act or 156 [5.20]

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omission which would otherwise constitute a breach of moral rights (ss 195AW, AWA and AWB), but there is no scope for an enforceable generalised waiver outside the scope of these provisions. Only individuals can possess moral rights (s 190). Thus, for example, where a body corporate was the producer of a film, only the director or screenwriter could exercise moral rights. It also means that an Aboriginal clan that traditionally owned a design or painting could not exercise moral rights if that painting was shown in a derogatory manner, without designating or deferring that right to an individual member. However, it is possible to consent to subsequent uses of copyright material that may offend the moral rights, but the owner of a work may not have the right to alter a work against the wishes of the creator. This could have implications for the use of material that is taken from its traditional form and written into material that is used for teaching and learning contexts in the digital environment. Generally, the courts will provide guidance as to what is acceptable use that will not infringe the moral rights in copyright material. More generally, in determining infringement of the rights of integrity and attribution in relation to works, ss 195AR and 195AS provide for consideration of the reasonableness of the acts or omissions done in relation to the work, as well as industry and voluntary codes of practice. One of the recommendations of the Report of the Contemporary Visual Arts and Craft Inquiry (2002) (Myer Report) related to indigenous communal moral rights. In 2003, the Federal Government indicated it would introduce amendments to the Copyright Act 1968 (Cth) to provide indigenous communities with the right to take action against inappropriate, derogatory or culturally insensitive use of creative works embodying traditional community knowledge and wisdom. The Copyright Amendment (Indigenous Communal Rights) Bill 2003 (Cth) was introduced, but was criticised as being unlikely to deliver its intended benefits to indigenous communities. The legislation never eventuated.

Duration of moral rights [5.30] Under the Copyright Act 1968 (Cth), an author’s moral rights in respect of a literary or

artistic work exist until copyright ceases in the work, while an author’s moral rights in respect of a film continue until the author dies (s 195AN). A performer’s right of attribution (or false attribution) in respect of a performance continues until copyright ceases to subsist in the performance, while the right of integrity continues until the performer dies (s 195ANA).

Performers’ rights and moral rights [5.40] A performer’s right is a “neighbouring right” to copyright or author’s rights and originally was not a full property right, in that the rights were personal to the performer and could not be assigned. Further, the performer’s right is not, in fact, a “copyright” in the traditional meaning, since protection of an actual performance not fixed in some permanent form goes beyond the nature of protection conferred by the rest of the Copyright Act 1968 (Cth). Copyright in a sound recording of a live performance supplements the existing performer’s rights to prevent unauthorised recordings of a performance of a dramatic, literary or musical work or improvisation thereof, a dance, circus act, variety act or similar presentation. Further, since 2004, the definition of “performance” has been expanded by the Copyright Act 1968 [5.40]

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(Cth) s 248A(1)(f) to include an “expression of folklore”. However, it is worth noting that “folklore” is a term generally not used in the context of indigenous traditional knowledge and cultural heritage – the widely adopted term is indigenous cultural intellectual property (ICIP). In addition to copyright in performances, performers also enjoy moral rights in their live performances and recordings thereof under the Copyright Act 1968 (Cth) Part IX. These additions arose out of obligations under the Australia–US Free Trade Agreement designed to ensure more perfect adherence to the World Intellectual Property Organization’s WIPO Performances and Phonograms Treaty (1996). The US Free Trade Implementation Act 2004 (Cth) has also been responsible for the introduction of the term “performership” into Copyright Act 1968 (Cth) Part IX – meaning “participation in a performance as a performer or one of the performers” (s 189). Performers’ moral rights are akin to those granted to authors, namely: • the right of attribution of performership (which must be clear and reasonably prominent or reasonably audible) (s 195ABD); • the right not to have a performance falsely attributed (which includes an altered recorded performance) (ss 195AHB(1) and 195AHC(1)); and • the right of integrity of performance.

Film directors, screenwriters and producers’ rights and moral rights [5.50] In the context of the Copyright Act 1968 (Cth) Part IX, “author” in relation to a cinematographic film means the maker of the film (s 189). “Maker” is further defined in the same section as “in relation to a cinematographic film, … the director of the film, the producer of the film and the screenwriter of the film”. However, s 22(4) of the Act provides that, for the purpose of the Act, a reference to the making of a cinematographic film shall be read as a reference to the doing of the things necessary for the production of the first copy of the film, while the maker is the person by whom the arrangements necessary or the making of a film were undertaken. In effect, this means that the moral rights in a film could be vested in the producer, director or screenwriter provided, of course, that the entity is a person, and not a body corporate or other organisation.

Performer or author of musical works The following extract from the case of Hadley v Kemp [1999] EMLR 589 not only illustrates issues in respect of performers’ moral rights, but also joint authorship and communal ownership and the principle of “material form”.

Hadley v Kemp [5.70] Hadley v Kemp [1999] EMLR 589 High Court of Justice, Chancery Division (United Kingdom) PARK J: [593] … The plaintiffs, Mr Tony Hadley, Mr John Keeble and Mr Steve Norman, were three members of a former pop group, Spandau Ballet. In this case they are suing a fourth member, Mr Gary Kemp, and Reformation Publishing Company Ltd, a company owned by him. They have a main case, which I will call “the contractual claim”, and an alternative case, which I will call “the copyright claim”. … The copyright claim, their alternative argument, was first advanced in 1998. The plaintiffs contend that, contrary to what everyone had believed before then, Mr Kemp and his company, Reformation, were not the sole owners of the copyrights in the band’s songs. Rather they now say either that they 158 [5.50]

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Hadley v Kemp cont. were all joint owners with Mr Kemp of the copyrights in all the songs, or that one or more of them were joint owners with him of some or all of the copyrights. They also say that, if they are right, this gives them rights to receive large amounts of money from Reformation. … [639] … N3. The copyright claim: the facts and the evidence Records, CDs and other forms in which recorded songs are marketed to the public always identify the writers of the music and the lyrics. I believe that Spandau Ballet recorded something like 60 tracks, which were split between six albums and a number of singles. On all except one of them the credit for writing the music and the lyrics was accorded to Gary Kemp. All the plaintiffs thought at the time that that was right. … To describe Gary Kemp as the “writer” of the music could be misleading without adding a little explanation. As I have said once or twice already he did not write the music down on paper. We have all seen imaginative sketches of the great classical composers of the past sitting at their desks in what one imagines might be an attic, quill pens in hand and sheafs of musical paper before them, writing out their compositions by hand. Popular music is not usually created that way, and Gary Kemp did not create his music that way. He composed at home, with a guitar and sometimes a piano. In this way for each song he developed, and fixed in his musical consciousness, the melody, the chords, the rhythm or groove, and the general structure of the song from beginning to end. Usually at the same stage he wrote the entire lyrics for the song. When Mr Kemp had created a song in this way, and not before then, he presented it to the other members of the band. Usually this happened in a rehearsal studio. Mr Kemp played the complete song on an acoustic guitar, and sang it. A process then followed of rehearsals leading into recording. At the rehearsal stage the members of the band [640] learned the song, interpreted it on their own instruments, practised and perfected the playing or (in Mr Hadley’s case) the singing of their own parts, and rehearsed the performance of it as an ensemble. They did these things aurally, and without music sheets setting it all out in musical notation. As Mr Kemp said in evidence: “We can talk music to each other. All popular music is achieved in that way.” At the recording stage they moved from the rehearsal studio into the recording studio (which was much more expensive). They were joined there by the record producer and technicians, and the definitive recording was made. Invariably there would be several takes of the same song, and the master recording to be delivered to the record company would be a composite put together by the record producer (or under his supervision) from the whole series of takes. … I need to say more about the rehearsals, but I think that it might be useful for me first to say what did not happen. What did not happen was a process such as was described by the judge (Thomas Morison QC, as he then was) in Stuart v Barrett [1994] EMLR 448 at p 455: The plaintiff says that he can remember that there was a moment when they stopped playing and the second defendant played a riff on the guitar and looked towards him as though tacitly inviting the plaintiff to put something to support what he was playing. He tried different drum beats and ended up with an off-beat drum pattern which seemed to fit well; and the others joined in, embellishing and changing octave. By the end of the session they had a completed piece of music without words, which became the song “The Outsider”. This kind of collective creation of a song is often referred to as “jamming”. It is not the way that Spandau Ballet did things. I suspect that, [641] before the evidence, Mr Sutcliffe entertained hopes on behalf of the plaintiffs that it might appear to me that, although Gary Kemp started the process off, the band’s songs emerged from a process of collective jamming such as Mr Morison described. [5.70]

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Hadley v Kemp cont. In my view, however, that is not borne out by the evidence. There are two specific points which I wish to make. First, both at rehearsals and in the recording studio Gary Kemp was in charge. His own evidence was that they were not a democratic band; they were a hierarchy and people would listen to him where music was concerned. Mr Keeble said that it was more organic than Mr Kemp said, but he accepted that Mr Kemp was a perfectionist and decisive. He was asked whether Mr Kemp was very definite about what he (Mr Keeble) should play, and he answered: “Gary often had very strong ideas, yes”. Mr Norman accepted that Mr Kemp, the songwriter, had to have the last word (as Mr Norman had when the band recorded his own song “Motivator” for the last album). There was a substantial body of evidence from witnesses who were not members of the band but who were present during rehearsals or recording sessions or both. All of them (including the witness called on behalf of the plaintiffs) gave evidence to the effect that Mr Kemp had definite ideas about how his songs should sound, and was clearly the person in charge. I give one other example, but could give more. Mr Gary Langan was involved on the first album (Journeys to Glory) as a recording engineer, and on the last two albums as producer. He said that Mr Kemp was a “control freak”, and that the other members of the band went along with what he said. Second, once Mr Kemp had presented his songs to the band with a view to them being rehearsed and recorded, there were very few changes made to them. Mr Norman could not remember an instance when the melody as presented by Mr Kemp was not complete, but added that “with any song you refine it. There were never radical changes to the melody but there were slight changes”. No other witness went even that far. Mr Dagger said that, in terms of changing the songs, he never saw or heard of it happening. (In fairness I should add that Mr Dagger, being the band’s manager, was commonly not present at rehearsals or recording sessions.) Richard Lengel, a recording engineer, said that in the recording studio nobody changed the melody. Toby Chapman (a session musician who was present at rehearsals as well as at recording sessions) gave evidence that Mr Kemp did not allow anyone to change his songs; Mr Kemp had very set ideas. Tony Swain, the record producer on the second and third albums, said that Mr Kemp was very sensitive about anyone changing his songs. [642] N4. The copyright claim: authorities on joint authorship I do not wish to review all the cases which over the years have examined the concept of joint authorship, but I would like to say something about two which have been concerned with pop music, and to quote briefly passages from other recent decisions. I have already referred to the decision of Thomas Morison QC in Stuart v Barrett [1994] EMLR 448. He described the way in which the group created songs by a process of collective “jamming”. He summed it up in these words (at 458): Someone started to play and the rest joined in and improvised and improved the original idea. The final piece was indeed the product of the joint compositional skills of the members of the group present at the time. In those circumstances he held that all the members were joint authors of the songs. But he stressed that this was a conclusion on the particular facts and in no sense represented a rule of law: It would not be sensible to try and lay down any general rules which would apply to all group compositions. One member of a pop group may have an idea which is so nearly perfected that the compositional input of any of the other members of the group would be regarded as insignificant … It may be that, within a group, only one member is the composer. It must depend entirely on the individual circumstances of the band. Later he said: Ultimately, as it seems to me, the question of whether a person is a joint author or not within the Copyright Act is simply a question of fact and degree. 160 [5.70]

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Hadley v Kemp cont. Godfrey v Lees [1995] EMLR 307 is a decision of Blackburne J. The plaintiff was a classically trained musician who worked closely with the pop group Barclay James Harvest. On several tracks the band had an orchestral accompaniment. The plaintiff provided the orchestral arrangements and conducted the orchestra. And he contributed other musical ideas and material. He claimed to be a joint author of six of the recorded tracks, and the judge agreed on the facts. (It did not do the plaintiff any good in the end, as I will explain in N7 below). Blackburne J stated the principle as follows: What the claimant to joint authorship of a work must establish is that he has made a significant and original contribution to the creation of the work and that he has done so pursuant to a common design. See, for example, Stuart v Barrett [1994] EMLR 448. It is not necessary that his contribution to the work is equal in terms of either quantity, quality or originality to that of his collaborators. Nor, in the case of a [643] song, does it matter that his contribution is to the orchestral arrangement of the song rather than to the song itself. In my view the crucial expression (with which I respectfully agree in every respect) is “a significant and original contribution to the creation of the work”. There are four elements. (1) The claimant must have made a contribution of some sort. (2) It must have been significant. (3) It must have been original. (4) It must have been a contribution to the creation of the musical work. The last point is particularly important. There is an echo of it in the words of Laddie J in the more recent case of Flyde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449 at 457 (a case about computer software): the putative author must have contributed “the right kind of skill and labour”. In the present case contributions by the plaintiffs, however significant and skilful, to the performance of the musical works are not the right kind of contributions to give them shares in the copyrights. The contributions need to be to the creation of the musical works, not to the performance or interpretation of them. In the second part of the passage which I have quoted Blackburne J says that the contribution to a song of a person claiming to be a joint author of it does not have to be equal in terms of quantity, quality or originality to that of his collaborators. However, it still has to be “significant”. Further, all the cases (including Godfrey v Lees) agree that, if two or more persons are joint authors, they own the copyright in equal shares (unless of course they have made an agreement which specifies different shares). It would be surprising if a slight contribution was enough to make a person a joint author and thereby make him an equal owner with another or others who had contributed far more than he had. … [645] N5. The copyright claim: conclusions. The claim for communal joint authorship As I listened to Mr Sutcliffe’s argument on this part of the case it appeared to me that he advanced two different theories in support of the plaintiffs’ claim to be communal joint authors with Gary Kemp of the songs. The main theory contended for in the pleadings (at least as I read them) was that Gary Kemp came along with the bare bones of a song, but that thereafter all the members of the band contributed creatively and collectively to changes and developments to all parts of the song. The result was a whole new song of which they were all joint authors. On this theory it was rather like the jamming process described by Mr Morison QC in the passage from Stuart v Barrett [1994] EMLR at 448, which I quoted earlier. However, for the reasons which I gave in N3 above, I do not believe that the theory can survive the evidence. When Mr Kemp presented a song to the band the melody was complete, the chord structure was complete, the rhythm or groove was apparent in the song as presented, and the structure of the song from start to finish was already laid out. Very few changes were made in the process leading up to the recording of it, and Mr Kemp had the last word on such changes as were made. [5.70]

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Hadley v Kemp cont. The second theory is rather different. It seeks to claim joint authorship for all the members of the band by relying on the combination of three factors: (i)

as a matter of law copyright did not arise when Mr Kemp first presented a song to the band, because the song was not then reduced to some material form (as required by s 49(4));

(ii)

copyright in the musical work arose when it was first recorded, and that was a recording made by all the members of the band, not by Mr Kemp alone;

(iii)

for the purpose of that first recording the members of the band sang or played their instruments in their own creative ways. I comment on the three factors.

As to (i), the proposition that copyright does not exist in a musical work until it is first reduced to a material form does not mean that the musical work does not exist until it is first reduced to a material form. Quite the contrary: the Act assumes that a work may exist before it is reduced to material form. In my judgment a song devised by Mr Kemp and worked up by him in his own mind to the developed stage at which he presented it to the band was already a musical work. Further, at that stage he was undoubtedly the sole author of it. As to (ii) the critical point is that, in my opinion, the songs in their recorded form were the same musical works as the songs which Mr Kemp had composed in his mind and his memory. Of course there was a marked difference between (a) the sound of the song sung by [646] Mr Kemp to the accompaniment of himself on an acoustic guitar, and (b) the sound of the song sung by Mr Hadley with the backing of the whole Spandau Ballet band. But that does not mean that the whole band were creating a new and different musical work. Rather they were reducing Mr Kemp’s musical work to the material form of a recording. After all, when Mr Kemp devised the song he devised it for performance, not by himself as a solo artist, but by Mr Hadley and the whole band. A composer can “hear” the sound of his composition in his mind before he ever hears it played. Beethoven could hear his music in this sense even when he was deaf. When Mr Kemp was devising his songs the sound which he had in his musical consciousness must surely have been the sound they would have when performed by Spandau Ballet, not the sound they would have when sung by Mr Kemp alone to the accompaniment just of his own guitar. … As to (iii) (the members of the band sang or played their instruments in their own creative ways), there is a vital distinction between composition or creation of a musical work on the one hand and performance or interpretation of it on the other. Mr Protheroe’s evidence frequently stressed this point. It is certainly true that the members of the band sang or played in their own ways (and, in so far as I am able to judge, did so excellently). But these are matters of performance, not matters which go to the creation of a new musical work. To repeat the words of Laddie J in the Flyde Microsystems case ([1998] FSR at 457), what the plaintiffs contributed was not “the right kind of skill and labour”. The members of the band (and the session musicians, who cannot be differentiated from the other artists so far as this point is concerned) did what any good musician does: they performed the songs to the best of their considerable abilities, injecting elements of individuality and [647] artistry into their performances. That did not make them joint authors of the songs. In my judgment that remains so even if there were some elements of improvisation in their performances. Very interesting evidence was given on this by Mr Charlie Morgan, who was an expert witness for the defendants on the role of a drummer. He explained that a composer with an idea of how he wanted the drums to sound could, without writing it down, sing the rhythm part to the drummer. He agreed that the improvisation by the drummer with the beat in his head was a creative part of the compositional process, but he added:

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Hadley v Kemp cont. Yes, but I think it is no more than the input that any musician would be expected to make: any musician of any kind. I think that is the area of expertise of the drummer, and certainly if I was present on a session I would be expected to inject something of my own persona, if you like, into the part. For these reasons I do not accept either of the theories on which it is suggested that all of the plaintiffs became collective joint authors of the songs.

AUTHORSHIP OF WORKS [5.80] “Author” is not defined by the Copyright Act 1968 (Cth) except in regard to

photographs, where the author of a photograph is the person who takes it (s 10(1)). But the concept is obviously focused upon the first reduction of ideas to material form (Tate v Thomas [1921] 1 Ch 503). In Kenrick v Lawrence (1890) 25 QBD 99, it was stated that a person who had an idea for a drawing could not be regarded as the author where the idea was actually drawn by another person. Compare Mitchell v Brown (1880) 6 VLR 168. In Walter v Lane [1900] AC 539, the reporters who took down verbatim speeches were regarded as authors, having exercised sufficient skill to bring an original work into being. This case may be of dubious authority today since it was decided under the Copyright Act 1911 (UK), but it points out the connection between authorship and originality, which remains relevant. See Donoghue v Allied Newspapers [1938] Ch 106; Cummins v Bond [1927] 1 Ch 167; Express Newspapers Plc v News (UK) Ltd (1990) 18 IPR 201. The fundamental principle in respect of copyright of a work, as established by the Copyright Act 1968 (Cth) s 35(2), is that the author or creator of the work is the owner of the copyright subsisting in the work. A similar principle applies in respect of sound recordings (s 97(1)), films (s 98(1)), broadcasts (s 99) and published editions (s 100), in that the “maker” or publisher of the subject matter is the owner: see Seven Networks (Operations) Ltd v TCN Channel Nine Pty Ltd [2005] FCAFC 144 at [5.240]. This is separate from, and additional to, any copyright in works which are incorporated in the other related subject matter: WEA Records Pty Ltd v Stereo FM Pty Ltd (1983) 1 IPR 6 at 10; CBS Records Australia Ltd v Telmak (Aust) Pty Ltd (1987) 9 IPR 440. Numerous provisions elaborate on who is the maker of the subject matter, depending upon the nature of the recording medium. Note that the Copyright Act 1968 (Cth) ss 22 and 97 – 100 provide that a literary, dramatic or musical work can be embodied through the making of a sound recording of it, leading to two separate but related rights coming into being contemporaneously: one in the underlying literary, dramatic or musical work, and one in the sound recording of it. However, there are a few significant exceptions to these principles, with the result that, in certain circumstances, the owner of the copyright is not necessarily the author or creator. These exceptions include circumstances where the work is:

[5.80]

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• created jointly by the collaboration of two or more contributors; • a commissioned work; • created under a contract of employment or apprenticeship generally; • created by a journalist under a contract of employment.

Joint authorship and ownership [5.90] The term “work of joint authorship” is defined in the Copyright Act 1968 (Cth) s 10(1) as “a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors”. Hence the contribution of one author is not distinguishable or separable from those of the other authors. However, as seen in the case of Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685 (at [5.100] below), joint authorship requires some material contribution by all authors involved, unless there is some form of agreement to the contrary. Provision of ideas alone would not, in the absence of such agreement, constitute joint authorship. In Prior v Lansdowne Press, the court rejected the argument that a person could not be an “author” where their major function had been merely to supply material for a book because there had been agreement and actions by the parties concerned to recognise a supplier of copy as one of the joint author and to give effect to that recognition by allocating a share of the royalties in the work. It also held that owners of a work of joint authorship are tenants in common, each of whom can sue, seek relief and seek damages for a moiety in respect of an infringement, without necessarily joining the other authors as plaintiffs.

Prior v Lansdowne Press [5.100] Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685, Supreme Court of Victoria (exercising Federal jurisdiction) [Prior, in combination with two others, produced a book that Lansdowne Press agreed to publish. After publication, Lansdowne later arranged with another publisher to publish a new and cheaper edition. Later still, that publisher, without the consent of Prior, made a copy of the book available gratuitously to a newspaper to enable it to publish extracts from the book. The action was for damages for breach of agreement and for damages for infringement of the copyright in the book, including additional damages under Copyright Act 1968 (Cth) s 115(4).] GOWANS J: [688] In Copinger and Skone James on Copyright (11th ed) par 692, it is said: “Co-authors hold the copyright as tenants in common rather than as joint tenants, and, presumably, in the absence of agreement to the contrary, in equal shares.” The plaintiff has put forward a submission that I should treat his fellow worker, Nunn, as excluded from the ownership of the copyright on the basis of evidence given by the plaintiff as to the part the latter had played in the compilation of the book being confined to supplying material but not writing any of it. But this was a late submission made only when the issue of damages came to be discussed at the end of the case. The evidence shows that Nunn helped to compile the material in the book and he was referred to in the publishing agreement, executed by the plaintiff, as one of the authors and as taking part in the publishing of the book, and as entitled to share in the royalties payable to the authors. And the evidence also shows that his name appeared in editions of the book as one of the co-authors. It is by no means clear that his part in the compilation would not make Nunn an author 164 [5.90]

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Prior v Lansdowne Press cont. (Copinger and Skone James, supra, par 305). But, in any case, I hold that, for the purpose of this case, I should proceed upon the basis of there being three co-authors who hold the copyright as tenants in common. And as to [689] the shares in which they so hold it, there is evidence provided by the publishing agreement that the royalties were divisible between the authors in the proportions of 60 per cent to the plaintiff, 30 per cent to Wannan, 10 per cent to Nunn, and there is evidence that this was acted on in the process of distribution. In view of this evidence, and the absence of any other, I think I should hold that, for the purpose of this case, the copyright was held by the co-owners as tenants in common in unequal shares according with those proportions of 60, 30 and 10 per cent. I therefore treat the plaintiff as entitled to 60 per cent of the copyright. In the passage cited from Copinger and Skone James, supra, par 692, it is said: “One of the joint authors can sue in respect of an infringement and obtain an injunction and his share of the damages without joining the other authors as plaintiffs.” There is a footnote which raises a query whether the plaintiff cannot recover the full amount of damages subject only to a liability to account to his co-authors. But, on principle, while it is true that an infringement injuring the copyright is an injury done to the copyright as a whole, owned by all the co-owners, one co-owner can only recover compensation in respect of the injury suffered by him, that is, in respect of so much of the copyright as belongs to him. There is authority, too, that one of two tenants in common can recover damages only for a moiety (Blackborough v Graves (1673) 1 Mod Rep 102; 86 ER 765). I therefore proceed upon the basis that it is the injury so far as affects this share of the plaintiff (a 60 per cent share) that is to be the subject of damages.

Joint ownership [5.110] Note that not all jointly produced works result in joint authorship: for example, separate copyrights exist in the words and the music respectively of a song (unless two or more persons produced them together in such a way as to come within the definition of joint authorship): see Hadley v Kemp [1999] EMLR 589 (Chancery Division, Court of Appeal, UK), and the extract from the case above at [5.70]. In Mitchell v Brown (1880) 6 VLR 168, the plaintiff, a veterinary surgeon, had spent many years making observations and taking notes in order to be able to produce a complete picture of the anatomy of the horse. He consulted with an artist who agreed to execute the drawing, based on the information and guidance provided by the plaintiff. The parties agreed to share equally any profits resulting from the sale of copies of the picture. When the artist claimed that it was his work alone, Molesworth J held the picture to be the result of their “joint labour”. Joint ownership of a copyright work may arise independently of authorship through an agreement between the creator and another person or persons (see Stovin-Bradford v Volpoint Properties Ltd [1971] Ch 1007; Rebeschini v Miles Laboratories (Aust) Ltd (1982) 1 IPR 159; Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 57 ALR 389), or may occur as a result of assignment (see Murray v King (1984) 55 ALR 559; Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417), inheritance or devolution by operation of the law (see O’Brien v Komesaroff (1982) 41 ALR 255). While joint owners may sue independently, the consent of all joint owners is required in the granting of assignment or licence. A recent case before the Federal Court demonstrates that where the individual contributors to a joint work cannot be identified, as distinct from their contributions, there is a risk that copyright cannot be claimed in the work unless the individual creations and their creators can [5.110]

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be identified and separated out. This risk is increased when the works are created through separate contributions of individuals working autonomously, rather than as a result of collaborative effort. This problem arises since the “originality” criterion of copyright requires that the work “originate” with the author; otherwise it would not be possible to establish that a work was an original product of independent intellectual effort without identifying the author. In Primary Health Care Ltd v Commissioner of Taxation [2010] FCA 419 (see extract below at [5.120]), the applicant Primary Health Care sought a determination from the court as to whether copyright subsisted in any part of the patient records of one of its clinics and, if so, whether Primary Health Care, as the beneficial owner of a trust operating medical clinics, owned the relevant copyright. The majority of the patient records consisted of a series of entries by way of consultation notes and prescriptions written by whichever medical practitioner was seeing a patient at any given time, while clerical staff recorded a patient’s personal details and medical history on health summary sheets. The court held that where multiple contributors were involved, the patient records could only be regarded as a single work for the purposes of copyright if they could be regarded as either compilations or “works of joint authorship”. In any case, the court did not consider that the patient records could be regarded as works of joint authorship since they consisted of individual entries that were separate contributions by each author using their own intellectual effort, rather than being the product of collaboration between the various authors. Another problem that existed for Primary Health Care in establishing its claim to ownership of the copyright in the patient records was that, since not all likely contributors could be regarded as employees of the relevant clinic, it could not prove that the contributions had been made in pursuance of terms of employment. Hence, copyright ownership could not be held to have been automatically vested in Primary Health Care under the Copyright Act 1968 (Cth) s 35(6). Furthermore, the court did not consider that the entries (which, in the main, consisted of only a few words describing patients’ medical conditions, medications and physiological and pathological data) demonstrated the level of originality and independent intellectual effort that was required for them to qualify as original literary works. While there may have been considerable medical expertise and professional skill underlying the diagnoses, the selection of medications or the interpretation of the above data, the relevant independent intellectual effort required to produce an original literary work needed to be directed to the expression of an idea rather than its formulation.

Primary Health Care v Commissioner of Taxation [5.120] Primary Health Care Ltd v Commissioner of Taxation [2010] FCA 419 Federal Court of Australia [This case involves six separate applications for appeals under Taxation Administration Act 1953 (Cth) Part IVC in respect of objection decisions made by the respondent, the Commissioner of Taxation. Primary Health Care Ltd (PHC) was a public company and the sole beneficial owner of all issued units in a unit trust that operated a group of medical clinics. The issues in these applications arose out of the purchase of certain medical and dental practices and concern as to whether the trustee was entitled to claim income tax deductions arising from the acquisition of copyright interests as part of this purchase. The preliminary questions concerned issues pertaining to whether the 166 [5.120]

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Primary Health Care v Commissioner of Taxation cont. applicant was entitled to claim deductions with respect to intellectual property rights – namely, copyright in patient records – allegedly acquired by it in the relevant year of income under Income Tax Assessment Act 1997 (Cth) s 373-10(1).] STONE J: [121] Works of joint authorship 121. The fact that all except one of the sample practice patient records have multiple authors warrant some comments as to why these records cannot be regarded as works of joint authorship. The definition of works of joint authorship is set out at [40] above. As the statutory definition indicates, it is central to the concept of joint authorship (as opposed to co-authorship) that the product of the collaboration between the authors is a joint work, not one in which the individual contributions are separate. 122. Although in some cases the 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, the individual entries are separate and distinct and, on the evidence, not the result of collaboration between the doctors. The description of the process given by the doctors both in their affidavit evidence and in cross-examination indicates that each entry in the consultation notes is created by the doctor using his or her individual expertise and intellectual effort to form and record an opinion as to the patient’s condition and treatment. Whether or not the individual doctors collaborated in their care of a patient, there is no evidence of collaboration in the production of the patient records. The copyright status of individual entries in the consultation notes 123. Where there are multiple individual entries in the consultation notes issues concerning the copyright status of the individual contributions are raised. They include identification of each work for which copyright is claimed, the identity of the author, whether the author is a qualified person and whether the work is an original literary work. The identification of each work 124. The applicant submitted that the summary sheet and consultation notes for each patient comprise one (or in the alternative, two) original literary work. It also submits that each referral letter comprises one original literary work. The referral letters are considered below at [136]. The submission concerning the consultation notes, and the alternative, must be rejected. With the possible exception of the records of Dr di Michiel’s sample practice there is more than one author of the entries in the consultation notes for all the sample practices that are in evidence. As the patient records are not works of joint authorship and are not compilations, the consultation notes cannot be regarded as one work for the purposes of copyright. It is therefore necessary to identify each work for which copyright is claimed; IceTV at [15] per French CJ, Crennan and Kiefel JJ and [105] per Gummow, Hayne and Heydon JJ. This has not been done. The author of each work 125. Assuming for the moment that each individual entry in the consultation notes and summary sheets is an identified work, it would be necessary for the author of each work to be identified. The summary of the patient records for each doctor shows that this has not been done. Even if it has been established that each author of entries in the consultation notes and summary sheets was an employee of the sample doctor or (where relevant) the owner of the sample practice, the statutory vesting of copyright in an employee under s 35(6) operates only where the relevant work “is made by the author in pursuance of the terms of his or her employment”. For this requirement to be met the individual authors need to be identified. 126. Furthermore, it is also necessary to prove that each author is a qualified person. Although the evidence establishes that each sample doctor is an Australian citizen and therefore a qualified person there is no such evidence in relation to the other authors of the medical records. [5.120]

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Primary Health Care v Commissioner of Taxation cont. Whether the individual entries are original literary works 127. The respondent submits that the individual contributions consisting in the most part of no more than a word or a few words naming medical conditions are not sufficiently substantial or original to qualify as original literary works and therefore do not attract copyright. … These notes convey information but, as French CJ, Crennan and Kiefel JJ commented in IceTV at [45], “Not every piece of printing or writing which conveys information will be subject to copyright”. Many more examples can be seen in the discussion of the patient records tendered in respect of each sample practice. 128. In support of this submission, the respondent cited the decision in Noah v Shuba [1991] FSR 14 where the plaintiff claimed that a short extract taken from a publication entitled A Guide to Hygienic Skin Piercing in which he held the copyright constituted a work in its own right. The extract was: “Follow clinic procedure for aftercare. If proper procedures are followed, no risk of viral infections can occur”. As it happened, it was not necessary for Mummery J to decide the issue however his Honour, having heard argument from both sides, said, at 33, that he would have rejected the submission that the extract was a work in its own right as “Those two sentences on their own do not afford sufficient information, instruction or literary enjoyment to qualify as a work”. 129. Invariably, findings as to whether an extract such as Mummery J considered is an original literary work will involve fine distinctions and an obiter dictum should not be scrutinised too carefully. Nevertheless, the case for copyright existing in the entries put forward as examples by the respondent is much less persuasive than for the extract considered by his Honour. 130. In Brodel v Telstra Corporation Ltd [2004] FCA 505 (Brodel), Kenny J held at [13], that the word “Smartfax” did not constitute an original literary work in which copyright was capable of subsisting. A similar view was expressed about the word, “Exxon” in Exxon. In Exxon Stephenson LJ commented at Ch 143; All ER 248, that “a literary work would be something which was intended to afford either information and instruction, or pleasure in the form of literary enjoyment” and that the word, “Exxon” was neither a work nor literary, despite the admitted originality in its creation. Other relevant examples referred to by Kenny J in Brodel include Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd [1940] AC 112 where the song title “The Man who Broke the Bank at Monte Carlo” was held not to be an original literary work and Green v Broadcasting Corporation of New Zealand (1983) 2 IPR 191 which took the same view of the title of a talent quest show, “Opportunity Knocks”. 131. As Stephenson J accepted, “Smartfax” and “Exxon” being invented words are undoubtedly original expressions, however, that very novelty detracted from any argument that they could inform, instruct or entertain. Entries in medical records even where they are limited to clinical data and names of medications have a greater capacity to inform and instruct (if not to entertain) than the expressions in these examples. This, however, is not sufficient to support a claim for copyright in those entries. The clinical data and names of medications are not expressions that originate with the doctor who has recorded them. 132. Even entries that contain some comment are not sufficiently substantial to qualify as works the product of independent intellectual effort directed to expression. … 133. None of this denies the intellectual effort and professional skill needed to form the diagnoses, to select methods of treatment or to understand the significance of clinical data that is recorded, however, copyright protects a form of expression not this underlying expertise. Conclusions as to subsistence of copyright 134. As mentioned above, PHC claims copyright in the patient records of the sample practices as described above at [48]. As the summaries above show, in evidence in this proceeding were examples of consultation notes for all the sample doctors, some examples of summary sheets and a few examples of referral letters and prescriptions. Applying the principles identified above, and contrary to 168 [5.120]

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Primary Health Care v Commissioner of Taxation cont. PHC’s submission that the subsistence of copyright in these records is “uncontroversial”, I have found little evidence to support a finding that copyright subsists in them. In fact, as explained below, I find copyright only in the referral letters and in the consultation notes for di Michiel patient 6. I have not found any instances of copyright in prescriptions written in the sample practices or in health summaries. Prescriptions and health summaries 135. The prescriptions consisted only of the names of medications, dosage and standard directions, such as “nocte” or “10mg 1/2 m”. There were only a few examples of health summary sheets that were distinct from the consultation notes. Often the health summaries were merely noted at the beginning of the consultation notes as for instance in the case of Drs di Michiel and Galati; see above at [56] and [60] … Irrespective of the method of recording health summaries, however, they generally contained only a list of previous illnesses and procedures … These records were not sufficiently substantial to qualify as original literary works embodying independent intellectual effort directed towards expression. … Consultation notes 137. The consultations notes in respect of di Michiel patient 6, described above at [58], were wholly written by the identified author, Dr di Michiel, who is a qualified person. As there was only one author it is possible to regard the accumulated record as forming a single work rather than having to consider individual entries. That being so it was possible to discern a continuous narrative showing independent intellectual effort expended in expression. While that effort was probably minimal, taken as a whole, I find that these notes constitute an original literary work authored by Dr di Michiel. … 138. In relation to the records in evidence for the other sample practices, I am not satisfied that the consultation notes are original literary works in which copyright subsists. In summary, the entries in the notes are largely restricted to notations of the names of medical conditions and medications as well as physiological and pathological data such as blood pressure and blood count readings. As such their expression does not display the independent intellectual effort in their expression necessary for copyright protection.

NON-AUTHORS Commissioned works [5.130] As a general rule, the copyright of a commissioned work rests with the creator or

author unless there is any agreement made between the parties as to assignment or other dealing with copyright. There are specific exceptions for commissioned photographs, portraits and engravings in the Copyright Act 1968 (Cth) s 35(5), and for commissioned sound recordings and films in ss 97(3) and 98(3). Section 35(5) addresses the vesting of copyright in a commissioned portrait, engraving or photograph. It draws a significant distinction between portraits and engravings on the one hand, and commissioned photographs on the other. In the case of a commissioned portrait or engraving, the copyright remains with the person who commissioned the work; in the case of commissioned photographs, the copyrights remains with the person who commissioned the photograph, but only where the photographs are taken “for a private or domestic purpose”. [5.130]

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This purpose is defined in s 35(7) as including a portrait of family members, a wedding party or children. In other circumstances, such as major commercial works, the photographer, as the creator of the photograph owns the copyright. This restriction in respect of commissioned photographs arises out of amendments introduced into the Copyright Act 1968 in 1998. Prior to 1 July 1998, copyright was vested in the person who commissioned them. The restriction recognised the distinction between major commercial works by professional photographers and private works. Further, s 35(5) provides that where the purpose of a portrait, engraving or photograph commission is made known or implied at the time of the commission, and the copyright rests with the person commissioning it, the author or creator of the work is entitled to restrain the copyright owner from using the work for any other purpose than that for which it was commissioned. Similar provisions exist in respect of subject matter other than works (ie, subject matter covered by Part IV of the Act). Section 97(2) provides that the maker of a sound recording is the owner of the subsisting copyright. However, s 97(3) provides that the person commissioning a sound recording is the owner of the recording in the absence of any agreement to the contrary, while s 98(2) and (3) make an identical provision in respect of films. Note that the copyright in a film or video only relates to the moving images and sound – works incorporated into a film or video, such as the screenplay and the music, must be considered separately.

Journalists’ copyright [5.140] Prior to 1998, employee journalists retained general control over the copyright of

their work, other than for some limited exceptions for which rights rested with the employer/proprietor. These employer exceptions applied in respect of broadcasting the work, or for reproduction for publishing or broadcasting purposes. The rights of journalists were redefined and curtailed in amendments to the Copyright Act 1968 (Cth) in 1997 (which came into effect in 1998) that were intended to clarify and establish the ownership of material in electronic form. Publishers sought amendments to the Act to ensure they retain those electronic reproduction and distribution rights. Section 35(4)(d) provides that generally a work made by a journalist under a contract of employment for the purpose of inclusion in a newspaper, magazine or similar periodical is vested in the employer or proprietor of the newspaper, magazine or similar periodical. However, there is a limited exception to this general provision that allows for the journalist to retain copyright in some circumstances in the print medium only. Section 35(4)(c) allows the journalist to retain copyright in a work or similar for the purposes of reproducing it for inclusion in a book, or for making photocopies from a hard copy of the original publication. But it does not include copyright over reproductions made by the proprietor for the purpose connected with the publication of the newspaper, magazine or similar periodical. Nor does it include any rights in respect of electronic reproduction of the work or its reproduction in the digital environment. All other rights, including those in the print medium not included in the limited journalists’ rights described above, are vested in the proprietor. In the following extract from De Garis v Neville Jeffress Pidler (1990) 95 ALR 625, a range of issues relating to the reproduction of journalists’ work for a news clipping service were examined. The case includes a statement that the journalist retains the right to “control and 170 [5.140]

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license such things as publication in book form, photocopying and clipping services, inclusion of the work in certain data-base systems, filming and probably merchandising of cartoon characters, for example on badges and tee-shirts”. But note, in particular, that this case predates the abovementioned changes to the Copyright Act 1968 (Cth) that were introduced in 1998.

De Garis v Neville Jeffress Pidler [5.150] De Garis v Neville Jeffress Pidler Pty Ltd (1990) 95 ALR 625 Federal Court of Australia [The two applicants, Brian de Garis and Matthew Moore, were authors of articles published in The West Australian and Sydney Morning Herald newspapers respectively. De Garis’s work was supplied pursuant to a contract of services, whereas Moore’s work was provided in the course of his employment as a journalist with the Sydney Morning Herald. The applicants claimed that the respondent, Neville Jeffress Pidler Pty Ltd (Jeffress), infringed the copyright in their respective works in its business as a press-clipping service. Jeffress “monitor[ed]” newspapers and other media for “subjects” required by a subscriber to the service and provided a photocopy of the material requested, together with a statement of the source of the material, in return for a fee.] BEAUMONT J: 14. By s 32(1), it is provided that, subject to the Act, copyright subsists in an original literary work that is unpublished and of which the author was a qualified person at the time when the work was made. By s 32(4), a “qualified person” includes a person resident in Australia. By s 22(1), a literary work is “made” when it is first reduced to writing or some other material form. By s 32(2), it is provided that, subject to the Act, where an original literary work has been published, if copyright in the work subsisted immediately before its first publication, copyright continues to subsist in the work if the first publication of the work took place in Australia. By s 29(1)(a), subject to that section, for the purposes of the Act, a literary work shall be deemed to have been published if reproductions of the work have been supplied, whether by sale or otherwise, to the public. 15. By s 35(2), subject to that section, the author of a literary work is the owner of any copyright subsisting in the work by virtue of Part III of the Act. 16. It is not, and could not be, seriously disputed, that Mr de Garis is the author of an original literary work being the article now in question. It follows, in my opinion, that Mr de Garis was the owner of the copyright in the literary work, being the unpublished article. Upon publication of the article, copyright continued to subsist in the article and Mr de Garis is the owner of copyright in that work. 17. The provisions of both s 35(4) and s 35(6), to which reference will be made later in considering Mr Moore’s claim, cannot apply here since Mr de Garis was a “contributor” or “freelance” writer and was not employed by the proprietor of “The West Australian” under a contract of service (see Hexagon Pty Ltd v Australian Broadcasting Commission (1975) 7 ALR 233 at p 257; Walker, The Law of Journalism in Australia at p 338; Halsbury’s Laws of England, 4th ed at p 715, para 1958). 18. Although the proprietor of the newspaper may have commissioned the work, since the contract was one for the provision of services, (other than in respect of a photograph, a portrait or an engraving – see s 35(5) of the Act) the newspaper proprietor does not acquire the copyright in the work at law (see Copinger and Skone James on Copyright, 12th ed at p 130, para 342; cf Beloff v Pressdram Limited (1973) RPC 765 at pp 772-6). Nor, in my view, under an “open” contract of the present kind is there any basis for holding that the newspaper proprietor was entitled to the copyright in equity (see Copinger and Skone James at p 139, para 369; cf University of London Press Limited v University Tutorial Press, Ltd (1916) 2 Ch 601 at p 612). The relevant nature of the copyright [5.150]

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De Garis v Neville Jeffress Pidler cont. 19. By s 31(1)(a), in the case of a literary work, copyright is the exclusive right, inter alia, to reproduce the work in a material form. Infringement 20. By s 36(1), subject to the Act, the copyright in a literary work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner, does in Australia any act comprised in the copyright. 21. In the present case, in my opinion, Jeffress has reproduced the work in a material form. … The evidence in Mr Moore’s claims (i)The contract of employment 76. Mr Moore is a journalist employed by John Fairfax and Sons Limited (“John Fairfax”) as State Political Correspondent of the Sydney Morning Herald. It is now common ground that Mr Moore’s employment was negotiated orally in November 1983 when he was offered, and accepted, “a job as a cadet on the Sydney Morning Herald”. Mr Moore was then informed that a letter would be sent to him. He did receive a letter from John Fairfax which is no longer available. It is also now common ground that attached to the letter was a copy of the Journalist (Metropolitan Daily Newspapers) Award 1986. The letter said nothing about questions of copyright. It is further common ground that Mr Moore is a full-time employee of John Fairfax and subject to editorial direction and control. It is also agreed, for the purposes of this litigation that, apart from remuneration, there has been no variation of the original terms of his employment. (ii) Authorship of the works 77. In September 1987, in the course of his employment with John Fairfax, Mr Moore wrote the three articles already described. … At the time, Mr Moore was an Australian citizen (see s 32(4)). (iii) Publication of the works 78. The works were published in the editions of the Sydney Morning Herald dated 9 September, 4 September and 11 September 1987 respectively. (iv) Reproduction of the works by Jeffress 79. Jeffress acknowledges that, under the trade name “NJP News Express”, it has reproduced each of the articles written by Mr Moore and published by John Fairfax. It is not suggested that this was done pursuant to any express authority of Mr Moore. The legal issues 80. Again it is convenient to deal with the issues in stages. Ownership of the relevant copyright 81. In addition to the statutory provisions described in dealing with the claims made by Mr de Garis, it is necessary, for present purposes, to refer to s 35(4) which provides, so far as presently relevant, that where a literary work is made by the author in pursuance of the terms of his employment by the proprietor of a newspaper under a contract of service and is so made for the purpose of publication in a newspaper, the proprietor is the owner of any copyright subsisting in the work insofar as the copyright relates to – (a)

publication of the work in any newspaper, magazine or similar periodical; (b) broadcasting the work; or (c) reproduction of the work for the purpose of its being so published or broadcast, but not otherwise.

82. In my opinion, the operation of this provision in the circumstances of the present case is as follows: (1)

Each of the articles written by Mr Moore is a “literary work”.

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De Garis v Neville Jeffress Pidler cont. (2)

Mr Moore is the author of the works.

(3)

The works were made pursuant to the terms of Mr Moore’s employment under a contract of service with John Fairfax (cf Sun Newspapers Ltd v Whippie (1928) 28 SR (NSW) 473 at p 478; see also Beloff’s Case, above, at pp 768-776).

(4)

The works were made for the purpose of publication in the Sydney Morning Herald.

(5)

It follows, in my view, that John Fairfax is the owner of the copyright in the works for the purposes (a), (b) and (c) above, but that Mr Moore is the owner of the copyright for other purposes.

The consequences of the division of the ownership of the copyright under s 35(4) 83. As has been seen, the newspaper proprietor owns the copyright insofar as it relates to publication in a newspaper. What is meant by “publication” in this context? 84. In Infabrics Ltd v Jaytex Ltd (1982) AC 1, the House of Lords held that “publishing” in the context in question there meant “making public in the territory a work not previously made public” (per Lord Wilberforce at p 17; see also per Lord Scarman at p 25). 85. By s 29(1)(a) of the Act, a literary work shall be deemed to have been published if, but only if, reproductions of the work have been supplied (whether by sale or otherwise) to the public. 86. It is a moot point, which need not now be decided, whether, by virtue of the operation of s 35(4), the rights of a newspaper proprietor are limited to first publication only and do not extend to subsequent publications such as syndication to newspapers other than the first in which the work appeared (see Susan Bridge, Journalists as Copyright Owners, Copyright Bulletin, Vol XXIII, No 3 1989 10 at p 13). The present question is a different one. In her article, Susan Bridge goes on to say (at p 13): Rights of the journalist The employed journalist retains copyright for all purposes other than those specifically granted to the proprietor. Owning “the rest” enables the journalist to control and license such things as publication in book form, photocopying and clipping services, inclusion of the work in certain data-base systems, filming and probably merchandising of cartoon characters, for example on badges and tee-shirts. 87. So far as “photocopy and clipping services” are concerned, I agree. It is not necessary to express an opinion on the other activities mentioned. … 92. It follows, in my opinion, that Mr Moore is the owner of the relevant copyright and that, for present purposes, he is entitled to sue for any infringement. The statutory and other defences 93. For the reasons given in considering the claims of Mr de Garis, I am of the opinion that Jeffress has failed to establish any of the statutory or other defences raised. Infringement and relief 94. It also follows, in my view, that there has been an infringement by Jeffress of Mr Moore’s copyright and that Jeffress should be enjoined from further infringement.

Employment: Contract of service or apprenticeship [5.160] The Copyright Act 1968 (Cth) s 35(6) provides that the general rule in respect of copyright in the employment context is that copyright in works created by employee authors, [5.160]

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pursuant to the terms of their employment under a contract of service, remains with their employer. This statement raises two critical issues, namely: • what is the distinction between employment pursuant to a “contract of service” (ie, an employee) and a independent “contract for services” (ie, an independent contractor; and • what constitutes “pursuant to the terms of their employment”? The distinction between employee and contractor may be determined by the general principles of employment law. Both questions are particularly relevant and problematic where the work is prepared with little or no “direction” from the alleged employer. In Stephenson, Jordan & Harrison v McDonald and Evans (1952) 69 RPC 10, Denning LJ considered that the extent to which a person is an integral part of a business or only an accessory to it was a key factor in deciding whether they were an employee. In Nora Beloff v Pressdram Ltd [1973] 1 All ER 273, Ungoed-Thomas J opined: Control is just one of many factors whose influence varies according to circumstances. In such highly skilled work as that of the plaintiff it seems of no substantial significance. The test which emerges from the authorities seems to me, as Lord Denning said, whether on the one hand the employee is employed as part of the business and his work is an integral part of the business, or whether his work is not integrated into the business but is only accessory to it, or … the work is done by him in business on his own account.

The distinction between contract of service and contract for services was examined at some length in De Garis v Neville Jeffress Pidler (1990) 95 ALR 625 (see [5.80] above) in respect of the status of each of the plaintiffs, de Garis (a freelance writer) and Moore (employed by a newspaper). Hence, de Garis retained copyright ownership in his articles, while the copyright ownership over Moore’s articles was divided between him and his employer in accordance with Copyright Act 1968 (Cth) s 35(4) as it then existed (ie, prior to the amendments of 1998 mentioned above at [5.70]). In respect of academic authors, some older cases suggest that copyright in lectures remains with the academic who produced them. In Stephenson, Jordan & Harrison v McDonald and Evans (1952) 69 RPC 10, Lord Eversham MR commented (at 18): Lectures delivered, for example, by Professor Maitland to students have since become classical in the law. It is inconceivable that because Professor Maitland was in the service at the time of the University of Cambridge that anybody but himself, one would have thought, could have claimed the copyright in those lectures.

See also Oceanroutes (Australia) Pty Ltd v M C Lamond (1984) AIPC 90-134, Redrock Holdings Pty Ltd v Hinkley (2001) 50 IPR 565; Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd (2005) ALR 569. The interpretation in Stephenson, Jordan & Harrison v McDonald and Evans (1952) 69 RPC 10 appears to still have carriage. In two recent cases, the Federal Court clarified the circumstances in which employers may claim ownership of copyright works created by their employees, and in particular how the court may determine whether works are made in pursuance of an employment contract. The cases, University of Western Australia v Gray [2009] FCAFC 116 and EdSonic Pty Ltd v Cassidy [2010] FCA 1008, indicate that courts will use an exclusive interpretation of employment contracts and only assign copyright to employers where works are created in direct furtherance of employment. While University of Western Australia v Gray [2009] FCAFC 116 concerned the issue of ownership of inventions and patents, the legal principles it raises in respect of the conditions and parameters of the employment context apply equally to copyright. The respondent 174 [5.160]

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Professor Gray was a full-time professor of surgery at the University of Western Australia (UWA). When Professor Gray ceased to be a full-time employee at UWA in 1997, he assigned various property rights to Sirtex Medical Ltd, a company created for the purpose of commercialising and marketing technologies developed from his research. The university argued that Professor Gray had breached his contract of employment by failing to comply with an implied term of the contract that provided that UWA owned the inventions developed by him in the course of his employment there. The Full Federal Court determined that the law did not imply any term into Professor Gray’s contract of employment to stipulate that Dr Gray was under a duty to provide UWA with the benefit of his inventions, even though the nature of Professor Gray’s research meant that it was likely inventions could quite likely result.

University of Western Australia v Gray [5.170] University of Western Australia v Gray [2009] FCAFC 116 Federal Court of Australia (FC) [The respondent, Dr Gray, was employed by the University of Western Australia (UWA) as Professor of Surgery on a full-time basis from February 1985 until March 1997. He moved to a fractional 30 percent appointment, focusing on clinical work at the Royal Perth Hospital while remaining Professor of Surgery at UWA. Dr Gray resigned from UWA in November 1999. As a full-time employee, Dr Gray was required by the terms of his appointment, relevantly: (a) to teach, to conduct examinations and to direct and supervise the work in his field; and (b) to undertake research, to organise research and generally to stimulate research among the staff and students. In substance, UWA’s claim against Dr Gray was that, by reason of his employment, he had obligations to the university in respect of the inventions arising from his research, and that, as a result, it had proprietary rights in respect of those inventions and of associated patent applications and patents, and that by reason of Dr Gray’s having dealt with the inventions as his own, UWA was entitled to obtain certain remedies. The university was appealing from a judgment of the primary court which dismissed its claims in its entirety.] … LINDGREN, FINN AND BENNETT JJ: 150 … The law is well settled upon the position of an officer or employee who makes an invention affecting the business of his or her employer. It is an implied term of employment that any invention or discovery made in the course of the employment of the employee in doing that which he is engaged and instructed to do during the time of his employment, and during working hours, and using the materials of his employers, is the property of the employer and not of the employee. Having made a discovery or invention in course of such work, the employee becomes a trustee for the employer of that invention or discovery, and he is therefore as a trustee bound to give the benefit of any such discovery or invention to his employer. But the mere existence of the employer/employee relationship will not give the employer ownership of inventions made by the employee during the term of the relationship. And that is so even if the invention is germane to and useful for the employer’s business, and even though the employee may have made use of the employer’s time and resources in bringing the invention to completion. Certainly, all the circumstances must be considered in each case, but unless the contract of employment expressly so provides, or an invention is the product of work which the employee was paid to perform, it is unlikely that any invention made by the employee will be held to belong to the employer. 151 The fundamental idea said to inform when and why an employee’s trusteeship of an invention arises is not hard to find and is deeply rooted in the general character of what in times past was [5.170]

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University of Western Australia v Gray cont. described as the master-servant relationship. Viscount Simonds and Lord Reid both made this plain in Sterling Engineering Co Ltd v Patchett [1955] AC 534 (Sterling Engineering). Viscount Simonds stated (at 543): It is elementary that, where the employee in the course of his employment (ie, in his employer’s time and with his materials) makes an invention which it falls within his duty to make (as was the case here) he holds his interest in the invention and in any resulting patent as trustee for the employer. The implied term procuring this result his Lordship considered (at 544) was: … only an implied term in the same sense that it is an implied term, though not written at large, in the contract of service of any workman that what he produces by the strength of his arm or the skill of his hand or the exercise of his inventive faculty shall become the property of the employer. Likewise Lord Reid stated (at 547): No doubt the respondent was the inventor and in the ordinary case the benefit of an invention belongs to the inventor. But at the time when he made these inventions he was employed by the appellants as their chief designer and it is, in my judgment, inherent in the legal relationship of master and servant that any product of the work which the servant is paid to do belongs to the master: I can find neither principle nor authority for holding that this rule ceased to apply if a product of that work happens to be a patentable invention. For a like view where the work product was a copyright article, see Report of the Committee to Consider the Law on Copyright and Design (1977), Cmnd 6732, (UK) para 571. Unless varied or excluded by the parties, the implied term was “the ordinary rule inherent in the parties’ relationship of master and servant” (per Lord Reid at 548). 152 Unsurprisingly, express contractual stipulation apart, with the employer’s entitlement turning on that which it was the employee’s “duty” to do – and for which the employee was paid – the recurrent preoccupation in the case law has been in each instance with the actual subject matter and purpose of the employee’s engagement itself and with the question: “[w]hat is it that he is employed to do?”; cf LIFFE Administration & Management v Pinkava [2007] EWCA Civ 217; [2007] 4 All ER 981 (LIFFE) at [97]. The end of this inquiry is to ascertain whether, if at all, it was part of an employee’s engagement with his or her employer to utilise his or her “inventive faculty” (cf Sterling Engineering at 544; Vokes at 136) in an agreed way or for an agreed purpose for the benefit of, or to further the purposes of, the employer. To use the shorthand of Electrolux Ltd v Hudson [1977] FSR 312 at 326, was the employee “employed to make or discover inventions at all?”, or, as French J put it, did the employee have “a duty to invent?” 153 If the employee’s invention is the, or a, product of what he or she was employed to do, and did do, it will belong to the employer unless otherwise agreed: see eg British Reinforced Concrete Engineering Co Ltd v Lind (1917) 34 RPC 101 (British Reinforced Concrete); Adamson v Kenworthy (1932) 49 RPC 57; Triplex Safety Glass Co v Scorah [1938] 1 Ch 211 (Triplex Safety Glass); and see also Electrolux Ltd, at [97]. In such a case, it would be “inconsistent with [the employee’s] duty to appropriate to himself an invention of this kind”: Edisonia Ltd v Forse (1908) 25 RPC 546 at 552. 154 By way of contrast, if (a) the employee was not engaged to use his or her inventive capacity at all (cf Re Charles Selz Ltd’s Patent Application (1954) 71 RPC 158); or (b) was so engaged only by way of additional duties to use his or her inventive capacity as and when asked (Spencer Industries Pty Ltd v Collins [2003] FCA 542; (2003) 58 IPR 425) or only for an agreed purpose, the employer would have in case (a) no claim on the employee’s invention at all and in case (b) such a claim only if the invention resulted from a task the employee was asked to perform by way of additional duty or if the invention was related to the effectuation of the agreed purpose. … 176 [5.170]

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University of Western Australia v Gray cont. Conclusion 206 His Honour’s conclusion that UWA failed at the threshold is correct and for a variety of reasons. Justice French was well aware that the circumstances of Dr Gray’s employment were a long way removed from the situations that gave rise to the common law implication of employer ownership of employee inventions that were developed in the course of, and as a product of, what the employee was employed actually to do. Dr Gray’s employer was a university; he was a member and an employee of it. In determining whether such an employment was nonetheless one which attracted the common law implication, French J was obliged to have regard to what Viscount Simonds in Sterling Engineering described as “more general considerations” and he did have regard to them. As we have indicated, these include both considerations of policy and consequentialist considerations. Importantly, regard can be had to considerations of these kinds, not only in support of making the implication into a class, but also to negative the implication. In this matter, and again rightly in our view, his Honour relied upon them to negative the implication. His Honour also relied, as we have indicated, upon four specific and differentiating aspects of Dr Gray’s employment and research environment. One of these alone – that Dr Gray had no duty to invent – could well of itself have justified the dismissal of UWA’s claim. What we wish to highlight, because it was a central pillar in his Honour’s reasons and is in our own, is the distinctiveness of a university such as UWA and of academic employment in it as considerations relevant to the determination of the “threshold question”. 207 The employee invention implied term is a particularly blunt instrument to settle the ownership of employee inventions. UWA recognised as much in the provision it made in the Patents Regulations, and then the IP Regulations, in relation to the apportionment of the benefits derived from patents and other intellectual property, as between UWA and the inventor/originator. Equally importantly, as we have indicated, in employment contracts to which it applies, the implied term presupposes the common law duty of fidelity and the equitable duty of confidence to protect for the employer’s benefit confidential (and other) information generated during the course of the employment, which is not, or is not yet, patentable. As this case highlights, it is important to appreciate what the implication itself presupposes about how the employment relationship is already regulated when considering the threshold question. It is this which explains and justifies French J’s concern with Dr Gray’s employment circumstances and his conclusions that Dr Gray’s freedom to publish research results and the need to collaborate with external institutions told against the implication. 208 His Honour obviously considered freedom to publish as an important value in the setting of a university given its nature and public purposes. And we would note in passing that, in other contexts involving education (eg charitable trusts for the advancement of education), the law has placed a particular value upon the dissemination of the results of research: see Taylor per Griffith CJ at 231. Justice French obviously attributed a like significance to the academic researcher’s freedom to choose the subject and manner of research without being subject to a duty to invent. As is quite clear from [160] of his Honour’s reasons, these two features plus the fact that the contract of employment was with a university serving public purposes, were significant characteristics of the general class or type of contract that was under consideration for the purposes of the threshold question. Dr Gray’s contract, as his Honour later found, had those characteristics: see [1359]-[1363]. 209 In appraising that contract, the primary Judge necessarily had regard both to the nature and public purposes of universities and to the distinctiveness of academic employment in universities, focusing in particular on the two “freedoms”. None of these matters, though, were ones upon which significant evidence was adduced. This explains why his Honour’s focus was on such material as there was relating to UWA in its statutory setting and to the terms and circumstances of Dr Gray’s employment. Nonetheless, it was not only proper but also necessary for his Honour to have regard to the more general issues of policy suggested by that material (especially as they related to the two freedoms) which would arise if the implication was, or was not, to be made. In that regard his [5.170]

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University of Western Australia v Gray cont. reference to the work of Monotti and Ricketson and to “academic freedom” was entirely appropriate. After all, what was being made was a judgment as to the “necessity” of implying a term into a particular class or type of contract. There was ample reason for not making the implication sought given the class or type of contract in question.

[5.180]

Note

On 12 February 2010, the High Court refused the University’s application for special leave to appeal from the Full Federal Court’s decision in favour of Professor Gray. [5.190] In EdSonic Pty Ltd v Cassidy [2010] FCA 1008, the Federal Court further clarified

the circumstances in which employers may claim ownership of copyright works created by their employees, and, in particular, how courts will determine whether works are made in pursuance of an employment contract. Courts will only assign copyright to employers where works are created in direct furtherance of employment. EdSonic had worked with the respondent to adapt teaching materials she had previously developed into a format that could be commercialised. The respondent was to be compensated for her work with shares in EdSonic and royalties from any sale of the online materials. The central issue in this case was the interpretation and application of the Copyright Act 1968 (Cth) s 35(6) and, thus, whether the respondent was an employee of EdSonic and the online materials produced in “pursuance of the terms” of her employment. Moore J noted that the key consideration was: … not the bare question of whether the author is employed under a contract of service at the time a work is made but whether the relevant work is made in furtherance of the contract of employment for the employer … that is, did the employee make the work because the contract of employment expressly or impliedly required or at least authorised the work to be made. Approached in this way, it is an expression which comprehends notions similar to those addressed by the Full Court in Gray in the context of patent law …

On the facts, it was concluded that the respondent had not been an employee of the applicant when developing the materials in dispute. The respondent had commenced writing the materials prior to any engagement with the applicant, and the materials were substantially completed while operating her own business prior to any association with the applicant. See also The Royal Children’s Hospital v Robert Alexander [2011] APO 94, which further illustrates the employer-employee relationship. Although it deals with ownership of patents, like Gray, the principles in respect of the employer-employee relationship still apply. The Alexander case demonstrates an interesting distinction between two related inventions by Dr Alexander while employed at the hospital, one which was deemed by the delegate for the Commissioner of Patents to have been conceived in the course of Dr Alexander’s employment, and the other which was deemed not to have been in the course of his employment. Employee or independent contractor? [5.200] The case of Redrock Holdings Pty Ltd & Hotline Communications Ltd v Adam Hinkley (2001) 50 IPR 565 in the Supreme Court of Victoria involved a dispute over ownership of computer programs created under a rather informal and largely undocumented contract of employment, as well as the software used to create those programs. Hinkley’s 178 [5.180]

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employment situation was complicated by rather flexible and informal arrangements in both his workplace and working hours, as well as enabling him to work concurrently on his employer projects and other independent projects for other parties.

Redrock Holdings v Adam Hinkley [5.210] Redrock Holdings Pty Ltd & Hotline Communications Ltd v Adam Hinkley (2001) 50 IPR 565 Supreme Court of Victoria HARPER J: [567] These proceedings concern an acrimonious dispute about the ownership of software written by Mr Adam Hinkley, the first defendant in each proceeding. Mr Hinkley’s father, Mr Paul Hinkley, and Mr Paul Hinkley’s business vehicle, Meta Consultants Pty Ltd (Meta Consultants), are also defendants to the proceedings. There is no dispute that Mr Adam Hinkley was the author of the programs in question. Rather, the issues in contention concern the identity of the owner of the copyright in the programs. … [568] … Adam Hinkley is a young man of great talent. He is a computer programmer. Before he left school, he had embarked on the development of a “library” (he referred to it as a “class library”) as that expression is defined in the computer lexicon: that is, a collection of files, computer programs, or sub-routines; a collection of reference materials and software tools: see Dictionary of Computer and Internet Terms (6th ed) by Douglas Downing, Michael Covington and Melody Covington. Another definition, used in this case by Professor Justin Zobel, Associate Professor, Department of Computer Science, RMIT University, is “a collection of functions that a programmer can call upon when writing a piece of software”. Mr Hinkley defines the expression “class library” as “a software tool that is used for making other software”. One of the features of this library is that it comprises reusable code that can be used in many applications. Moreover, it was designed as a “cross-platform” program which is defined as being “applicable to more than one kind of computer (for example PC and Macintosh)”: Dictionary of Computer and Internet Terms (supra). In this case, the library was used to write, or assist in writing, software that is indisputably owned by Redrock as well as software that was being developed by or on behalf of Mr Paul Hinkley and Meta Consultants. It was similarly used by Mr Adam Hinkley in writing software which according to him was exclusively his. … [570] … By the last quarter of 1995 Redrock was ready to employ a programmer with Macintosh skills. Adam Hinkley had those skills, as he demonstrated during a meeting with Messrs Hamilton, Spearritt, and another Redrock director, Rohan Lean. … [571] Mr Hinkley brought with him to the interview his Macintosh prototype of WinPage. There was some dispute at trial about the degree of sophistication of this prototype, but it appears that it comprised a graphic representation of the user interface with limited functionality. … The interview achieved its purpose. Several days later, Redrock offered Mr Hinkley a position. Mr Hinkley accepted. In doing so, he assumed (he says) that the library would remain his; and there can be no doubt that, before he joined Redrock, it was with him that the copyright resided. For the purposes of the Copyright Act 1968, a computer program or compilation of computer programs is a literary work: s 10. By s 31(1) of that Act, copyright in relation to a literary work is (unless the contrary intention appears) the exclusive right to (among other things) reproduce the work in a material form, to publish it, to make an adaptation of it and, if it is an adaptation, to reproduce or publish that adaptation. Subject to s 35 of the Act, the author of a literary work is the owner of any copyright subsisting in it: s 35(2). Where, however, a computer program is made by its programmer in pursuance of the terms of his or her employment under a contract of service, the employer is the owner of any copyright subsisting in the program: s 35(6). … [572] … [5.210]

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Redrock Holdings v Adam Hinkley cont. Mr Hinkley relies upon the circumstance that there was no express agreement for the transfer of copyright in the library from him to Redrock. But if, having taken to his new employer a library which was then in embryonic form, Mr Hinkley in pursuance of the terms of his employment under a contract of service transformed that library into something that was qualitatively and quantitatively quite different, the copyright in the work will vest in Redrock by virtue of the operation of s 35(6) of the Copyright Act 1968. It is not necessary for there to be any transfer agreement or licence, either written or oral. In such circumstances, copyright in the qualitatively and quantitivately different library vested in Redrock by operation of law. Mr Hinkley submits that he was employed under a contract for services rather than under a contract of service. He relies on the so-called “control test”, saying that he was given little, if any, direction or control by Redrock and cites passages from the judgment of Evershed MR in Stevenson Jordan & Harrison Ltd v MacDonald & Evans [[1952] I TLR 101]. However, 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. So, in Beloff v Pressdam Ltd [[1973] 1 All ER 241]] Ungoed-Thomas J cited with approval a number of passages to this effect and then said at 250: It thus appears, and rightly in my respectful view, that, the greater the skill required for an employee’s work, the less significant is control in determining whether the employee is under a contract of service. Control is just one of many factors whose influence varies according to circumstances. In such highly skilled work as that of the plaintiff it seems of no substantial significance. The test which emerges from the authorities seems to me, as Denning LJ said, whether on the one hand the employee is employed as part of the business and his work is an integral part of the business, or whether his work is not integrated into the business but is only accessory to it, or, as Cooke J expressed it, the work is done by him in business on his own account. [573] In this case, there is no doubt that Mr Hinkley as a software programmer exercised a high degree of professional skill and expertise in the performance of his duties for Redrock. Moreover, 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. I therefore conclude that the evidence about control does not in the circumstances of this case establish that Mr Hinkley was employed under a contract for services. In his judgment in Stevenson Jordan & Harrison Ltd v MacDonald & Evans [op cit at 111] Lord Denning expressed reservations about the control test, and instead enunciated the famous passage which was to become the “integration test”: As [Evershed MR] has said it is almost impossible to give a precise definition of the distinction [between a contract of service and a contract for services]. It is often quite easy to recognise a contract of service when you see it, but very difficult to say wherein the difference lies. A ship’s master, a chauffeur, and a reporter on the staff of a newspaper are all employed under a contract of service; but a ship’s pilot, a taxi-man, and a newspaper contributor are employed under a contract for services. One feature which seems to me to run through the instances is that, under a contract of service, a man is employed as part of the business and his work, although done for the business, is not integrated into it but is only accessory to it. The “integration” or “organisation” test has not been embraced by the High Court of Australia. However, it may be helpful in an appropriate case as one indicator of the totality of the relationship between the parties, all aspects of which must be considered: Stevens v Brodribb Sawmilling Co Pty Ltd [(1986) 160 CLR 16 at 27 per Mason J, and at 36-37 per Wilson and Dawson JJ]. In doing so, I find that Mr Hinkley’s work as a software programmer was integrated into the business of Redrock. Mr Hamilton gave evidence in his witness statement that in the first four years of its business Redrock’s emphasis 180 [5.210]

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Redrock Holdings v Adam Hinkley cont. was in developing the intellectual property in its products and that, after its staff, those products were the most significant asset of the company. Mr Hinkley’s work as a programmer was therefore central to developing the business of Redrock. 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 1995. He was entitled to annual leave, to sick leave and to long service leave. Superannuation contributions were made by Redrock on his behalf. Redrock provided Mr Hinkley with necessary equipment and with programs such as CodeWarrior 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. Indeed, 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 in or about November 1995. … [574] … A very significant aspect of this case, already touched upon, must now be emphasised. The library was from November 1995 being developed not only to better serve as a tool with which to write software (a) for Adam Hinkley and his father, and (b) for the clients of Redrock, but also as a necessary component in the operating capacity of all the software in categories (a) and (b). In other words, the latter, as well as being built by means of the former (that is, with the class library being used as a tool), could not “run” without the class library. In these circumstances, if Mr Hinkley proposed to fulfil his obligations to his employer by drawing upon the library by means which might in the absence of prior agreement blur the question of ownership of the copyright in the library, it fell to Mr Hinkley, as the only repository of the relevant information, to place his employer in a position from which employer and employee, both being fully informed of the relevant facts, could either negotiate a mutually satisfactory resolution to the copyright problem or go their separate ways. … By contrast, it was immaterial to Redrock whether Mr Hinkley developed the software that he was employed to write by resort to one “library” or another – or, indeed, if it was technically feasible, by resort to no library at all. It was similarly immaterial to Redrock whether Mr Hinkley so arranged the software he wrote that some part of an entire package could or could not function independently of another part of the package; if he chose to design a program in such a way that some part of it could not “run” without resort to another, that was his business. But he was employed to create a functional software package, and Redrock were entitled to such protection as was necessary to ensure that functionality. … [580] … I turn now to the question of whether the library software was written during working hours at Redrock. This was an issue to which much time was devoted during the course of the trial. It is an important issue. It is nevertheless also important to record that the ultimate question – that concerning the ownership of copyright in the AW library – depends more on the relationship between the library and the programs written by Mr Hinkley for Redrock than on an identification of the times during which work on the library continued. The plaintiffs contend that, while at work, Mr Hinkley wrote a significantly large part of the library for the purpose of developing software for use by customers of Redrock. Mr Hinkley says the library was developed “almost entirely” outside his life as an employee of Redrock. He says he frequently worked throughout the night and on the weekends making substantial changes to the library. He relies on the fact that he used a portable hard disk to carry the library to and from work, much as a builder might carry his toolbox to work. … [583] … I have little doubt that Mr Hinkley spent some time, outside the hours of his employment, working on the class library as well as on Hotline and eText. I nevertheless find that something in the order of [5.210]

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Redrock Holdings v Adam Hinkley cont. 90% of the development of the AppWarrior library occurred during ordinary business hours and while Mr Hinkley was physically present at the Redrock premises. Much of this time was used in refining AW to operate more effectively with software which Mr Hinkley was writing for Redrock; but, the library being a tool of general application, this work would have assisted, directly or indirectly, the development of the Hotline and eText software as well. This of itself, being a natural concomitant of work that directly benefited Redrock, could not have been the ground of any complaint by that company as Mr Hinkley’s employer. On the other hand, neither could it found any viable claim by Mr Hinkley to copyright in anything. … [584] … For all these reasons, I conclude that, on the balance of probabilities, a very significant proportion of the AW software was written by Mr Hinkley for work-related purposes and during work hours. I also conclude that all the Redrock software written by Mr Hinkley was written during the course of his employment and (with the possible exception of work done at home during transport strikes or other irregular and infrequent circumstances) during work hours. My additional finding that SPFS and other Redrock programs were dependent for their operational capacity upon the AW software leads me to the further conclusion that Redrock was the owner of the copyright in the AW library when Mr Hinkley, without any warning, left that company’s employ in September 1997. During the period of his employment, moreover, the library had been transformed. The copyright which subsisted in November 1995 subsisted in the library as it then was. By September 1997, it was no longer that library. What little original material then remained had been absorbed into a much larger entity capable of performing altogether different tasks. The literary work of September 1997 was a new literary work, made by Adam Hinkley “in pursuance of the terms of his … employment … under a contract of service”: Copyright Act, s 35(6).

Community ownership [5.220] In John Bulun Bulun v R & T Textiles Pty Ltd (1998) 41 IPR 513 in the Federal

Court, the plaintiff attempted to establish a claim of community ownership in the copyright of the artistic works that he had created and which had been subject to infringement of copyright.

John Bulun Bulun v R & T Textiles [5.230] John Bulun Bulun v R & T Textiles Pty Ltd (1998) 41 IPR 513 Federal Court of Australia VON DOUSSA J: [515] These proceedings arise out of the importation and sale in Australia of printed clothing fabric which infringed the copyright of the first applicant Mr Bulun Bulun, in the artistic work known as “Magpie Geese and Water Lilies at the Waterhole” (the artistic work). The proceedings were commenced on 27 February 1996 by Mr Bulun Bulun and the second applicant, Mr George Milpurrurru. Both applicants are leading Aboriginal artists. The respondents were at that time, R & T Textiles Pty Ltd (the respondent) and its three directors. Mr Bulun Bulun sued as the legal owner of the copyright pursuant to the Copyright Act 1968 (Cth) for remedies for the infringement, for contraventions of sections of Part V of the Trade Practices Act 1974 (Cth) dealing with misleading or deceptive conduct, and for nuisance. Mr Milpurrurru brought the proceedings in his own right and as a representative of the traditional Aboriginal owners of Ganalbingu country which is situated in Arnhem Land, in the Northern Territory of Australia. He claims that the traditional Aboriginal owners of Ganalbingu country are the equitable owners of the copyright subsisting in the artistic work. These proceedings represent another step by Aboriginal people to have communal title in their traditional ritual knowledge, and in particular in their artwork, recognised and protected by the 182 [5.220]

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John Bulun Bulun v R & T Textiles cont. Australian legal system. The inadequacies of statutory remedies under the Copyright Act 1968 as a means of protecting communal ownership have been noted in earlier decisions of this Court: see Yumbulul v Reserve Bank of Australia (1991) 21 IPR 481 at 490 and Milpurrurru v Indofurn Pty Ltd (1994) 54 FCR 240 at 247. See also McKeough and Stewart “Intellectual Property and the Dreaming”, published in Indigenous Australia and the Law, Johnston, Hinton & Rigney eds (1997); Henderson “What’s in a Painting? The Cultural Harm of Unauthorised Reproduction” (1995) 17 Syd Law Rev 591 at 593; Ellison, “Unauthorised Reproduction of Traditional Aboriginal Art” (1994) 17 UNSWLJ 327; and Stopping the Rip-Offs: Intellectual Property Protection for Aboriginal and Torres Strait Islander Peoples (1994, National Capital Printing) where it was said at p 6: While joint authorship of a work by two or more authors is recognised by the Copyright Act, collective ownership by reference to any other criterion, for example, membership of the author of a community whose customary laws invest the community with ownership of any creation of its members is not recognised. … Evidence in Mr Milpurrurru’s claim [517] … The amended application in this case alleges that the Ganalbingu people are the traditional Aboriginal owners of Ganalbingu country who have the right to permit and control the production and reproduction of the artistic work under the law and custom of the Ganalbingu people. … Mr Milpurrurru is the most senior person of all the Ganalbingu people. The Ganalbingu people are divided into “top” and “bottom” people as is the Ganalbingu country. Mr Milpurrurru is a “top” Ganalbingu. Mr Bulun Bulun is the most senior person of the “bottom” Ganalbingu and is second in line to Mr Milpurrurru of the Ganalbingu people generally. Djulibinyamurr is the site of a waterhole complex situated close to the eastern side of the Arafura Swamp between the Glyde and Goyder river systems and the Woolen River. Djulibinyamurr, along with another waterhole site, Ngalyindi, are [518] the two most important sites on Ganalbingu country for the Ganalbingu people. … Mr Bulun Bulun explained that the classes of people, described earlier in these reasons, who comprise the traditional Aboriginal owners of Ganalbingu country have interests in Djulibinyamurr and also in the Madayin including paintings such as the artistic work. Many of these people would need to be consulted on any matter that concerned Djulibinyamurr. He went on to say: In … cases where it has been agreed in principle that the types of uses in question are allowable direct consultation and approval may not be necessary. If Bulun Bulun wanted to licence “at the Waterhole” so that somebody could mass produce it in the way that the Respondents have he would need to consult widely. If he wanted to licence “at the Waterhole” to a publisher to reproduce the painting in an art book he probably would not need to consult the other traditional Aboriginal owners at all. The question in each case depends on the use and the manner or mode of production. But in the case of a use which is one that requires direct consultation, rather than one for which approval has been already given for a class of uses, all of the traditional Aboriginal owners must agree. There must be total consensus. Bulun Bulun could not act alone to permit the reproduction of “at the Waterhole” in the manner as was done. … Why the claim is confined to one for recognition of an equitable interest The submissions of counsel for the applicants reflected a wide ranging search for a way in which the communal interests of the traditional Aboriginal owners in cultural artworks might be recognised under Australian law. This exercise was painstakingly pursued by counsel for the applicants (and later [5.230]

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John Bulun Bulun v R & T Textiles cont. by counsel for the Minister). That the claim was ultimately confined to one for recognition of an equitable interest in the legal copyright of Mr Bulun Bulun is an acknowledgment that no other possible avenue had emerged from the researches of counsel. While it is superficially attractive to postulate that the common law should recognise communal title, it would be contrary to established legal principle for the common law to do so. There seems no reason to doubt that customary Aboriginal laws relating to the ownership of artistic works survived the introduction of the common law of England in 1788. The Aboriginal peoples did not cease to observe their sui generis system of rights and obligations upon the acquisition of sovereignty of Australia by the Crown. The question however is whether those Aboriginal laws can create binding obligations on persons outside the relevant Aboriginal community, either through recognition of those laws by the common law, or by their capacity to found equitable rights in rem. … Section 35(2) of the Copyright Act 1968 provides that the author of an artistic work is the owner of the copyright which subsists by virtue of the Act. That provision effectively precludes any notion of group ownership in an artistic work, unless the artistic work is a “work of joint ownership” within the meaning of s 10(1) of the Act. A “work of joint authorship” means a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors. In this case no evidence was led to suggest that anyone other than Mr Bulun Bulun was the creative author of the artistic work. A person who supplies an artistic idea to an artist who then executes the work is not, on that ground alone, a joint author with the artist: Kenrick & Co v Lawrence & Co (1890) 25 QBD 99. Joint authorship envisages the contribution of skill and labour to the production of the work itself: Fylde Microsystems Ltd v Key Radio Systems Ltd (1998) 39 IPR 481 at 486. In Coe v The Commonwealth (1993) 118 ALR 193 at 200 Mason CJ rejected the proposition that Aboriginal people are entitled to rights and interests other than those created or recognised by the laws of the Commonwealth, its States and the common law. See also Walker v New South Wales at 45-50 and Kirby J in Wik Peoples v Queensland at 214. To conclude that the Ganalbingu people were communal owners of the copyright in the existing work would ignore the provisions of s 8 of the Copyright Act, and involve the creation of rights in indigenous peoples which are not otherwise recognised by the legal system of Australia. [526] Do the circumstances in which the artistic work was created give rise to equitable interests in the Ganalbingu people? The statement of claim alleges “on the reduction to material form of a part of the ritual knowledge of the Ganalbingu people associated with Djulibinyamurr by the creation of the artistic work, the First Applicant held the copyright subsisting in the artistic work as a fiduciary and/or alternatively on trust, for the second applicant and the people he represents”. The foundation for this contention is expanded in written submissions made on Mr Milpurrurru’s behalf. It is contended that these rights arise because Mr Milpurrurru and those he represents have the power under customary law to regulate and control the production and reproduction of the corpus of ritual knowledge. It is contended that the customs and traditions regulating this use of the corpus of ritual knowledge places Mr Bulun Bulun as the author of the artistic work in the position of a fiduciary, and, moreover, make Mr Bulun Bulun a trustee for the artwork, either pursuant to some form of express trust, or pursuant to a constructive trust in favour of the Ganalbingu people. The right to control the production and reproduction of the corpus of ritual knowledge relating to Djulibinyamurr is said to arise by virtue of the strong ties which continue to exist between the Ganalbingu people and their land. Was there an express trust? 184 [5.230]

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John Bulun Bulun v R & T Textiles cont. The possibility that an express trust was created in respect of the artistic work or the copyright subsisting in it was not at the forefront of the applicants’ submissions. In my opinion that possibility can be dismissed on the evidence in this case. … [527] … Did Mr Bulun Bulun hold the copyright as a fiduciary? In Breen v Williams (1996) 186 CLR 71 at 82, Brennan CJ identified two sources of fiduciary duties, the first being the circumstances in which a relationship of agency can be said to exist, and the other is founded in a relationship of ascendancy or influence by one party over another, or dependence or trust on the part of that other. The applicants’ counsel did not seek to characterise the fiduciary relationship for which he contends as derived from either source in particular. The existence of a fiduciary relationship is said to arise out of the nature of ownership of artistic works amongst the Ganalbingu people. … [528] … The factors and relationships giving rise to a fiduciary duty are nowhere exhaustively defined: Mabo [No 2], at 200 per Toohey J, Hospital Products v USSC (1984) 156 CLR 41 at 68, 96-97, PD Finn, Fiduciary Obligations (1977), p 1, and News Ltd v ARL at 564. It has been said that the term “fiduciary relationship”, defies definition: Breen v Williams at 106 per Gaudron and McHugh JJ, see also Gibbs CJ in Hospital Products v USSC at 69. For this reason the fiduciary concept has developed incrementally throughout the case law which itself provides guidance as to the traditional parameters of the concept. The essential characteristics of fiduciary relationships were referred to by Mason J in Hospital Products at 96-97: The critical feature of [fiduciary] relationships is that the fiduciary undertakes or agrees to act for or on behalf of or in the interests of another person in the exercise of a power or discretion which will affect the interests of that other person in a legal or practical sense. The relationship between the parties is therefore one which gives the fiduciary a special opportunity to exercise the power or discretion to the detriment of that other person who is accordingly vulnerable to abuse by the fiduciary of his position … It is partly because the fiduciary’s exercise of the power or discretion can adversely affect the interests of the person to whom the duty is owed and because the latter is at the mercy of the former that the fiduciary comes under a duty to exercise his power or discretion in the interests of the person to whom it is owed. In Mabo, Toohey J said at 200: Underlying such relationships is the scope for one party to exercise a discretion which is capable of affecting the legal position of the other. One party has a special opportunity to abuse the interests of the other. The discretion will be an incident of the first party’s office or position. … [529] … The relationship between Mr Bulun Bulun as the author and legal title holder of the artistic work and the Ganalbingu people is unique. The “transaction” between them out of which the fiduciary relationship is said to arise is the use with permission by Mr Bulun Bulun of ritual knowledge of the Ganalbingu people, and the embodiment of that knowledge within the artistic work. That use has been permitted in accordance with the law and customs of the Ganalbingu people. The grant of permission by the djungayi and other appropriate representatives of the Ganalbingu people for the creation of the artistic work is predicated on the trust and confidence which those granting permission have in the artist. The evidence indicates that if those who must give permission do not have trust and confidence in someone seeking permission, permission will not be granted. The law and customs of the Ganalbingu people require that the use of the ritual knowledge and the artistic work be in accordance with the requirements of law and custom, and that the author of the [5.230]

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John Bulun Bulun v R & T Textiles cont. artistic work do whatever is necessary to prevent any misuse. The artist is required to act in relation to the artwork in the interests of the Ganalbingu people to preserve the integrity of their culture, and ritual knowledge. This is not to say that the artist must act entirely in the interests of the Ganalbingu people. The evidence shows that an artist is entitled to consider and pursue his own interests, for example by selling the artwork, but the artist is not [530] permitted to shed the overriding obligation to act to preserve the integrity of the Ganalbingu culture where action for that purpose is required. In my opinion, the nature of the relationship between Mr Bulun Bulun and the Ganalbingu people was a fiduciary one which gives rise to fiduciary obligations owed by Mr Bulun Bulun. The conclusion that in all the circumstances Mr Bulun Bulun owes fiduciary obligations to the Ganalbingu people does not treat the law and custom of the Ganalbingu people as part of the Australian legal system. Rather, it treats the law and custom of the Ganalbingu people as part of the factual matrix which characterises the relationship as one of mutual trust and confidence. It is that relationship which the Australian legal system recognises as giving rise to the fiduciary relationship, and to the obligations which arise out of it. … The fiduciary obligation Central to the fiduciary concept is the protection of interests that can be regarded as worthy of judicial protection: Glover, Commercial Equity – Fiduciary Relationships (1995), para 3.4. The evidence is all one way. The ritual knowledge relating to Djulibinyamurr embodied within the artistic work is of great importance to members of the Ganalbingu people. I have no hesitation in holding that the interest of Ganalbingu people in the protection of that ritual [531] knowledge from exploitation which is contrary to their law and custom is deserving of the protection of the Australian legal system. Under the Copyright Act, the owner of the copyright has the exclusive right to reproduce the work in a material form, and to publish the work. The copyright owner is entitled to enforce copyright against the world at large. In the event of infringement, the copyright owner is entitled to sue and to obtain remedies of the kind actually obtained by Mr Bulun Bulun in this case. Having regard to the evidence of the law and customs of the Ganalbingu people under which Mr Bulun Bulun was permitted to create the artistic work, I consider that equity imposes on him obligations as a fiduciary not to exploit the artistic work in a way that is contrary to the laws and custom of the Ganalbingu people, and, in the event of infringement by a third party, to take reasonable and appropriate action to restrain and remedy infringement of the copyright in the artistic work. Whilst the nature of the relationship between Mr Bulun Bulun and the Ganalbingu people is such that Mr Bulun Bulun falls under fiduciary obligations to protect the ritual knowledge which he has been permitted to use, the existence of those obligations does not, without more, vest an equitable interest in the ownership of the copyright in the Ganalbingu people. Their primary right, in the event of a breach of obligation by the fiduciary is a right in personam to bring action against the fiduciary to enforce the obligation. In the present case Mr Bulun Bulun has successfully taken action against the respondent to obtain remedies in respect of the infringement. There is no suggestion by Mr Milpurrurru and those whom he seeks to represent that Mr Bulun Bulun should have done anything more. In these circumstances there is no occasion for the intervention of equity to provide any additional remedy to the beneficiaries of the fiduciary relationship. … On the other hand, were Mr Bulun Bulun to deny the existence of fiduciary obligations and the interests of the parties asserting them, and refuse to protect the copyright from infringement, then the 186 [5.230]

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John Bulun Bulun v R & T Textiles cont. occasion might exist for equity to impose a remedial constructive trust upon the copyright owner to strengthen the standing of the beneficiaries to bring proceedings to enforce the copyright. This may be necessary if the copyright owner cannot be identified or found and the [532] beneficiaries are unable to join the legal owner of the copyright: see Performing Rights Society Ltd v London Theatre of Varieties [1924] AC 1 at 18. It is well recognised that interlocutory injunctive relief can be claimed by a party having an equitable interest in copyright: Laddie, Prescott and Vittoria, The Modern Law of Copyright (1995), para 11.79-11.81, although as a matter of practice injunctive relief will not be granted without the legal owner of copyright being joined: Performing Rights Society Ltd v London Theatre of Varieties at 19-20, 29, Acorn Computers Ltd v MCS Microcomputer Systems Pty Ltd (1984) 57 ALR 389 at 394. For an example of proceedings brought to establish the existence of an equitable interest in copyright based on a constructive trust imposed in consequence of a breach of fiduciary duty see Missinglink Software v Magee [1989] 1 FSR 361 at 367. I do not consider Mr Milpurrurru and those he seeks to represent have established an equitable interest in the copyright in the artistic work. In my opinion they have established that fiduciary obligations are owed to them by Mr Bulun Bulun, but as Mr Bulun Bulun has taken appropriate action to enforce the copyright, he has fulfilled those obligations and there is no occasion to grant any additional remedy in favour of the Ganalbingu people. However, in other circumstances if the copyright owner of an artistic work which embodies ritual knowledge of an Aboriginal clan is being used inappropriately, and the copyright owner fails or refuses to take appropriate action to enforce the copyright, the Australian legal system will permit remedial action through the courts by the clan. For these reasons, the proceedings by Mr Milpurrurru must be dismissed.

CROWN COPYRIGHT [5.240] The Copyright Act 1968 (Cth) ss 176 – 183F deal with copyright in original works

and subject matter made or published in Australia under the direction of the Crown. The Crown owns copyright of works, recordings and films “made by, or under the direction or control of, the Commonwealth or a State, as the case may be” (s 176(2)). “State” includes the administration of a “Territory” (s 10(3)(n)). Copyright may arise (and be owned by the Crown) in material that would not otherwise fulfil the criteria of the Copyright Act 1968 (Cth) as to subsistence of copyright; for example, due perhaps to the author not being a qualified person. Thus, the Crown has copyright in material made under its direction or control, irrespective of the nationality or residence of the author, or the place of first publication, but of course it may arise in the normal way and belong to the Crown by virtue of s 35(6): see Director-General of Education v Public Service Association of New South Wales (1985) 4 IPR 552. The interpretation of “under direction or control” was examined in Copyright Agency Ltd v State of New South Wales [2007] FCAFC 80. The Full Federal Court held that in order for a work to be made under the direction or control of the Crown, the Crown must bring about the making of the work. It was not sufficient that the Crown prescribed how such a work is to be made, if a citizen chooses to make a work without any obligation to do so (at [125]). The term of Crown copyright is generally 50 years from the end of the calendar year in which the work is published (in the case of literary, dramatic or musical works, engravings or [5.240]

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photographs, or films) or first made (in the case of artistic works) (ss 180 – 181). In the case of unpublished works, the copyright continues to subsist in the Crown so long as the work remains unpublished (s 180(1)(a)). The Copyright Act 1968 (Cth) makes it clear in s 8A(1) that no prerogative right or privilege of the Crown is affected by the legislation. The extent of this prerogative is unclear, but it seems to be a relic of the censorship and concern with public order evinced by the Crown in Anglo-Australian copyright law. In 2005, the Copyright Law Review Committee (CLRC) examined “Crown Copyright”. The chief concern was whether government should be in a privileged position compared with other owners of copyright. The CLRC recommended the repeal of special Crown copyright subsistence and ownership provisions in the Copyright Act 1968 (Cth) Part VII Division 1 (ss 176 – 179). The Committee preference was that the usual copyright ownership rules should apply, rather than special default provisions that advantage the government in negotiations and mean that failure to conclude negotiations result in the creator losing copyright. In the interest of the public domain, the Committee recommended retaining a 50-year duration of copyright for published literary, dramatic and musical works, films, sound recordings and artistic works. The CLRC also noted that “new technology has improved the accessibility of information for many people, (but) it has also allowed the development of new protection measures which can restrict that access”. 1 Accordingly, a general policy consideration in regard to Crown copyright should be recognition that “open access to government information is an essential characteristic of modern democracy” and “there is great danger in the possibility of government using copyright as an instrument of censorship”. 2 However, the CLRC’s recommendations have not been acted upon to date, and the CLRC has since been disbanded.

Copyright Agency v New South Wales [5.250] Copyright Agency Ltd v State of New South Wales (2007) [2007] FCAFC 80 Federal Court of Australia, Full Federal Court [The Copyright Agency Ltd is a collecting society, for the purposes of the Copyright Act 1968 (Cth). The members of the society include members of the Australian Consulting Surveyors Association (Surveyors’ Association). The Copyright Agency Ltd Society applied to the Copyright Tribunal (the Tribunal) for orders under Copyright Act 1968 ss 183(5) and 183A(2) in respect of dealings by the State of New South Wales (the State) with survey plans prepared by surveyors who were members of the Surveyors’ Association. The Federal Court was requested by the Tribunal to determine certain questions of law concerning copyright in survey plans made by members of the Surveyors’ Association, which are artistic works within the meaning of the Copyright Act 1968.] EMMETT J: Copyright and the Crown 120. There are relevantly two aspects of copyright in original literary, dramatic, musical or artistic works, in relation to the Crown. The first concerns ownership of copyright by the Crown. That aspect is regulated by ss 176 and 177 of the Copyright Act. The second aspect concerns the right of the 1 2

Copyright Law Review Committee, Crown Copyright, Report, Commonwealth of Australia (2005), p xxv. Copyright Law Review Committee, Crown Copyright, Report, Commonwealth of Australia (2005), pp xxvxxvi.

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Copyright Agency v New South Wales cont. Crown to do acts comprised in the copyright in a work owned by someone else. That aspect is regulated by ss 183 and 183A of the Copyright Act. Ownership of copyright by the Crown 121. Section 176(2) of the Copyright Act relevantly provides that the State is the owner of the copyright in an artistic work made by, or under the direction or control of, the State. Section 177 of the Copyright Act relevantly provides that a State is the owner of the copyright in an artistic work first published in Australia if first published by, or under the direction or control of, the State. Sections 176 and 177 have their genesis in s 39 of the Copyright Act 1956 (UK). Those provisions, in turn, trace their origin to s 18 of the Copyright Act 1911(UK) (the 1911 Act). 122. Since the enactment of the 1911 Act, the phrase “by, or under the direction or control of, the [Crown]” has governed ownership of copyright by the Crown, both in works made by or under the direction or control of the Crown in its various manifestations, and works first published by or under the direction or control of the Crown. “By” is concerned with those circumstances where a servant or agent of the Crown brings the work into existence for and on behalf of the Crown. “Direction” and “control” are not concerned with the situation where the work is made by the Crown but with situations where the person making the work is subject to either the direction or control of the Crown as to how the work is to be made. In the copyright context, that may mean how the work is to be expressed in a material form. 123. Direction might mean order or command, or management or control (Macquarie Dictionary Online). Direction might also mean instructing how to proceed or act, authoritative guidance or instruction, or keeping in right order management or administration (Oxford English Dictionary Online). 124. Control might mean the act or power of controlling, regulation, domination or command (Macquarie Dictionary Online). Control might also mean the fact of controlling or of checking and directing action, the function or power of directing and regulating, domination, command, sway: Shorter Oxford English Dictionary (5th ed, Oxford University 2002). 125. Thus, when the provisions refer to a work being made under the direction or control of the Crown, in contrast to being made by the Crown, the provisions must involve the concept of the Crown bringing about the making of the work. It does not extend to the Crown laying down how a work is to be made, if a citizen chooses to make a work, without having any obligation to do so. 126. The question is whether the Crown is in a position to determine whether or not a work will be made, rather than simply determining that, if it is to be made at all, it will be made in a particular way or in accordance with particular specifications. The phrase “under the direction or control” does not include a factual situation where the Crown is able, de facto, to exercise direction or control because an approval or licence that is sought would not be forthcoming unless the Crown’s requirements for such approval or licence are satisfied. The phrase may not extend much, if at all, beyond commission, employment and analogous situations. It may merely concentrate ownership in the Crown to avoid the need to identify particular authors, employees or contracting parties. 127. The Parliament did not intend that the Crown would gain copyright, or share in copyright, simply as a side effect of a person obtaining a statutory or other regulatory approval or licence from the Crown. The Parliament is hardly likely to have intended that copyright would be lost merely by reason of satisfying a requirement or prerequisite for the grant by the Crown of an approval or a licence for something. The provisions in question were not intended to have the consequence that, where an approval or licence by the Crown was required in respect of a work, copyright would vest in the Crown as a side wind of the work complying with the requirements for such approval or licence (see Land Transport Safety Authority of New Zealand v Glogau [1999] 1 NZLR 261 at 272-273). [5.250]

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Copyright Agency v New South Wales cont. 128. In relation to the first publishing of a work, as distinct from the making of a work, there must also be an element of the Crown determining whether or not the work is to be published. That may occur by operation of a statute or other regulatory provision that requires publication of a work that has a particular status, such as being registered, approved or the subject of a licence. The critical question, however, will be when such a work is first published. 129. Under s 29(1)(a) of the Copyright Act, an artistic work is to be deemed to be published if, but only if, reproductions of the work have been supplied to the public. Under s 29(6), in determining whether a work has been published or whether a publication of the work was the first publication of the work, any unauthorised publication or the doing of any other unauthorised act is to be disregarded. Under s 29(7), a publication is for those purposes to be taken to have been unauthorised if, but only if, copyright subsisted in the work and the act concerned was done otherwise than by, or with the licence of, the owner of the copyright. 130. Under s 31, copyright, in relation to an artistic work, is the exclusive right to do all or any of the following acts: • to reproduce the work in a material form; • to publish the work; • to communicate the work to the public. 131. Under s 183(8), an act done under s 183(1) does not constitute publication of a work. Thus, if the making available of a work to the public by the State is done under s 183, it does not constitute publication. A fortiori, it is not first publication. On the other hand, if such making available by the State is not done under s 183(1), and there is no other licence taken to have been granted to the State to make a work available, it would follow that those acts of the State would be an unauthorised publication and, accordingly, under s 29(6) must be disregarded in determining whether the work has been published and whether the publication was the first publication of the work.

EXPLOITATION [5.260] Despite the introduction of moral rights into Australian copyright law in late 2000,

and although the branches of copyright may share some notion of non-utilitarian, cultural significance, it has been the case that, in Australian law, copyright is basically concerned with economic exploitation. The introduction of more recent “other subject matter” varieties of copyright in Copyright Act 1968 (Cth) Part IV emphasises this commercial aspect. The rights in subject matter other than works derive from manufacturing and technological procedures, and engender discrete copyrights, while embodying concomitant author’s copyrights in the works thus represented. The protection of economic rights – which may be dealt with as a form of property – may have emphasised one aspect of copyright at the expense of moral rights, which have long been recognised in Europe. The Berne Convention for the Protection of Literary and Artistic Works (Paris 1971 version), of which Australia is a member, states in Article 6(1) that: Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honour or reputation.

The new regime of moral rights is regarded by some users of copyright work as a commercial problem or inconvenience. See, for example, Wilson v Weiss Art Pty Ltd (1995) 31 IPR 423 (at 190 [5.260]

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[5.280] below), where the use of material by an advertising agency may be subject to moral rights. One of the most debated aspects of the moral rights regime was the issue of whether the rights could be waived; obviously no-one would contract with a writer who refused to waive their rights, and the view put forward was that the personal moral rights are inalienable and can never be waived. In the end, there are “consent” provisions in the legislation (Copyright Act 1968 (Cth) ss 195AW – 195AWA) allowing written permission to be given by an author to excuse acts or omissions that may otherwise contravene the author’s moral rights. The most lucrative copyright works are often exploited in a number of ways. A popular novel may be marketed as a volume (book), serial (in newspapers and magazines), translation, film, play, opera, musical or ballet. In addition, licensing for inclusion in electronic databases, and other digital uses, are all within the copyright owner’s rights. The Copyright Act 1968 (Cth) s 196(2) allows these rights to be assigned or licenced separately. Furthermore, these rights can be confined geographically (s 196(2)(b)) and temporally (s 196(2)(c)). An assignment is a transfer of ownership of the copyright in the work or other subject matter, whereas a licence is merely the granting of permission to do an act comprised in the copyright.

ASSIGNMENT [5.270] An assignment is a transfer of the exploitation rights of copyright. It enables the

creator of an original work to sell or transfer their copyright in all or in part to another individual or corporation. The Copyright Act 1968 (Cth) s 196 provides that copyright is personal property and transmissible by assignment, will and devolution of law. An assignment of copyright may be partial or total. It may also be perpetual or for a specific period. If unlimited in terms of scope and duration, there is no right of reversion. When a right is assigned the assignor has no power to control the way the work is exploited unless by contract with the assignee. Under s 196(1), “Copyright is personal property and, subject to this section, is transmissible by assignment, by will and by devolution by operation of law”. An assignment may be unlimited, giving the purchaser rights for all purposes throughout the entire life of the copyright. An assignment may be limited, that is apply only in relation to a limited part of the rights under copyright (s 196(2)), or to a period of time, or to a specific purpose, or to a certain region or territory. The assignment (whether total or partial) does not have effect unless it is in writing signed by or on behalf of the assignor (s 196(3)). It is possible to make an agreement in relation to future copyright in works not yet created to assign such copyright to another party (s 197). For example, an aspiring musician may make an agreement with a record company to assign the copyright in all works they will create in the next five years. Such assignments should be avoided because they are rarely made in the interests of the creator. However, any assignment, whether total or partial, has to be in writing and signed by the assignor. While the Act does not require any specific formulation or wording for the purposes of s 196(3), it must be apparent that the formal document is one of assignment and not a mere licence or conveyance of rights of property other than copyright (see Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 95 ALR 275; Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd (2005) 67 IPR 497).

[5.270]

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Wilson v Weiss Art [5.280] Wilson v Weiss Art Pty Ltd (1995) 31 IPR 423 Federal Court of Australia [Faye Wilson, the applicant, was an artist and an illustrator. Between 1982 and 1987, at the request of McSpedden Carey, an advertising agency, she executed various drawings. At least at the outset, the agency was the advertising agent for Peter Weiss, a clothing manufacturer and vendor. In these these proceedings, she claimed that the respondent, Weiss Art Pty Ltd, without her licence, reproduced or procured the reproduction of some or all of these drawings, published them or sold articles, which constituted an infringement of her copyright in the drawings. In consequence, she claims, inter alia, a declaration that the respondent has infringed her copyright, injunctive relief and damages or an accounting of profits.] HILL J: [425] … There is little evidence of the initial commercial arrangement between Ms Wilson and the Agency. Mr Pavlovitch did not suggest in his evidence that he had any commercial discussions with Ms Wilson. He led her to believe that the Agency wished to have the right to cut up and change the illustrations if they were to be used. Most of the discussion probably centred upon the requirement that the drawings be in “the Weiss style”. There was no discussion about copyright. Mr Pavlovitch made it clear to Ms Wilson that the drawings were for use in advertising products of Weiss and there was no discussion concerning the use of the drawings for merchandising purposes. From 1982 Ms Wilson supplied drawings upon request. The initial procedure adopted where drawings were required was that the Agency would issue a work order indicating the subject or concept to be adopted. Ms Wilson would prepare a number of drawings and present them. It was clearly understood by the parties that not all of the drawings would be used and payment would be made only in respect of drawings which the Agency wished to use. Having made that decision, the Agency issued a purchase order to Ms Wilson in respect of the drawing to be used. She, in turn, then invoiced the Agency by reference to that purchase order. Initial drawings were for use in advertisements to be placed in the media. According to Ms Wilson’s evidence Mr Pavlovitch said to her, words to the effect, “these are for newspaper advertisements and when you invoice me make a note to that effect”. … [427] … It seems clear enough that Ms Wilson was told nothing about the plans which Mr McSpedden had for a joint venture between the Agency and PWPL. The proposal for that joint venture appears to have been under way by about May 1986 when a shelf company was acquired, the shares in which were held as to one share by Mr McSpedden, one share by Mr Carey and two shares by Talbridge Pty Ltd, a company associated with Mr Peter Weiss. That company changed its name to Weiss Art Pty Ltd, the respondent, on 8 October 1986. Although little is known of the circumstances surrounding the acquisition by Mr McSpedden and others of the respondent company, it is clear that its purpose was to engage in a merchandising activity, manufacturing or procuring the manufacture at a profit of various items on which appeared drawings in the Weiss style, including those of Ms Wilson. The venture was ultimately profitable. Mr McSpedden had a further conversation with Ms Wilson on or about 25 August 1986. According to Ms Wilson, this was a shorter conversation in which Mr McSpedden said words to the following effect: Look, I’ve spoken to Weiss and they’ve agreed to the proposal we discussed when I last spoke to you. I’ll send you out a cheque for $1000 for the “other uses” rights for the old illustrations and a letter outlining the new terms of payment as discussed. Mr McSpedden’s version of the conversation was as follows: Mr McSpedden: Faye, I’m just following up our last conversation when I mentioned we would be using some of your drawings on various items. 192 [5.280]

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Wilson v Weiss Art cont. Ms Wilson: What are they being used for? Mr McSpedden: We are trying to put them on everything from towels to T shirts. What we’re thinking is that we will pay you $1000 for merchandising rights for everything you have done to date. But we will also need additional drawings and for those we will pay you $500 for the drawing for advertising plus an additional $500 if we use it for merchandising. Ms Wilson: That sounds fine. Do you want me to invoice you for that or how will it happen? [428] Mr McSpedden: Well, we’ll send a cheque to you for the $1000, and you’ll invoice us as usual for new drawings after we’ve advised you they’re being used. I think it is more probable than not that Mr McSpedden was not as open as he says he was in his conversation with Ms Wilson. In particular, I would not find that he made it clear that the drawings could be used for merchandising on anything from towels to T shirts. It is clear, however, that Ms Wilson was aware that the additional payment she was to get was to permit her drawings to be used on shopping bags, caps and T shirts which were promotional adjuncts to the clothes sold by Weiss. I do not think that the conversation went beyond this. I find that no reference was made to the proposal that the respondent would merchandise for a profit a large range of items incorporating Ms Wilson’s drawings. Shortly after that telephone discussion, Mr McSpedden wrote a letter, on the Agency’s letterhead, to Ms Wilson. In that letter Mr McSpedden purported to confirm the two conversations of 11 June and 25 August “regarding costs”. The letter said, relevantly: (1) We will pay you $1000 for all rights to all material to June 1986. (2) We will pay $500 for each future illustration used for advertising. (3) We will pay an additional $500 for all rights for these illustrations. The letter enclosed a cheque for $1000 “for the rights to work up to June 1986”. … [429] The respondent launched a large range of products at David Jones in May 1987. All windows of the store displayed products bearing Ms Wilson’s drawings and the fifth and sixth floors were taken up with all manner of merchandise bearing them … At the time no order had been placed for four of these illustrations, nor had any payments been made for rights other than advertising with respect to them. Ms Wilson was away at the time of this launch but saw the display upon her return. Ms Wilson’s recollection of the next conversation with Mr McSpedden is [430] “very vague”. It seems that Mr McSpedden rang Ms Wilson after the David Jones launch to gauge her reaction to the display at that store. There was some discussion of an article in The Bulletin written about the Weiss Art concept, in which no credit was given to Ms Wilson. That was the last time that Mr McSpedden and Ms Wilson spoke to each other. There was, at the outset of the case, some dispute between the parties as to the usage of Ms Wilson’s drawings on merchandise sold by the respondent. There was also dispute as to the occasions upon which payments had been made to her. That dispute was largely resolved during the course of the hearing as a result of evidence given. … On 1 July 1987 solicitors instructed by Ms Wilson wrote to the Agency alleging copyright infringement and demanding undertakings, inter alia, to deliver up offending works. For its part, the Agency claimed that copyright in all relevant drawings vested in their client, by implication, the respondent. The correspondence led to the present proceedings. The issue between the parties is of relatively narrow compass. The respondent claims that the applicant has assigned or agreed to assign the copyright in the drawings, so far as that copyright extends to the right to reproduce the drawings on merchandise directly or indirectly, to it. [5.280]

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Wilson v Weiss Art cont. Alternatively, the respondent says that the agreements arranged by Mr McSpedden with Ms Wilson should be construed as a licence from her to use the drawings in the manner in which they have been used by the respondent. The applicant, on the other hand, denies that there has been an assignment or agreement to assign, and claims that the agreement entered into with the Agency should be construed as a personal licence operating in favour of PWPL, not the respondent. Alternatively, the respondent submits that if otherwise there was no assignment but a licence which was personal to PWPL, that the applicant is estopped from asserting that she did not irrevocably give the rights identified to the respondent. [431] … The onus in the present case lies upon the applicant to show that she is the owner of the copyright and that she has not licensed the respondent to use the drawings in the manner described: Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 171 CLR 88. Was there a partial assignment of Ms Wilson’s copyright? It is obvious enough that the questions whether there was an assignment, or equitable assignment, and the extent of the rights assigned, depend upon the construction of the agreement reached between the parties as reflected in the letter of 26 August 1986. That agreement was not wholly in writing, so the terms of the agreement must be found against the background of the two conversations of 11 June and 25 August to which reference has already been made. Nor does the parol evidence rule preclude reference to the way the parties subsequently acted for the purpose of ascertaining what their agreement was: Australian Estates Ltd v Palmer (New South Wales Court of Appeal, 22 December 1989, per Samuels JA, with whose judgment Kirby P and Meagher JA agreed). It is clear that, prior to the letter of August 1986, payment for drawings from time to time related solely to the right to reproduce the drawings for advertising products of PWPL in the print media and perhaps in other media as well. I exclude from this payments made for reproduction of particular drawings in the promotional booklet intended to be taken to Japan, where the rights conferred on PWPL were limited to that purpose. [432] … Clearly Ms Wilson did not intend, when this initial arrangement was entered into, to assign to PWPL absolutely the right to reproduce the drawings in a material form, being one of the rights referred to in s 31(1)(b) of the Copyright Act. It is clear, also, that the relations between the Agency and Ms Wilson proceeded with some informality, particularly with reference to copyright, a topic of which it would seem Mr McSpedden had a somewhat inexact knowledge. Surprising as it might seem, the Agency never attempted to obtain formal assignments of copyright in copy or drawings for the benefit of its clients, nor did it seek to document in any formal way the rights which it, on behalf of clients, obtained in works the subject of copyright. It was submitted for the respondent that the cases show that the courts “strive” to find that a particular contract operates as an assignment, rather than as a licence. This is said particularly to be the case where artistic works are concerned. I was referred to a number of cases, among which were London Printing & Publishing Alliance Ltd v Cox (1891) 3 Ch 291; EW Savory Ltd v The World of Golf Ltd [1914] 2 Ch 566; Murray v King (1984) 4 FCR 1; Chaplin v Leslie Frewin (Publishers) Ltd [1966] Ch 71; Wintergarden Theatre (London) Ltd v Millennium Productions Ltd [1948] AC 173; and Greenfield Products Pty Ltd v Rover-Scott Bonnar Ltd (1990) 17 IPR 417. Ultimately, the question whether there has been an assignment, if a legal assignment is relied upon or, if not, whether there has been an equitable assignment will depend upon whether the writing or the terms of the agreement reached reflects or reflect an intention on the part of the assignor to effect an assignment of, or to agree to assign, copyright. In reaching a conclusion upon intention the commercial significance of the transaction to the parties will, no doubt, form part of the surrounding 194 [5.280]

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Wilson v Weiss Art cont. circumstances to be considered: Messager v British Broadcasting Corporation Ltd [1929] AC 151; Loew’s Inc v Littler [1958] 2 All ER 200, both cases on facts wildly different, however, from the present. [433] Although much was made in argument of the distinction between assignment and licence, I am of the view that in the present case nothing really turns upon that distinction. It is difficult to see for present purposes what difference there could be between an equitable assignment of a limited right and the irrevocable grant for consideration of an exclusive licence to use copyright limited in a particular way. The grant of an irrevocable and exclusive licence for consideration must create in equity in favour of the licensee an interest in the copyright, no different from that created in favour of an assignee by an equitable assignment, except for the right, in an appropriate case, to call for a legal assignment. An assignee under an assignment of limited rights has by force of that assignment the exclusive right to use the rights assigned the same way as a licensee has. The important question in the present case is, if the matter is approached as an equitable assignment the extent or definition of the rights assigned or, if the matter is approached as a licence, the terms of that licence. It should be noted that no evidence was led of any assignment of rights from PWPL to the respondent. In the present case it is clear that both parties believed that the effect of the initial transaction was to confer upon PWPL, as the Agency’s client, a limited but clearly exclusive and irrevocable right to use the drawings in connection with the Weiss logo for the purposes of advertising Weiss fashion goods in the media. The real dispute between the parties is as to the legal effect of the agreement relating to the “other rights”. Although the letter from the Agency referred to “other rights”, it is clear from the context of the discussion between Mr McSpedden and Ms Wilson that neither contemplated that Ms Wilson was assigning the residue of her rights in the drawings to the Agency’s client … I would find that neither party to the agreement intended that the Agency’s principal should have the exclusive right to use the drawings upon any merchandise unconnected with “Weiss” brand fashion goods, or indeed upon any merchandise of any merchandiser. As an example discussed in the evidence illustrated, it could hardly have been contemplated that Ms Wilson was authorising the use of the drawings by some assignee of the right upon products for use in a brothel. She was clearly content, however, to authorise use of her drawings by PWPL upon items to be separately merchandised by that company, in the context that these items could be seen to be related to advertising “Weiss” brand fashion goods. Although Ms Wilson wrote on her copy of an invoice (repeating what had been written upon the purchase order from the Agency delivered to her) the words “for merchandising rights”, she did so in the context to which I have referred. … [435] Thus, if the arrangement be characterised as an equitable assignment it can be seen that Ms Wilson agreed to assign to PWPL a limited right, namely the right to reproduce the drawings in which copyright subsisted on articles to be merchandised by PWPL in connection with the Weiss logo, and as part of advertising the fashion goods which PWPL merchandised. It might be added that no evidence was adduced of any assignment of relevant copyright from PWPL to the respondent. There was evidence of an agreement between the Agency and the respondent on the Agency ceasing to be a shareholder that the Agency would assign any copyright rights to the respondent, but that would be of no assistance to the respondent’s case here. If the arrangement should properly be characterised as an exclusive licence, that licence is limited in the same way, namely, to use of the drawings on articles which would be merchandised by PWPL in connection with the Weiss logo and as part of advertising the fashion goods which PWPL merchandised. [5.280]

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Wilson v Weiss Art cont. Although, as I have said, I do not think the result in the present case differs depending upon the characterisation of the right conferred as an equitable assignment or irrevocable licence, I am inclined to the view that a licence was intended, particularly having regard to the close connection which the right conferred had to PWPL and the products which that company marketed. … [436] I would thus conclude that the use by the respondent of the drawings, the copyright in which continued in Ms Wilson, involved an infringement of Ms Wilson’s copyright without her licence.

Effect of assignment [5.290] Once an assignment of copyright is made, the assignee may exercise and enforce all

relevant rights to the exclusion of the assignor. Areas of difficulty with regard to the assignment of copyright may arise in three ways: • where the assignor seeks to continue to exercise moral rights; • where a later work by the same creator may infringe the assigned work (see Copyright Act 1968 (Cth) s 72); and • in respect of the trade practices implications of certain organisations wielding power due to the aggregation of assigned rights. All exercises of IP rights, including assignment and licensing of copyright, have been subject to the operation of Part IV of the Trade Practices Act 1974 (Cth). Part IV regulated restrictive dealings affecting competition within a market, and encompassed anti-competitive conduct, resale price maintenance, and misuse of market power. Section 51(3) of the Act exempted conditions in intellectual property assignments and licences from Part IV to the extent that they related to the subject matter of an intellectual property right. However, this exemption did not extend to the misuse of market power (ss 46, 46A) or resale price maintenance (s 48). On 1 January 2011, the Trade Practices Act 1974 (Cth) was restructured as the Competition and Consumer Act 2010 (Cth), after an extensive revamping. The unconscionable conduct and consumer protection Parts (including Part IV) of the Trade Practices Act 1974 (Cth) were replaced by the Australian Consumer Law as Schedule 2 to the Competition and Consumer Act 2010 (Cth). The Australian Consumer Law generally maintains the existing provisions as well introducing new provisions. One provision in particular now brings the conduct of natural persons within the ambit of the Act (whereas the Trade Practices Act 1974 (Cth) applied solely to corporations). General principles applicable in cases of restraint of trade or undue influence will apply to assignments (and licensing arrangements) that are unduly restrictive and contrary to public policy as an unreasonable restraint of trade. See Schroeder Music Publishing Co Ltd v Macauley [1974] 1 WLR 1308; Clifford Davis Management Ltd v WEA Records Ltd [1975] 1 WLR 61; Davidson v CBS Records (1983) AIPC 90-106; Elton John v Richard Leon James [1991] FSR 397.

LICENSING [5.300] Whereas an assignment is basically a transfer of ownership, a licence is merely

permission to do what would otherwise amount to an infringement. If more than a mere 196 [5.290]

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permission, a licence may confer property rights that could interfere with revocation of the licence or the exercise of rights thereunder. The licensee may not be allowed to make alterations to the work or to assign or sub-license their interest. A licence granted in respect of a copyright by the owner thereof binds successors in title of the grantor to the same extent (Copyright Act 1968 (Cth) s 196(4)). This is also the case in relation to the licensing of future copyright (s 197(3)). Licences may be granted for the exercise of all or any of the rights comprised in the copyright, and thus may be full or partial. They may be also exclusive (ss 117 – 125) or non-exclusive, compulsory (statutory) licences (ss 54 – 64); or express or implied. Licences can also be verbal or written. In the case below, the informal relations that gave rise to co-ownership created confusion over the scope of implied licences, including the right to assign copyright.

Seven Network (Operations) v TCN Channel Nine [5.310] Seven Network (Operations) Ltd v TCN Channel Nine Pty Ltd [2005] FCAFC 144 Federal Court of Australia (FC) LINDGREN J: … 35 For whatever agreement Seven made at the meeting, Mr Murray furnished consideration: he agreed to permit Seven’s Mr Shannon and Mr Lynch to go on the trip and to record the moving images and accompanying sounds, to bear the cost of their fares, accommodation and other expenses, and to allow Seven first use of the raw footage for the purpose of the making of a story and the broadcasting of it on Today Tonight. 36 Was the consideration furnished by Mr Murray furnished for a promise by Seven to him to assign to him Seven’s interest in the copyright in the cinematograph film to be made, or was it furnished for the grant of a licence by Seven? The answer to this question is not obvious. As McCardie J observed in Messager v British Broadcasting Co [1927] 2 KB 543 at 550, whether an assignment or licence is created often gives rise to difficulty, and (at 551): Intention must be the ultimate test for deciding whether an agreement be an assignment or a licence, and intention is to be gathered from the document itself and the surrounding circumstances. 37 The primary Judge was persuaded to find a promise to assign. In support he referred to the facts that Seven and Mr Murray were to be co-owners of the copyright; that Seven had no continuing use for the Camera Tapes after the broadcasting of the story on Today Tonight; and that through Mr Simond, Seven handed over to Mr Murray the Camera Tapes, which were the only embodiment of the subject matter of the copyright. 38 To my mind, the handing over of the Camera Tapes carries little weight: since they were the only embodiment of the Camera Tapes film and Seven had no further use for them, it was inevitable that they would be delivered to Mr Murray in order that he be able to do any act at all comprised in the copyright, no matter how minor. For example, if Seven had consented to Mr Murray’s copying a substantial part of the Camera Tapes film for the purpose of screening it for his family, the Camera Tapes would have had to be handed over (cf the delivery of the electro blocks of illustrative drawings in Cooper v Stephens [1895] 1 Ch 567 and W Marshall & Co Ltd v AH Bull Ltd (1901) 85 LT 77). In any event, Mr Murray agreed in cross-examination that the basis on which he was handed the Camera Tapes at Soldiers Beach was the basis, whatever it was, that had been agreed at the meeting on 11 February 2004. The property in them passed from Seven to Mr Murray upon delivery; but in implementation of the contract of 11 February 2004. … [After considering the evidence in detail, his Honour concluded]: [5.310]

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Seven Network (Operations) v TCN Channel Nine cont. 69. Seven agreed, for valuable consideration, that Mr Murray was to have a nonassignable licence to do the acts comprised in the copyright for the promotion of Camp Dare. 70. The proposed communication by Nine to the public of the documentary “DAREing the Kokoda”, lies outside that licence, and would, for lack of a licence binding on Seven, infringe the copyright in the Camera Tapes film. 71. The appeal should be allowed with costs, and there should be an injunction. … FINKELSTEIN J: 72 The point we have to decide on this appeal lies in a narrow compass, but the matter is of some consequence to the parties. The issue is this. Who is the owner of the copyright in a cinematograph film, being footage taken on a trip to the Kokoda Trail? The judge decided (and his finding is not challenged) that the footage was made by the appellants (collectively “Seven”) and Mr Murray, and therefore they were joint owners. In Prior v Lansdowne Press Pty Ltd [1977] VR 65 at 68, Gowans J held that co-authors hold copyright as tenants in common rather than as joint tenants and, in the absence of agreement to the contrary, in equal shares. Mr Murray contends that at a meeting held on 11 February 2004 Seven agreed to assign to him absolutely its then future interest (the film was taken the following month) in the copyright. Thus he says he was entitled to authorise the fifth and sixth respondents, production companies, to make from the footage a documentary to be shown in a broadcast by the first respondent, TCN Channel Nine Pty Ltd (“Nine”). The judge accepted these contentions. They are challenged on appeal. [His Honour outlines conversations surrounding the making and usage of the footage.] … 87 The general approach taken by the [trial] judge adopts “top-down” reasoning. He inquired whether copyright had been assigned (and found that it had) and then investigated whether there was any exception to an absolute assignment. I would prefer a “bottom-up” approach and determine precisely what has been given over. 88 In deciding exactly what has been agreed, we are confined to an examination of what the parties said and did. This examination is to be approached from the perspective of the reasonable person, who previously only had work in torts cases. What would the reasonable person think the parties meant? 89 The discussion between the parties must be understood in the following context. I have already mentioned that the judge found that the footage was jointly owned by Seven and Mr Murray. He reached this conclusion in the following way. Copyright in a cinematograph film lies with the maker of the film: Copyright Act 1968 (Cth), s 98(1). The maker is “the person by whom the arrangements necessary for the making of the film were undertaken”: s 22(4). Mr Murray made the arrangements for the Kokoda expedition. The trip was filmed by Seven personnel. So, according to the judge, each was a maker of the film. This finding is probably incorrect, but was not challenged on appeal. Notwithstanding the finding of joint ownership, it is clear that at the meeting the discussion proceeded upon the assumption that the footage of the trip would, in the absence of some agreement to the contrary, belong to Seven. If anyone had turned their mind to the ownership of copyright (it is possible that Mr Townhill had copyright in mind but he made no mention of it), it seems also to have been assumed that copyright would belong to Seven. 90 Turning then to what the parties said, the first thing the reasonable person would think having observed the discussion is that the parties implicitly agreed (that is the observer would be required to presume the existence of the agreement, for the topic was not discussed) that Seven could use the film for a program to be broadcast to the public through its network. Mr Murray wanted this broadcast to be a one-hour special program but even if it were not, the reasonable observer would implicitly understand that Seven could broadcast whatever section of the film it saw fit. In legal terms, the joint 198 [5.310]

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Seven Network (Operations) v TCN Channel Nine cont. owners of the copyright, Seven and Mr Murray, conferred a licence on Seven to do an act that would otherwise be in breach of their jointly owned copyright. 91 It is equally clear that Mr Murray was given some “right”. What was the nature of that right? The proper approach is to examine what right Mr Murray requested. He asked for nothing more than to be given the footage so that he could use it for promotional purposes. He had made a similar request in the past. He confirmed in May 2004 that this is what he was seeking. Mr McPherson agreed to give Mr Murray what he wanted. Nothing that has been attributed to Mr McPherson can be taken by our reasonable observer as a promise to give Mr Murray any more than he had requested. Another way of looking at it is this. In negotiating a contract the language used by the parties is often imprecise. Then it is the duty of the court to give a common sense meaning to the words used: Antaios Compania Naviera SA v Salen Rederierna AB [1985] AC 191. The court’s duty is to separate the “purposive sheep from the literalist goats”: Summit Investment Inc v British Steel Corporation (The “Sounion”) [1987] 1 Lloyd’s Reps 230 at 235. The sheep must win the day. 92 It will be necessary to further define the legal character of the “right” obtained by Mr Murray. But first I should say something about the content of the “right” to use the film. It had several aspects. First, the right was conferred on Mr Murray and him alone. Second, it was not a right that was capable of being passed on; it was personal to Mr Murray. Third, the right to use the film was for a limited purpose, namely to use the film for promotional purposes. That is, the film could not be used for commercial purposes. The distinction between the two types of use is important. It is, I think, clear that the parties intended that Mr Murray could use the footage to promote DARE’s activities and thereby raise funds. Indeed that was the reason he sought the right in the first place. But the right to use the film for promotional purposes did not carry with it the right to lease, hire or assign the right to use the film to a third party for use by that third party, even if that use would promote the activities of DARE. 93 Turning now to the legal character of the rights given to Mr Murray. On the view that I take, Seven did not assign copyright to Mr Murray. If copyright were assigned he would have the full power to deal with the footage in any way he chose. No such thing was intended by the parties to the agreement. It is perfectly clear that what was intended was the grant of permission (or to use the statutory term – a licence) to Mr Murray for him to use the footage for a limited purpose. Being for consideration, the licence was granted in perpetuity. In the absence of that licence Mr Murray could not make any use of the film although he is a co-owner: Ray v Classic FM plc (1998) 41 IPR 235. The licence granted protected Mr Murray from an action for infringement. Whether the permission is capable of protection by action by Mr Murray (as to which see British Actors Film Company, Limited v Glover [1918] 1 KB 299, 309) need not be decided. 94 The next point is this. Nine’s ability to broadcast the film to the public is dependent upon it having permission to do so from the copyright owner or owners: Copyright Act, ss 86, 101. It has Mr Murray’s permission, but he is not the sole owner of the copyright. So Nine also requires the permission of Seven. It does not have that permission directly from Seven. It could only obtain that permission if the licence given to Mr Murray contained an implied term that it could be assigned. Here we look to the presumed intention of the parties and ask whether the putative implied term is necessary for the reasonable or effective operation of the licence: Hospital Products Limited v United States Surgical Corporation (1984) 156 CLR 41. The judge made a finding that is inconsistent with the implication of the supposed term. The finding is that “if the possibility of any part of the [film] being broadcast on Nine had been raised, it is likely that McPherson would not have agreed to that possibility”.

[5.310]

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Exclusive licence [5.320] See Copyright Act 1968 (Cth) ss 117 – 125.

A licensor may retain the right to grant licences to others unless exclusivity has been promised to the licensee. In the Copyright Act 1968 (Cth), exclusive licence is defined in s 10(1) as follows: “exclusive licence” means a licence in writing, signed by or on behalf of the owner or prospective owner of copyright, authorizing the licensee, to the exclusion of all other persons, to do an act that, by virtue of this Act, the owner of the copyright would, but for the licence, have the exclusive right to do, and “exclusive licensee” has a corresponding meaning.

An exclusive licensee has the same rights of action in respect of the copyright work as the original owner – that is, the right to sue for infringement (s 119(a)), and to seek damages for conversion and detinue (s 116) subject to the discretion of the court as to the adequacy of the remedy under s 115. A non-exclusive licence, on the other hand, does not enjoy the right of independent action in respect of the work in which it holds a licence, and needs to join the copyright owner as a co-plaintiff in an action: see Sega Enterprises Ltd v Galaxy Electronics Pty Ltd (1998) 39 IPR 577. In Flashback Holdings Pty Ltd v Showtime DVD Holdings Pty Ltd (No 6) [2010] FCA 694 – a rather complicated case of owners and licensees – the applicant, Flashback Holdings (Flashback), sought damages for lost profits and an injunction restraining Showtime DVD Holdings (Showtime) from distributing or selling a range of children’s digital video disks (DVDs) to the ALDI supermarket chain. Since September 2007, Flashback had held an exclusive licence from Absolute Home Entertainment (Absolute) – a New Zealand company and the purported owner of the copyright in the range of children’s DVDs in Australia – to distribute the DVDs in Australia. ALDI was one of Flashback’s clients. Shortly after being granted the licence, Flashback found that Showtime had imported and sold almost 30,000 of the DVDs to ALDI, supposedly in breach of Flashback’s exclusive licence. Showtime alleged that it had entered into a non-exclusive licence agreement with Absolute, dating from June 2007, to distribute the DVDs in Australia. Showtime sought declarations that Flashback was not entitled to continue with proceedings unless it joined with Absolute as the purported copyright owner. Absolute declined to pursue Showtime. During earlier proceedings in the dispute, it transpired that Absolute was not the copyright holder of the DVDs, but merely a licensee of the real copyright holder, Gaiam Inc. In November 2008, Flashback applied to join Gaiam Inc as the copyright owner in the action, and the application was granted. In July 2010, in the sixth judgment in the dispute, the court granted Flashback the injunction restraining Showtime and awarded Flashback $40,000 in damages.

Implied licences [5.330] Implied licences may frequently be oral, or may frequently arise from the

circumstances in which copyright material is to be used or is made available. However, a licence will only be implied where business efficacy requires it – for example, continued use of an architect’s plans for a building after the business relationship between client and architect may have concluded: see Concrete Pty Ltd v Parramatta Design and Developments Pty Ltd (2006) 229 CLR 577. 200 [5.320]

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Gruzman v Percy Marks [5.340] Gruzman Pty Ltd v Percy Marks Pty Ltd and Anor (1989) 16 IPR 87 Supreme Court of New South Wales [The plaintiff applied for an interlocutory injunction to restrain infringement of copyright. Note the “moral rights” argument.] MCLELLAND J: [88] The plaintiff is a company which provides the architectural services of its director, Mr Neville Gruzman. The first defendant is a retailer of high quality jewellery. In May 1989 the first defendant retained the plaintiff to provide Mr Gruzman’s services in relation to the fitting out of new shop premises for the first defendant, at 70 Elizabeth Street, Sydney. Thereafter Mr Gruzman prepared plans, and performed various other functions in connection with the proposal, including (i) the engagement on behalf of the first defendant, of the second defendant, a builder, to carry out the construction work, and (ii) the supervision of that work. The work commenced on 13 July 1989, and is still in progress. However, differences arose between Mr Gruzman and the first defendant, and on 6 October 1989 the first defendant purported to terminate the plaintiff’s retainer, alleging among other things, very substantial cost overruns, and claims for excessive fees. Negotiations followed which terminated on 3 November 1989 without resolution of the dispute. In the meantime, the defendants have been proceeding with the work, with various modifications designed to reduce cost. The present proceedings were commenced on 6 November 1989, by summons in which the plaintiff claims a declaration that it is the owner of the copyright in the plans prepared by Mr Gruzman, an order restraining the defendants from using those plans in relation to the fitting out of the shop, an order for delivery up of the plans to the plaintiff, and damages. The substantial matter now before the court is whether the plaintiff should have an interlocutory injunction to prevent the defendants from using the plans for the purpose of completing the fitting out of the shop. For the purpose of the present application, it is common ground that the plaintiff is the owner of the copyright in the plans. The plaintiff’s case is based on the contention that use of the plans for the purpose of completing the fitting out work, would infringe the plaintiff’s copyright therein. [89] When an architect contracts with a building owner to produce plans for the purpose of their being used to carry out construction work at a particular site, there arises, subject to any contractual provision to the contrary, an implied licence from the architect for the use of the plans for that purpose: see Beck v Montana Constructions Pty Ltd (1963) 80 WN (NSW) 1578; Blair v Osborne & Tomkins [1971] 2 QB 78, and Ng v Clyde Securities Ltd [1976] 1 NSWLR 443. It was held in Clyde Securities that once granted and acted upon by the commencement of the work, the licence was irrevocable, notwithstanding any subsequent failure by the owner to pay the architect’s fees. The question whether the licence could be effectively revoked in the event of the repudiation by the building owner of a contractual right in the architect to continue employment on the project did not there arise, and was expressly left open. Although I doubt whether even such a repudiation would enable the licence to be revoked, time constraints have precluded proper argument on, or full consideration of, that question, and it is better left until the facts relating to the termination of the retainer have been established: see Kolback Securities Ltd v Epoch Mining (1987) 8 NSWLR 533 at 535. For present purposes I will treat the proposition as arguable. It has been submitted for the plaintiff that even if there is an irrevocable implied licence of the kind already referred to, any departure from, or modification of, the plans in order to reduce costs would fall outside the licensed use, on the basis that the implied licence is for use of the plans in respect of construction work in accordance with the plans, and not otherwise. This submission proceeded by reference to the broad expression “use” of the plans, which occurs also in the claims for relief. However, architects’ plans are, for the purposes of the Copyright Act 1968 (Cth), to be classified as an [5.340]

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Gruzman v Percy Marks cont. “artistic work” (see definitions of “artistic work” and “drawing” in s 10), and what would relevantly constitute an infringement of the plaintiff’s copyright, would be the “reproduction” of that work “in a material form” “without the licence of” the plaintiff: see ss 31(1)(b), and 36. For the purposes of the Act, “an artistic work shall be deemed to have been reproduced … in the case of work in a two-dimensional form if a version of the work is produced in a three-dimensional form” (s 21(3)). … In the light of these provisions the plaintiff’s submission based on a departure from, or modification of, the plans, has a paradoxical element in that the more the work departs from the plans, the less likely it is that it will reproduce those plans. However this may be, I do not consider that any arguable basis has been shown for restricting the implied licence in the manner contended for. Subject to any contractual provision to the contrary, such an implied licence would in my view extend to the use of the plans for the purposes of the construction work, to such extent as the owner may decide, and involves no implied restraint on the carrying out of work which [90] departs from those plans: see Barnett v Cape Town Foreshore Board (1960) 4 SA 430; [1978] FSR 176, and Hunter v Fitzroy Robinson & Partners [1978] FSR 167. It should be noted that the decision of the British Columbia Court of Appeal in Netupsky v Dominion Bridge Co referred to in Hunter was reversed by the Supreme Court of Canada: see (1972) 24 DLR (3d) 484. … In the circumstances of the present case, the course best calculated to achieve justice between the parties, is to refuse any interlocutory injunction. The plaintiff’s claim of infringement of its copyright in the plans, although arguable, may very well fail. Even if that claim were ultimately to succeed, it may well be held that damages are an adequate remedy and final injunctive relief inappropriate: see for example Hunter v Fitzroy Robinson & Concrete Systems Pty Ltd v Devon Symonds Holdings Ltd (1978) 20 SASR 79. There would be grave difficulties in framing the terms of any interlocutory injunction with sufficient precision to enable the defendants to know what they can, and what they cannot, do, and yet so as to confine any restraint to what, on the most favourable view of the plaintiff’s case, would be justifiable. Moreover, in granting an interlocutory injunction there would be a serious risk that the court would be allowing itself to be used as an instrument of unjustified economic pressure on the defendants. Finally, the adverse consequences to the first defendant of an injunction which ultimately turns out to be unjustified, would be far greater than the adverse consequences to the plaintiff, of refusing an injunction which ultimately turns out to have been justified. The loss to the first defendant of business and goodwill if completion of the fitting out work is further delayed, or interrupted, as would almost inevitably be the consequences of any injunction, is likely to be both very substantial and very difficult of assessment in monetary terms. The plaintiff asserts potential damage to Mr Gruzman’s reputation if the fitting out is completed otherwise than in accordance with his plans, having regard to his known association with the project. This is a somewhat speculative claim in so far as it is based on what [91] is said to be the possibility of aesthetic deficiencies in the new shop, arising from departures from, or modifications of, Mr Gruzman’s plans. Its legal basis appears slight, having regard to what I have held to be the right, subject to any contrary provision of an owner to depart from his architect’s plans to such extent as he may wish. Even if there were a solid basis for such a claim it would not in my view swing the balance of potential injustice sufficiently to justify interlocutory relief. Application for interlocutory relief dismissed.

[5.350] In De Garis v Neville Jeffress Pidler (1990) 95 ALR 625, Neville Jeffress tried to claim

that an implied licence existed in respect of de Garis’s material by virtue of the fact that the 202 [5.350]

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material had already been published – a defence that did not succeed (see also [5.160] above in respect of contract for service versus contract of service issues in this case).

De Garis v Neville Jeffress Pidler [5.360] De Garis v Neville Jeffress Pidler (1990) 95 ALR 625 Federal Court of Australia [See [5.160] above for the facts of the case.] BEAUMONT J: The implied licence defence 58. No express licence by Mr de Garis is relied on. But, on behalf of Jeffress, the defence pleaded is that a licence authorising Jeffress to reproduce the work in the way it does should be implied – from the provision of … the … work to the publisher … of the newspaper … in which (it) appeared and from the fact that (it) appeared in the … newspaper …, copies of which were sold or supplied to the public. 59. The onus of establishing this defence lies on Jeffress. In my opinion, it has not discharged that burden. 60. If copyright material is produced for a particular purpose, then there is an implied permission or consent or licence to use that material to carry out that purpose (see R and A Bailey and Co Ltd v Boccaccio (1986) 4 NSWLR 701 at p 711). Thus, generally speaking, a freelance writer submitting material for publication impliedly licences the relevant media organisation to publish it. But if a freelance journalist submits an article to a media organisation for publication in a particular newspaper or magazine or submits a film or recording for broadcast by a particular station, a licence to publish it in another publication or to broadcast it on another station is not, ordinarily, implied (see Walker, op cit at p 350). 61. In my opinion, Jeffress has not established any proper basis for the making of the implication alleged. 62. It is one thing to imply from the circumstances surrounding the relationship between Mr de Garis and the proprietor of “The West Australian” a licence to reproduce the work in that newspaper. But it is a different thing to ask the Court to imply a licence from Mr de Garis so as to permit the reproduction of his work by any commercial press-clipping service which desires to deal with it in the course of its trade. 63. In the former case, the implication is necessary to give business efficacy to the contractual relationship between Mr de Garis and a particular newspaper proprietor. Without such an implied licence, the contractual arrangement between those parties would have been ineffective. In the latter case, different considerations apply. The activities of Jeffress are separate, in ownership and commercially, and distinct in character, from the activities of the newspaper proprietor. Jeffress is not publishing a newspaper. It is retrieving, for a fee, information previously published in a newspaper. Whilst Mr de Garis has a direct, contractual relationship with the newspaper proprietor, he has no relationship of any kind with Jeffress. Although a licence to publish the work in a particular way may be necessary to make the relationship of writer and newspaper proprietor efficacious, in the case of a third party having no relationship with Mr de Garis, such as Jeffress, the implication by the Court of a licence to do what would otherwise be unlawful is not called for. 64. It may be (and Jeffress led no evidence on the point) that the provision of press clippings is now a common practice in this country. Even if the evidence had established this, it would not follow that this justified the conduct of Jeffress in reproducing the work without the permission of the owner of the copyright (see Maxwell v Somerton (1874) 30 LT 11). In any event, the basis of the alleged implication which is pleaded does not seek to raise any general considerations of this kind. 65. On behalf of Jeffress, reliance is placed upon the decision of Jacobs J in Beck v Montana Constructions Pty Ltd (1963) 80 WN (NSW) 1578. In my view, the case is distinguishable on its facts. There, the question was whether the vendors of land were entitled to assign to their purchasers the [5.360]

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De Garis v Neville Jeffress Pidler cont. right to use sketch plans prepared by the vendors’ architect. The architect had been retained to prepare plans of a building proposed to be constructed on the land. Jacobs J said (at p 1581): The question raised is quite a broad one because it applies not only to architects but would apply for instance to artists who are engaged to prepare a particular work which would of its nature be reproduced, for instance a cartoon for a tapestry or a mosaic, or which would apply to persons who prepared written material with the intention that it should be used in a particular manner. It seems to me that the principle involved is – that the engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission or consent or licence in the person making the engagement to use the 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. It seems to me that this must be regarded as a principle of general application. 66. Jacobs J added (at p 1582): I think it is a principle which can be found to be applied in a number of cases. It relates to permission or consent to what must have been taken to have been within the contemplation of the parties at the time of the engagement. After all, it must be borne in mind that it is the engagement which brings the copyright material into existence. When that principle is applied in the present case it seems to me to be inevitable that one should conclude that the payment for sketch plans includes a permission or consent to use those sketch plans for the purpose for which they were brought into existence, namely, for the purpose of building a building in substantial accordance with them and for the purpose of preparing any necessary drawings as part of the task of building the building. 67. The general principles stated in Beck’s Case are accepted. The application of those principles will depend upon the particular circumstances. For instance, in Stovin-Bradford v Volpoint Properties Ltd (1971) Ch 1007, a licence to use drawings and plans to a very limited extent was implied because the fee paid to the architect was only nominal (cf Ng v Clyde Securities Limited (1976) l NSWLR 443 at p 446). In Stovin-Bradford’s Case, the licence was implied to use the drawings and plans for the purpose of obtaining planning permission but for no further purpose. 68. In the present case, there was an implied licence granted by Mr de Garis to the proprietor of “The West Australian” to publish the article in the newspaper. However, it does not follow that there should also be implied another, distinct licence in favour of Jeffress, authorising it to use the work for the purposes of its commercial press-clipping service. Unlike the situation in Stovin-Bradford’s Case Jeffress did not provide any consideration, not even a nominal consideration, to Mr de Garis yet Jeffress took the work in its entirety. 69. Further, it is now well established that silence on the part of Mr de Garis as to the imposition of a restriction is not necessarily indicative of a grant of freedom from restriction (see Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) BV [1977] HCA 52; (1977) 138 CLR 534 per Jacobs J at pp 556-7; Computer-Mate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 83 ALR 492 at p 498). Infringement 70. It follows in my view, that Jeffress has infringed copyright.

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Compulsory licence [5.370] The Copyright Act 1968 (Cth) provides for a number of compulsory or statutory

licence arrangements. Conferred by statute, compulsory licences exist to draw a balance between the rights of the copyright owner and the interests of the public. This is most evident in the record, music and broadcasting industries where aggregation of market power is possible due to the licensing of organisations to act on behalf of copyright owners. 3 The use of copyright material in an educational context is also relevant here, in recognising the inevitability of copying in the university context. The Copyright Act 1968 (Cth) establishes various types of compulsory licences – for which royalties must be paid in order to exercise them – as distinct from providing defences to infringement. The various types of compulsory licences include: copying by educational institutions or institutions assisting persons with a print or intellectual disability; recording of musical works; broadcasting sound recordings or causing them to be heard in public; recording or filming works for the purpose of ephemeral broadcast by another person, or copying such a recording; copying of broadcasts by educational institutions or institutions assisting persons with an intellectual disability; copying of artistic works and Crown use of copyright material. Amendments introduced by the Copyright Amendment Act 1989 (Cth) streamlined the system of granting compulsory licences, largely by recognising and giving statutory force to the licensing arrangements agreed upon between copyright owners and users, as well as introducing a statutory scheme to allow for copying of audio-visual broadcast material by educational institutions and institutions assisting readers with a print or intellectual disability. There is a distinction to be drawn between the compulsory licensing and fair dealing provisions of the Copyright Act 1968 (Cth). In Haines v Copyright Agency Ltd (1982) 42 ALR 549, the Director-General of Education for New South Wales circulated a memorandum to school principals entitled Further Information on the Copyright Act in order to explain certain aspects of the Act concerning the copying of educational material for teaching purposes. The memorandum pointed out that the Copyright Act 1968 (Cth) s 40 (providing for fair dealing): … allows for virtually the same amount and type of copying without imposing any need to keep records or make payments. A teacher could use s 40, for example, in preparing his/her own materials and students could use s 40 for themselves simply by doing their own copying on the photocopying machine in the library or elsewhere.

The Full Federal Court emphasised the distinction between fair dealing and copying under the compulsory licence, and denied that s 40 was “an attractive alternative” to the compulsory licence for multiple copying. An important feature of the compulsory licence scheme is the role played by the Copyright Tribunal, established under the Copyright Act 1968 (Cth) Part VI. It has jurisdiction to determine royalty rates under statutory licensing schemes in the absence of agreements by the parties, to settle disputes relating to fixing royalties or equitable remuneration, and arbitrating disputes between parties to licence agreements.

The Copyright Tribunal [5.380] In June 2010, the Copyright Tribunal approved a scheme which dramatically

increased the licence fees payable by fitness class providers for the use of recorded music. The 3

See House of Representatives, Debates, second reading debate on the Copyright Bill 1968 (Cth), 16 May 1968, p 1527. [5.380]

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applicant, a copyright collecting society called Phonographic Performance Company of Australia Ltd (PPCA), proposed to replace the existing scheme relating to the use of sound recordings for fitness class use. Under the existing scheme, fitness class providers are charged 96.8 cents per class, with a cap of $2654 per year. PPCA relied on a consumer survey of users of fitness centres, using centre membership figures as the key basis for an increase in the licence fee. The Tribunal was not prepared to rely on the survey results and instead decided that it would proceed on a process of judicial estimation, with a figure derived from an initial pilot study as the starting point. The Tribunal held that the current licence scheme should be replaced, finding that a rate of $15 per class or $1 per attendee per class should apply in the future. Although the Tribunal accepted that music plays a different role in flexibility classes, such as yoga and pilates, than it does in rhythmic classes, it held that a reduced rate for flexibility classes was not justified. Fitness Australia Ltd, which had joined PPCA as a party to the original application to the Tribunal, sought judicial review in the Federal Court, principally for breach of the rules of natural justice in connection with the making of the Tribunal’s decision. In December 2010, the court set aside the Tribunal’s decision and referred the matter back to the Tribunal for its reconsideration.

Re Phonographic Performance Company of Australia [5.390] Phonographic Performance Company of Australia Limited (ACN 000680 704) under section 154(1) of the Copyright Act 1968 [2010] ACopyT 1 Copyright Tribunal of Australia Protected recordings 24 PPCA asserts that, if a performer who contributes to the making of a sound recording has an Australian connection or is a citizen of a Schedule 3 country, the recording qualifies as a protected recording. Accordingly, if there is any musician satisfying this description who contributes to the recording, even if only as a member of the orchestra, chorus or backing band or vocalists, the record will be protected in Australia. It also relies on the definition of “live performance” to claim that it does not matter if the recording is made in a studio or is not made with all performers present at the one time. It points out that recording techniques involve a layered or iterative process in which various tracks are made and mixed. It is the exceptional case for a recording to be made as a one off exercise with all contributors present. 25 This approach results in many of the records used in fitness classes being classified as protected recordings. It is rejected by the respondents. 26 Fitness Australia asserts that the reference to the “maker” of a sound recording in regulation 6(2) of the CIPR requires all persons who fall within the description of “maker” to satisfy the nationality requirements before the recording can be regarded as being protected. This is the reverse of the PPCA argument. On the Fitness Australia approach, in those cases where the protection for the recording is reliant upon the connection of a person with a Schedule 3 country, if any contributor to the recording does not have that connection, the recording will not be protected. 27 Fitness Australia also rejects the claim by PPCA that a live performance does not require the presence of all performers at the one time. In Fitness Australia’s view, a studio recording of a work does not qualify as a protected record unless the work is performed and recorded at the one time by the whole group of performers. 28 This issue became of significance in the hearing before the Tribunal because Ms Lynne Small, Manager, Finance, Operations & Administration at PPCA, undertook an analysis of the track listings of new CDs issued by Fitness Compilation Vendors, ie, vendors of recordings made for use in fitness classes. This analysis applied PPCA’s meaning of protected records. It led Ms Small to conclude that 206 [5.390]

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Re Phonographic Performance Company of Australia cont. around 70 per cent of the tracks included in the records were protected. The overwhelming majority of these tracks would thereby fall within the scope of PPCA’s licence. 29 Fitness Australia sought to discredit this analysis. Applying its basis for determining whether a recording is protected under the Copyright Act, it asserted that, at best, 60 per cent and more probably 40 per cent of the tracks sampled were protected. (However, this basis for the number derived is affected by the fact that it is asserted that the Les Mills programmes do not require a PPCA licence, as to which see [72]). Fitness Australia also questioned the methodology adopted by Ms Small to arrive at her conclusion. Fitness Australia claimed that the analysis undertaken was not rigorous and inflated the number of records that could be claimed as protected. 30 In this context it is pertinent to note that the Tribunal had brought to its attention that Rhythm Express Music, one of the largest Australian companies that produces music compilations for use in fitness classes states on its website that: The greatest advantage of all our CDs is that we license the biggest tracks from all the major record companies. We only publish the original artists. 31 The Tribunal does not think it appropriate that it should express a view on the correct approach to be taken to determining what sound recordings fall within the protection provided by the Copyright Act. It involves a very difficult question of the interpretation of the copyright legislation that should be left for a court to resolve in a case where the interpretation bears upon the outcome of an application. It is sufficient for present purposes to indicate that the Tribunal is persuaded that many, but not all, records that are used in fitness classes are protected recordings and that some of these will not be covered by the PPCA licence. The Tribunal has taken this into account in arriving at the figure that it has fixed as the appropriate rate to be paid for the use of such records. It returns to the issue at [275] and [308]. 32 The Tribunal also takes into account that obtaining a PPCA licence largely overcomes the problem of deciding whether a record is protected. A licence provides access to the whole PPCA repertoire. In practical terms, the need to seek the consent of the owner of the copyright to use a particular track on a record for the purposes of a fitness class is taken away. If a record is not protected, no licence to use it is required. If it is protected, the PPCA licence will in practice remove the need to seek permission to use it. While not all protected records are covered by the PPCA licence, it is pertinent to a consideration of the value of the licence to a fitness provider that PPCA is not aware of an instance where a licensee has been called to account for using a record not covered by the PPCA licence. Neither did the respondents identify any such instance. … Tribunal’s role in determining licence fees 114 The appropriate fee for payment for the use of sound recordings in public was recently considered by the Tribunal in the Nightclubs case. In the course of its judgment the Tribunal summarised its role in relation to an application for approval of a licence scheme as follows: [10] In each reference under s 154, the Tribunal must make a value judgment as to what it considers reasonable in the circumstances. It is not usually possible to calculate mathematically the correct licence fee in any particular case (APRA v AFRB [1999] ACopyT 4; 46 IPR 20 at [19] and [11]). Where approval of a scheme would lead to a substantial increase in fees, the increases can be phased in over a period of years rather than being introduced immediately. In the present case, the Society proposes that there be a phasing in of the increase claimed by it. [11] In determining whether a proposed scheme, and the licence fee payable under it, are reasonable, a number of approaches might be adopted. The approaches include the following, which may overlap to a certain extent: • Market rate: the rate actually being charged for the same licence in the same market in similar circumstances. • Notional bargain rate: the rate on which the Tribunal considers the parties would agree in a hypothetical [5.390]

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Re Phonographic Performance Company of Australia cont. negotiation, between a willing but not anxious licensor and a willing but not anxious licensee. • Comparable bargains: bargains not in the same market but sufficiently similar to such a notional bargain as to provide guidance to the Tribunal. • Judicial estimation: the rate determined by the Tribunal after taking into account a range of matters such as: • previous agreements or negotiations between the parties; • comparison with other jurisdictions; • comparison with rates set by other licensors, capacity to pay, value of the copyright material, the general public interest and the interests of consumers; and • administrative costs of a licensing body (see Audio Visual Copyright Society Ltd v Foxtel Management Pty Ltd No 4 68 IPR 367 at [131] and [142]). 115 The Tribunal accepts this analysis as appropriate for it to follow in the present application.

Collecting societies [5.400] The Copyright Act 1968 (Cth) s 135ZZB provides generally for the creation of collecting societies, while s 135P provides for the declaration of a collecting society in respect of copying and communicating of broadcasts by educational and other institutions. Any body may apply to the Minister to be declared as a collecting society for all relevant copyright owners or for specified classes of relevant copyright holders. The Minister may so declare or refuse the application, or refer it to the Copyright Tribunal for possible declaration. Copyright collecting societies are non-governmental, non-profit organisations that administer statutory and voluntary licences for copying and communicating literary, dramatic and artistic works, ensuring that authors, artists and other creators of copyright works are rewarded for the commercial exploitation of their works. The societies negotiate licences with users and receive payments which they pass on to their members. Each collecting society generally represents a different aspect of copyright. Collective administration has a number of benefits for individual owners of rights and those that wish to use those rights. For individual owners, it is often difficult to maximise the economic value of their rights and to protect them. Similarly, third parties who wish to use those rights must incur the trouble and expense of finding the appropriate rights owners, negotiating individual deals, and administering and accounting to a vast number of such rights owners. The collective administration of copyright is often the most effective method of managing the rights for both parties. Collecting societies have three common functions, namely:

• documentation of works within their particular area of copyright protection or operation, which may have a potential commercial application; • identification and monitoring of usage of their members’ copyrighted works; and • collection and distribution of royalties and licence fees to their members. The major collecting societies operating in Australia include the following: • Aboriginal Artists Agency: aboriginal artists rights across cross media including print, digital uses, film and video, theatre and architecture. • Australasian Mechanical Copyright Owners Society (AMCOS): rights to reproduce a musical work in a material form; • Australian Performing Rights Association (APRA): public performance, broadcasting and cable diffusion rights in musical works (eg, music compositions and lyrics); 208 [5.400]

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• Australian Screen Directors Authorship Collecting Society: film screen rights; • Australian Writers’ Guild Authorship Collecting Society: film screen rights; • Copyright Agency Limited (CAL): statutory and voluntary licences for copying and communicating literary, dramatic and artistic works and images; • ScreenRights: the Audio Visual Copyright Society (AVCS): statutory licences for educational institutions and institutions assisting intellectually handicapped people to copy programs from radio or television for educational purposes; • Phonographic Performance Company of Australia (PPCA): broadcast and public performance vested in sound recordings and music videos; • Visual Arts Copyright Collecting Agency (VISCOPY): visual artists’ rights over their artistic works. Resale Royalty Right for Visual Artists Act 2009 (Cth) [5.410] The Resale Royalty Right for Visual Artists Act 2009 (Cth) made provision for the

establishment of a collection agency or collecting society to administer a scheme for the identification of works that are eligible for the payment of royalties and for the collection and distribution of those royalties. In June 2010, the government appointed the Copyright Agency Limited (CAL) as the collecting agency, which operates along similar lines to copyright collection. The statutory requirements for the operation of the agency are described in the following extract from the Resale Royalty Right for Visual Artists Act 2009 (Cth), Division 5 (“Collecting resale royalty”).

Resale Royalty Right for Visual Artists Act 2009 (Cth) [5.420] Resale Royalty Right for Visual Artists Act 2009 (Cth), Division 5 (“Collecting resale royalty”) 23 Collection of resale royalty by the collecting society (1)

This section applies unless: (a)

the holder of the resale royalty right on the commercial resale of an artwork; or

(b)

if there is more than one holder of the resale royalty right on the commercial resale of an artwork – all the holders of the resale royalty right on the commercial resale of the artwork; notify the collecting society in writing, within 21 days after notice of the commercial resale is published on the collecting society’s website, that the collecting society is not to collect the resale royalty, or enforce the resale royalty right, on the commercial resale on behalf of the holder or holders of the right. (2)

The collecting society must use its best endeavours to collect the resale royalty payable under this Act, and, if necessary, enforce any resale royalty right held under this Act, on the commercial resale of the artwork on behalf of the holder or holders of the resale royalty right.

(3)

The collecting society is not subject to the direction of any holder or holders of the resale royalty right in collecting the resale royalty or enforcing that right.

… 25 Resale royalty right under this Act only enforceable in Australian jurisdiction Resale royalty right held under this Act is only enforceable in an Australian federal court, or a court of a State or Territory, of competent jurisdiction. [5.420]

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Resale Royalty Right for Visual Artists Act 2009 (Cth) cont. 26 If resale royalty is paid to the collecting society (1)

If resale royalty on the commercial resale of an artwork is paid to the collecting society, the collecting society must: (a) pay to each entity that has given the collecting society notice under subsection 27(1) and established a claim to a share of the resale royalty on the commercial resale, that entity’s share of the resale royalty less the collecting society’s administration fee; and (b)

use its best endeavours to locate each holder of the resale royalty right on the commercial resale of the artwork who has not given the collecting society notice under subsection 27(1), and pay that holder the holder’s share of the resale royalty, less the collecting society’s administration fee.

(2)

The collecting society’s administration fee must not be such as to amount to a tax.

(3)

The Minister may, by notice in writing given to the collecting society, limit the administration fee to be imposed by the collecting society.

(4)

A notice given under subsection (3) is not a legislative instrument.

27 Notice of resale royalty right (1)

(2)

An entity that claims to hold a resale royalty right, or an interest in a resale royalty right, under this Act may give the collecting society written notice in the manner and form approved by the collecting society setting out: (a) the entity’s name; and (b)

the entity’s address; and

(c)

the proportion of the resale royalty right to which the entity claims that it is entitled; and

(d)

details of the basis on which the entity makes that claim.

The collecting society may, by written notice, request an entity that has given the society notice under subsection (1) to provide further information in support of the claim within a specified time of no less than 60 days.

28 Notice of commercial resale (1)

(2)

A person must give the collecting society notice complying with subsection (2) of the commercial resale of an artwork if: (a) the person is a seller under the commercial resale; and (b) the person is: (i) an Australian citizen; or (ii)

a permanent resident of Australia; or

(iii)

a corporation incorporated under the Corporations Act 2001; or

(iv)

a person (including a body corporate) who carries on an enterprise in Australia; or

(v)

a trustee of a trust of which one of the persons mentioned in subparagraphs (i) to (iv) (inclusive) is a beneficiary.

… The notice must: (a) be in writing; and (b) (c)

210 [5.420]

be given to the collecting society within the period of 90 days beginning at the time of the commercial resale; and include sufficient detail to allow the collecting society:

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Resale Royalty Right for Visual Artists Act 2009 (Cth) cont.

(3)

(i)

to work out whether resale royalty is payable on the commercial resale under this Act; and

(ii)

to work out the amount of resale royalty payable under this Act; and

(iii)

to identify who is liable to pay the resale royalty.

The seller may satisfy the requirement to give notice in accordance with this section through an agent.

(4)

If: (a)

there is more than one seller under the commercial resale of an artwork; and

(b) one of the sellers gives the collecting society notice in accordance with this section; then all of the sellers are taken to have given the collecting society notice in accordance with this section. (5)

A person who wishes to rely on subsection (3) or (4) bears an evidential burden in relation to those matters.

29 Requesting information about the commercial resale of an artwork (1)

If the collecting society believes on reasonable grounds that a person is: (a)

a seller under a commercial resale of an artwork; or

(b)

a buyer under a commercial resale of an artwork; or

(c)

an agent of a seller or buyer under a commercial resale of an artwork; or

(d) an art market professional otherwise involved in a commercial resale of an artwork; the collecting society may, in writing, request the person to give the collecting society information in relation to the commercial resale relevant to determining: (e) the amount of any resale royalty payable on the commercial resale under this Act; and (f) (2)

who is liable to make the payment.

If: (a)

a request is made to a person in accordance with subsection (1); and

(b)

the commercial resale in relation to which the request was made occurred within 6 years before the request was made; the person must comply with the request within 90 days after it is given. …

PARALLEL IMPORTING [5.430] Under the Copyright Act 1968 (Cth), copyright owners are able to prevent the

importation into Australia of books that have been lawfully published in another country without the appropriate licence of the owner of the copyright. To qualify for protection, an Australian copyright holder (commonly a publisher or author) must publish a book for which they hold copyright within 30 days of its overseas release and (subject to some exceptions) maintain a capacity for resupply within 90 days. Once a rights holder is protected, booksellers cannot import and sell the same title in commercial quantities. It might be expected that purchasing quantities of books, compact disks or computer software from a legitimate supplier would enable the purchaser to import and sell such items in Australia, since, unless the items are “pirated” the copyright owner gets the royalties on the [5.430]

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sales. Further, since copyright is an “incorporeal” right it does not necessarily entail the right to control the physical movement of goods. See Pacific Film Laboratories Pty Ltd v Commissioner of Taxation (at [3.90]). The Copyright Act 1968 (Cth) has, however, been construed in such a way as to allow authorised distributors to uphold territorial restrictions and maintain Australia as a closed market for the products mentioned. The importing of legitimate copies of copyright works and other subject matter by someone other than an authorised importer is known as “parallel importing”. In Interstate Parcel Express Co Pty Ltd v Time-Life International (Nederlands) BV (1977) 138 CLR 534 (Time-Life), the High Court held that the Copyright Act 1968 (Cth) s 37 requires that an importer must have a positive licence to import works for sale in Australia. When the bookseller Angus and Robertson purchased supplies of a cookbook from a wholesaler in the United States, with no restrictive terms on the use to which the buyer might put the books, including their resale anywhere in the world, this did not involve the grant of a licence by the copyright owner to Angus and Robertson to deal with the books in a manner inconsistent with the rights of an appointed distributor. Time-Life has been discussed and applied in subsequent cases, one point in issue being whether the purchase of quantities of books or other such product direct from the copyright owner (rather than from a wholesaler, as in Time-Life) leads to the implication of a positive licence to resell. The Full Federal Court discussed the nature of a “licence” under the Copyright Act 1968 (Cth) s 37 in Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 12 IPR 487; Avel v Wells (1991) 22 IPR 305. See also Lotus Development Corp v Vacolan Pty Ltd (1989) 16 IPR 143; Avel Pty Ltd v Multicoin Amusements Pty Ltd (1990) 18 IPR 443; RA Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 6 IPR 279; Ozi-Soft Pty Ltd v Wong (1988) 12 IPR 487. Einfeld J’s comments in Ozi-Soft Pty Ltd v Wong (1988) 10 IPR 520, extracted below, concerning the detriment to the Australian public caused by the prohibition on parallel importing were extensively discussed in the media.

Ozi-Soft v Wong [5.440] Ozi-Soft Pty Ltd v Wong (1988) 10 IPR 520 Federal Court of Australia [The first applicant was the exclusive licensee in Australia of the copyright in a number of computer programs, which were mainly games and some educational software. The other 14 applicants were the owners of copyright in the programs. The respondents purchased commercial quantities of disks embodying the programs in the United Kingdom, and imported them to sell in Australia.] EINFELD J: [520] On 13 March 1987 Wilcox J ordered that the following question be tried separately upon the basis of a statement of agreed facts filed in court on 13 March 1987: “Whether the importation and sale by the respondents of the diskettes referred to in the statement of agreed facts was done with the licence of the respective applicants?” [521] … It is clear from the agreed facts that the importation and sale by the respondents of the diskettes was not done with the express consent of the applicants. If consent cannot be implied, s 37 of the Copyright Act 1968 (the Act) forbids such importation and sale. The applicants submit that s 37 casts the onus upon the respondent to show that there was licence and not on them to prove that they have, or could have, imposed a restriction. Legislation, case law and various international conventions have developed in this area favouring exclusivity of ownership for the copyright owner. Under s 13 of the Act, for example, the copyright owner has both the exclusive right to do or to authorise another person to do acts protected by the copyright. 212

[5.440]

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Ozi-Soft v Wong cont. There is no argument that the diskettes are encompassed in copyright legislation. A computer program is defined in s 10 of the Act as: “an expression in any language, code or notation of a set of instructions intended … to cause a device having digital information processing [522] capabilities to perform a particular function.” By s 10(1)(b), a literary work includes a computer program or compilation of computer programs. … The only issue to be determined here is whether there was an implied unrestricted licence to import and sell these diskettes. Counsel for the applicants argued that the decision in Interstate Parcel Express Co Pty Ltd (Ipec) v Time-Life International (Nederlands) BV (1977) 138 CLR 534 (the Time-Life case) is a most profound statement by the High Court on facts alleged to be indistinguishable for present purposes. The proposition relied on is that in copyright law a licence cannot be implied from the mere fact that the copyright owner had sold the goods without any express restriction on their subsequent disposal. It is necessary to consider this case in some detail as the success of either party in this matter depends on an understanding of the decision. The Time-Life case was an appeal from a judgment of the New South Wales Supreme Court making certain declarations and orders in respect of copyright infringement, in favour of Time-Life against Ipec, which was then operating the Angus and Robertson bookshops. Time-Life, a Dutch company, was at the time the exclusive licensee of Time Inc, a New York company (Time Inc), in respect of certain books of which Time Inc was the copyright owner. The proceedings were originally instituted by both these companies but Time Inc discontinued, fearing that to proceed might involve advancing an argument that could be construed as an infringement of the anti-trust legislation of the US. Time-Life’s distributor, Little Brown & Co, sold books to an American company, Raymar Inc, without restriction. Raymar sold them to Ipec which imported the books to Australia and sold them. There was no express licence from Time-Life or Time Inc to do so, nor were there any restrictions placed on the sales to Raymar or Ipec. The issue was whether Ipec imported the books into and sold them in Australia without the licence of the owner of the copyright. The High Court was of the view that the word licence as it appears in s 37 means no more than consent; and that a licence in this context may be given orally or be implied by conduct. As in the present case, there was no question in the Time-Life case of an express licence or of consent to the importation and sale. Reliance was placed on a line of authorities in patent cases, the principle there being that when a patented article is bought, control is implied unless there is explicit indication by the vendor that the buyer cannot sell it. The High Court distinguished the patent cases from copyright because, under patent law, the patentee has the exclusive right to make, exercise and vend [524] the product. Therefore to avoid a licence being implied, an express restriction needs to be placed on resale. Copyright differs. Gibbs J (1977) 138 CLR 534 at 542 said: The owner of copyright has not the exclusive right to use or sell the work in which copyright subsists. The buyer of a book in which copyright subsists does not need the consent of the owner of the copyright to read the book. The necessity to imply a term in the contract which exists when a patented article is sold does not arise on the sale of a book the subject of copyright. It was not, and could not be, suggested that the sale of a copy of a book is a licence to do the acts comprised in the copyright. His Honour continued that in some circumstances when the owner of copyright sells a book, his consent to a particular use may be implied. He said that in the Time-Life case, there were only the bare facts of a sale without restriction and no evidence put forward of the copyright owner knowing who the identity of the purchaser is. [5.440]

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Ozi-Soft v Wong cont. Gibbs J continued (at 544): It would therefore appear that in the US, as in Australia, it is not necessary, in order to give business efficacy to the sale of a book in which copyright subsists, to imply a term of vendor’s consent. Gibbs J (at 544) held that a licence: means the consent of the owner to the importation of the articles into Australia for the purpose of selling them, or to their sale after importation, and such a licence cannot be inferred from the mere fact that the owner of the copyright has sold the goods without any express restriction on their subsequent disposal. Stephen J (at 555) said: There is, then, no novelty in the view that indirect infringement of copyright may result from the importation of material which until imported infringed no copyright … Any undesirable economic or cultural effects which some may discern as flowing from this aspect of copyright protection are a matter for the legislature. Jacobs J (at 556) said: The purpose of s 37 is to make it clear that a positive licence is required. But the section does not say that importation for sale is allowed unless a restriction is given. It is thus obviously easier to argue an implied licence, Jacobs J said, if the copyright owner is selling the goods in commercial quantities direct to a purchaser in another country and does not impose any restriction on importation. In this case, counsel for the respondent sought to confine Time-Life to its facts and relied on two matters to dictate a different result. The first was the absence of any self-imposed or agreed restriction falling upon the copyright owner in Australia. The second was that Time-Life was decided against the background that it would have been illegal under the Sherman Antitrust Act for an American company to impose a restriction on end use and export when it granted Time-Life its licence. Counsel for the respondents by contrast placed reliance on Polydor Ltd v Harlequin Record Shop [1980] FSR 362. This case involved an argument about whether there was an implied licence to import a recording into the UK. Polydor Ltd was the exclusive licensee in the UK from the copyright owner of a certain recording. The licensee in Portugal was a Polydor company. The records were bought [524] legally in Portugal by Harlequin but imported into the UK without the consent of Polydor. Harlequin argued that the sale in Portugal implied a licence by every member of the Polydor group for the importing of records into the UK. This argument was rejected and the English Court of Appeal, following the High Court in the Time-Life case, held (at 366): The sale of records by the Portuguese licensees conferred ownership and possession on the defendants (Harlequin), but did not constitute a licence from anyone to import those records into the UK. This was relied on by the respondents for the proposition that, just as it was not permissible to exercise territorial or national rights in the nature of copyright so as to delimit markets as between England and Portugal, arising from a prohibition of that type in the Treaty of Rome affecting the states in the European Community, so it should be in Australia. Counsel submitted that the effect of Art 30 of the Treaty of Rome is that in a member state of the European Community, no contractual right or copyright can be exercised that has the effect of limiting the trade use in the UK of a copyright item. Notwithstanding the earnest submissions of counsel in this regard, I cannot see how this case assists the interpretation of the Copyright Act in Australia. 214 [5.440]

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Ozi-Soft v Wong cont. The High Court in Time-Life expressly recognised that it is a question of fact as to the nature of the contract as to whether any licence is to be implied. Nevertheless, the court made substantial pronouncements of law, and I must seek to apply them here. The respondent argued that the fact that in Time-Life the US parent company did not have legal freedom to impose any restrictions forced the High Court to find a solution in the interests of commercial efficacy against a licence employing importation into Australia. Despite developing thought that it is or may be impermissible to impose restrictions upon the resale of goods because they infringe European Community law or the Sherman Antitrust legislation, the result surely cannot be that there is necessarily a licence by implication. However, as Murphy J observed in the Time-Life case, there is an element of public interest in copyright enforcement cases and, should the facts show a reasonable possibility of serious breach of the Trade Practices Act or injury to the public, the court can and should require the offending party to negate this before upholding its copyright. In Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 the Full Federal Court repeated (at 181) the well established principle that any uncertainty or ambiguity in the provisions of the Copyright Act would be resolved with regard to the Berne Convention of 1886. As already mentioned, this supports what has become known as the Doctrine of National Treatment, which means that foreign authors should have in Australia that which is granted to Australian nationals. As both counsel conceded, this was regarded by both parties as a test case because, other than the Time-Life case, there is no apparently substantive authority directly in point. [525] It may be that some other mechanism needs to be developed to resolve these issues, because the interests of the Australian people in having free access to literary, musical and artistic works, even computer video entertainment, are adversely affected if oppressive restrictions on importation and sale may be imposed by copyright owners who are not themselves importing or intending to import the works in question. Nevertheless, despite the force of the respondent’s argument, they have failed to persuade me that I ought not to follow the principles enunciated in Time-Life and its result. There is no evidence of any serious breach of trade practices legislation, nor any allegations of grave injury being caused to the public if the diskettes cannot be marketed here at this time. Adapting the comments of Stephen J in Time-Life (at 555), any undesirable community or societal consequences which may flow from this aspect of copyright protection are matters for the legislature. I do not think that I am able to shape the result of this case to counter any that may appear to flow if the respondents fail here. I answer the question posed by Wilcox J on 13 March 1987 in the negative.

[5.450] Discussion of the issue of restrictions on parallel importing was a major focus of the

Ergas Committee report, which recommended the removal of all restrictions on parallel importation from copyright legislation. 4 The recommendations proved controversial and subject to attack by major overseas copyright producer interests. Some of the recommendations, to free up the market for copyright material, were incorporated in the Copyright Amendment (Parallel Importation) Act 2003 (Cth), with the exception of cinematograph films. The amendments also closed a loophole whereby owners had previously 4

Intellectual Property Competition Review Committee, Review of Intellectual Property Legislation under the Competition Principles Agreement, Final Report (AGPS, September 2000). [5.450]

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been able to prevent the parallel importation of sound recordings by relying on the copyright in secondary material (eg, computer programs or short video clips) included on a music CD. However, following Australian Video Retailers Association v Warner Home Video Pty Ltd (2001) 53 IPR 242, an amendment was also made to the definition of “feature film” that prevented the parallel importation of DVDs with interactive components (and, hence, incorporated both a film and a computer program). The right to import music CDs led to litigation under the Trade Practices Act 1974 (Cth) ss 45, 46 and 47 (see now the Competition and Consumer Act 2010 (Cth)). The Australian Competition and Consumer Commission (ACCC) instigated proceedings arguing that the big recording company labels, Universal and Warner, had ceased to supply certain retailers who had imported CDs from overseas. The Full Federal Court found that while neither Universal nor Warner had a substantial degree of power in the relevant market, the companies had engaged in exclusive dealing for the purpose of substantially lessening competition in breach of the Trade Practices Act 1974 (Cth) s 47. Each company was ordered to pay $1 million in penalties and half the ACCC’s appeal costs. See Universal Music & Ors v Australian Competition and Consumer Commission [2003] FCAFC 193. Australian authors and publishers have campaigned vigorously against any proposal which would see parallel importation restrictions on books removed. The 2009 Productivity Commission Report, while it acknowledged that removing the parallel importation restrictions would have an adverse impact on Australian authors and publishers, nevertheless recommended that the restrictions be removed and that authors and publishers be provided with additional funding to compensate them for the loss. Presently under the Copyright Act 1968 (Cth), s 37(1), booksellers are prevented from sourcing a cheaper edition of a book from overseas markets, as long as the Australian rights holder has released the book within 30 days of it being published elsewhere. This protection has benefited Australian publishers and authors who have been able to sell in the Australian market without being undercut by cheaper commercial imports. In addition, the parallel importation restrictions have operated to place a higher demand on local printing. While these costs are likely to be met by consumers through higher prices on book titles, there is an exception to the restriction, with consumers able to purchase books directly from overseas via the internet through outlets such as Amazon.com, The Book Depository and DA Direct. In November 2009, the government announced that it would not change the existing regulatory regime for importing books, notwithstanding the Productivity Commission’s recommendations that the parallel importation restrictions on books be repealed. The government stated that its decision not to remove the import restrictions was made in light of the “strong competitive pressure” from international online book retailers, such as Amazon.com, and the increasing availability of e-books. The government considered that these sources and the easy availability of literary material through them would inevitably place a downward pressure on book prices. The government’s view was that this competition meant the abolition of parallel importation restrictions would not have “any material effect on the availability of books in Australia”. Previous reviews conducted by the ACCC (and its predecessor, the Trade Practices Commission) and other review committees in 1995, 1999, 2000 and 2001 have all recommended the removal of parallel importation restrictions on books. Restrictions on 216 [5.450]

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parallel importing for recorded music and computer software were lifted in 1998 and 2003, respectively.

RESALE ROYALTY RIGHTS Resale Royalty Right for Visual Artists Act 2009 [5.460] On 26 November 2009, the Australian Parliament passed the Resale Royalty Right

for Visual Artists Act 2009 (Cth). The Act received Royal assent on 9 December 2009, and the scheme came into effect on 9 June 2010. The then Minister for the Environment, Heritage and the Arts, the Honourable Peter Garrett, declared during the second reading speech of the Bill: The introduction of this Bill marks a landmark day for Australia’s visual artists, whose right to an ongoing economic interest in the value of their artistic works will be appropriately recognised in Australia for the first time.

Through this legislation, a resale royalty right (or droit de suite as it is universally known) now entitles qualifying artists to receive payment from subsequent sales of their artworks after their original sale. The royalty is payable whenever a work is re-sold during the artist’s lifetime and for 70 years thereafter, consistent with the rights applicable to copyright works under the Copyright Act 1968 (Cth). In support of the proposed legislation, the government asserted that visual artists did not have access to the IP rights in the multiple reproductions of their works that was enjoyed by authors and by creators and performers of dramatic and musical works. The Resale Royalty Right for Visual Artists Act 2009 (Cth) was intended to redress that imbalance, and to give effect to the government’s election policy commitment to introduce resale royalty rights for artists. The Act is also meant to give effect to the droit de suite provisions of Article 14ter of the Berne Convention for the Protection of Literary and Artistic Works (1886). In brief, the Resale Royalty Right for Visual Artists Act 2009 (Cth) provides for a royalty payment to the artist or creator of an artwork on the transfer of ownership of that work through a commercial sale. The Act applies only to commercial sales, which are limited to sales by auction or private treaty through art auction houses, art galleries and art dealers. The definition of “commercial sales” includes sales between private parties and public institutions, but not private sales between individuals, nor sales by or involving organisations not mainly in the business of dealing in artworks. By this definition, general auctioneers who sell artworks as part of deceased estates, general consignments or bankruptcies, would not be deemed to be art market professionals. The royalty has been set at 5 percent of the sale price, subject to a minimum qualifying sale price of $1000. In the case of existing artwork, Resale Royalty Right for Visual Artists Act 2009 (Cth) s 11 provides that the royalty obligation does not apply to the first sale of the artwork after the law came into force, but only to subsequent sales. Section 11 is a crucial element of the Act, and has attracted considerable critical attention. It has been decried as seriously undermining the short- to medium-term benefits to most visual artists and will denying the current generation of artists any significant royalties at all.

[5.460]

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Administration of the resale royalty scheme and enforcement of the collection of royalties is undertaken by a government-appointed collecting agency, the Copyright Agency Limited (CAL) (see [5.410]–[5.420]). While the royalty right enshrined in the legislation is inalienable and is not subject to waiver, “opt out” provisions entitle artists or holders to direct the collecting agency not to collect the royalty or to enforce the resale royalty right on their behalf. The Act provides that sellers, buyers and art market professionals are jointly and severally liable to the artist for the relevant amount. Sellers are required to notify CAL of all commercial resales of an artwork within 90 days of a sale. Sellers who fail to comply with their obligations under the Act face civil penalties of up to $110,000 for a corporation and $22,000 for an individual. According to Copyright Agency, the collection society appointed under the Act by the then Minister for Arts in May 2010 to manage the artists’ resale royalty scheme, since its commencement on 9 June 2010 until 30 June 2016, the scheme has generated more than $4.3 million in royalties from almost 13,000 sales for more than 1,200 artists. 5 Over 65% of the artists receiving royalties are Aboriginal or Torres Strait Islander artists and they have received 38% of the total royalties.

Resale Royalty Right for Visual Artists Act 2009 (Cth) [5.470] Resale Royalty Right for Visual Artists Act 2009 (Cth) Part 2 Division 1 (ss 6 – 11) Part 2–Resale royalty right Division 1–When does resale royalty right arise? 6 Resale royalty right “Resale royalty right” is the right to receive resale royalty on the commercial resale of an artwork. (1)

(2)

5

7 What is an artwork? An artwork is an original work of visual art that is either: (a) created by the artist or artists; or (b) produced under the authority of the artist or artists. Works of visual art include, but are not limited to, the following: (a) artists’ books; (b)

batiks;

(c)

carvings;

(d)

ceramics;

(e)

collages;

(f)

digital artworks;

(g)

drawings;

(h)

engravings;

(i)

fine art jewellery;

(j)

glassware;

(k)

installations;

(l)

lithographs;

(m)

multimedia artworks;

Copyright Agency, “Resale Royalty”, at http://www.resaleroyalty.org.au/.

218 [5.470]

Copyright: Ownership, Rights and Exploitation

CHAPTER 5

Resale Royalty Right for Visual Artists Act 2009 (Cth) cont. (n)

paintings;

(o)

photographs;

(p)

pictures;

(q)

prints;

(r)

sculptures;

(s)

tapestries;

(t)

video artworks;

(u)

weavings;

(v)

any other things prescribed by the regulations.

8 What is commercial resale of an artwork? (1)

There is a commercial resale of an artwork if: (a) ownership of the artwork is transferred from one person to another for monetary consideration; and (b)

the transfer is not the first transfer of ownership of the artwork; and

(c)

the transfer is not otherwise one of an excluded class.

(2)

The transfer of ownership of an artwork from one individual to another in circumstances that do not involve an art market professional acting in that capacity, is an excluded class of transfer.

(3)

Art market professional means: (a) an auctioneer; or (b)

the owner or operator of an art gallery; or

(c)

the owner or operator of a museum; or

(d)

an art dealer; or

(e)

a person otherwise involved in the business of dealing in artworks.

9 No resale royalty right on certain works There is no resale royalty right on the commercial resale of: (a)

a building, or a drawing, plan or model for a building; or

(b)

a circuit layout within the meaning of the Circuit Layouts Act 1989; or

(c)

a manuscript (in whatever form) of a literary, dramatic or musical work.

10 No resale royalty right unless consideration above threshold Threshold (1)

There is no resale royalty right on the commercial resale of an artwork for a sale price of less than: (a)

(b)

$1,000 or, if the sale price is paid in a foreign currency, the amount worked out using the exchange rate applicable at the time of the commercial resale that is equivalent to $1,000; or if a higher amount is prescribed by the regulations–that higher amount.

[5.470]

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Intellectual Property: Commentary and Materials

Resale Royalty Right for Visual Artists Act 2009 (Cth) cont. Definition of sale price (2)

The sale price on the commercial resale of an artwork means the amount paid for the artwork by the buyer on the commercial resale including GST, but does not include any buyer’s premium or other tax payable on the sale.

11 Resale royalty right on artworks in existence when Act commences If an artwork exists on the commencement of this Part, there is no resale royalty right on the first transfer of ownership of the artwork on or after commencement, even if the transfer of ownership is under a commercial resale.

220 [5.470]

CHAPTER 6 Copyright Infringement, Defences and Remedies [6.10] [6.20] [6.30]

INTRODUCTION .................................................................................................... 222 Infringement of literary, dramatic, musical or artistic works and other works ....................................................................................................................... 222 What is worth copying is worth protecting ........................................................ 223 [6.30]

[6.50] [6.50]

Network Ten v TCN Channel Nine .......................................... 223

INFRINGEMENT ..................................................................................................... 225 Substantial part requirement ................................................................................ 225 [6.60] [6.80]

[6.100] [6.110]

Hawkes & Son v Paramount Film Service ................................ 226 Milpurrurru v Indofurn ........................................................... 228 Direct and indirect infringement ......................................................................... 231 Infringement and the exclusive right of reproduction ....................................... 231

[6.120]

Causal connection ............................................................................... 232 [6.130]

Francis Day & Hunter v Bron .................................................. 232

[6.150] [6.160]

[6.140] Objective similarity ............................................................................. 236 Infringement and the exclusive right of publication .......................................... 237 Infringement and the exclusive right of public performance ........................... 238

[6.180]

Authorisation of performances in public and infringement .............................. 240

[6.170]

Telstra v APRA ....................................................................... 239

[6.190] [6.200]

[6.210] [6.220] [6.250] [6.260] [6.270] [6.280] [6.320] [6.330] [6.330] [6.340]

APRA v Jain ........................................................................... APRA v Tolbush ..................................................................... Subject matter other than works ......................................................................... Substantial part and Part IV copyright (television broadcasts) ......................... [6.230] TCN Channel Nine v Network Ten (No 2) ............................... Indirect infringement – knowing, or having reason to know ........................... Authorisation of educational copying ................................................................. Copying for personal use ......................................................................................

241 245 247 247 248 255 256 256

Technological protection measures and rights management information ............................................................................................................. 257 Copyright on the internet ..................................................................................... 258 DEFENCES AND EXCEPTIONS TO INFRINGEMENT ........................................... Restrictions on the exercise of rights: defences and remedies for infringement .......................................................................................................... Fair dealing and other non-infringing use .......................................................... [6.350] Research and study ............................................................................. [6.360]

[6.370]

[6.420]

[6.440]

258 259

260 Copyright Act 1986 (Cth) ...................................................... 261

Criticism and review ........................................................................... 262 [6.380]

[6.390]

258

Commonwealth v John Fairfax & Sons .................................... 263

Parody and satire ................................................................................ 265 [6.400] TCN Channel Nine v Network Ten .......................................... 266 .............................................................................................................. 268 [6.420] Nine Network Australia v ABC ................................................ 268 [6.430] Fairfax Media Publications v Reed International Books Australia ............................................................................... 270

Judicial reporting and professional legal advice ............................... 273 221

Intellectual Property: Commentary and Materials

[6.450] [6.460] [6.465] [6.470] [6.470] [6.480]

Private and domestic use ................................................................... 274 Other exceptions and non-infringing acts ....................................... 274 Fair Dealing v Fair Usage .................................................................... 275

REMEDIES AND PENALTIES FOR INFRINGEMENT OF COPYRIGHT .................. 276 Locus standi ............................................................................................................ 276 Civil remedies ......................................................................................................... 276 [6.490] Interlocutory relief ............................................................................... 277 [6.500] Injunction ............................................................................................. 277 [6.510] Ex part