Australian Regulatory Compliance Review

Ice TV wins High Court appeal

In IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, the High Court has decided (6-0) that IceTV's use of some of Nine Network's time and title information obtained from aggregated program guides did not infringe Nine's copyright in its weekly schedules. The High Court restored the trial judge's original decision (see here and here).

The court was aware of the commercial implications.

Here's what French CJ, Crennan and Kiefel JJ (who delivered a separate judgment from Gummow, Hayne and Heydon JJ) said:

So as to indicate that the time and title information alleged to have been reproduced did not form a large part of a Weekly Schedule, the primary judge referred to the copying of "slivers of information". However, in order to assess whether material copied is a substantial part of an original literary work, it is necessary to consider not only the extent of what is copied: the quality of what is copied is critical.

This principle has a long provenance and it is particularly apposite when considering a compilation. Some compilations are no more than a selection or arrangement of facts or information already in the public domain. When the particular form of expression contains facts and information, it is not helpful to refer to "the rough practical test that what is worth copying is prima facie worth protecting". To take an example, facts are obviously worth copying for purposes such as a narrative work of history which depends on secondary sources. It is equally unhelpful to refer to the "commercial value" of the information, because that directs attention to the information itself rather than to the particular form of expression.

It is often said that questions of whether a substantial part has been copied are questions of fact and degree. However, a factor critical to the assessment of the quality of what is copied is the "originality" of the part which is copied....

Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error. The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and the entitlements of the reading public. The Act mandates an inquiry into the substantiality of the part of the work which is reproduced. A critical question is the degree of originality of the particular form of expression of the part. Consideration of the skill and labour expended by the author of a work may assist in addressing that question: that the creation of a work required skill and labour may indicate that the particular form of expression adopted was highly original. However, focussing on the "appropriation" of the author's skill and labour must not be allowed to distract from the inquiry mandated by the Act. To put aside the particular form of expression can cause difficulties, as evidenced by Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd.

It is not seriously in dispute that skill and labour was expended on producing the Weekly Schedules (and the Nine Database). The evidence disclosed considerable skill and labour involved in programming decisions. There was a contest about whether it mattered if some of the skill and labour expended was directed to business considerations. Plainly, the skill and labour was highly relevant to matters such as advertising revenue. It is not difficult to understand that questions of the timing of particular broadcasts are crucial for advertising revenues. The fact that business considerations inform the decision to adopt a particular form of expression will not necessarily detract from the originality of that form of expression.

However, the critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine's employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal. That is not surprising, given that, as explained above, the particular form of expression of the time and title information is essentially dictated by the nature of that information.

Surveyors entitled to be paid for copying of plans

In Copyright Agency Limited v State of New South Wales [2008] HCA 35, the High Court decided that the State of New South Wales was not entitled to use surveyors’ plans (by copying the survey plans and providing them to the public) without fairly remunerating copyright owners.

The court decided that consulting surveyors (who appointed CAL as their collecting agency) own the copyright in their survey plans, which are “artistic works” protected by the Commonwealth Copyright Act.

There was no claim that the State had breached copyright.

The Court held that various factors militated against implying a licence in favour of the State in respect of its dealings with survey plans.

• First, nothing in the conduct of a surveyor in preparing plans for registration involved abandoning exclusive rights bestowed by the Act, particularly since the statutory licence scheme qualified those rights on condition that remuneration be paid for permitted uses.
• Secondly, surveyors could not practise their profession without consenting to the provision of survey plans for registration, knowing the subsequent uses to which plans would be put.
• Thirdly, an application by a surveyor for fair remuneration for government uses of survey plans involving copying and communication of the plans to the public after registration did not undermine clients’ use of the survey plans for lodgement for registration and issue of title.
• Fourthly, neither a surveyor nor their client could factor into fees under the contract between them, copying for public uses done by the State.
• Fifthly, the State charged for copies issued to the public.
• Sixthly, nothing in the express terms of the Act could justify excluding copying and communication of plans to the public.

Regulatory constraints on innovation and access to public information

Joshua Gans has written a humorous but relevant opinion piece on the restrictions on republishing information published on government web sites.

His point is that there is much government data (he gives the examples of the location of public toilets and bus and train timetables and potentially FuelWatch data) which is either inaccessible when you want it or is published in a form that is not easy to use which third parties could re-use for the public benefit (plus a marginal profit).

It reminds me of the government practice of requiring copyright over all third party contractors' work even though the government did not keep a record of what they owned or how it could be used.

Whilst there are no doubt copyright and contractual issues, the issue also reflects cultural and philosophical beliefs about the ownership of (intellectual) property.

It is worth quoting US copyright lawyer William Patry who this week stopped writing his blog citing the depressing state of copyright law:

Copyright law has abandoned its reason for being: to encourage learning and the creation of new works. Instead, its principal functions now are to preserve existing failed business models, to suppress new business models and technologies, and to obtain, if possible, enormous windfall profits from activity that not only causes no harm, but which is beneficial to copyright owners.

UPDATE: If you're interested in exploring the concept of creativity and the law then you have to read Blawg Review#171. Here's how it starts:

"If intellectual property had a theme song it would have to be "Like a Virgin." 

Why?

Because IP is all about "the very first time," the "aha" moment, the creative spark that gives rise to previously undreamed imaginings.The restrictions of "how we've always done things" fall away and the numbing repetition of days become vibrant. " Read more

Keep your trade marks current: Gallo v Lion Nathan

In  E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934 the Federal Court rejected a claim by Gallo that Lion Nathan's trade mark "Barefoot" in relation to a beer infringed its trade mark "Barefoot" in relation to wine.

Not only did Gallo fail to stop Lion Nathan, Lion Nathan succeeded in its counter-claim that Gallo's trade mark be removed for non-use.

A detailed analysis of the case is made by Nicholas Weston here.

Copying other people's designs: a defendant wins

In Inform Design and Construction Pty Ltd v Boutique Homes Melbourne Pty Ltd [2008] FCA 912  the Federal Court rejected a copyright claim in house plans (see previous note on Barrett v Metricon).

Kim Weatherall analyses the case in detail here: she concludes the defendant was able to substantiate its claim of independent design by producing a credible chain of evidence including a history of draft plans which evolved into the design in dispute which was similar to the plaintiff's.

Review of photo and film copying (format-shifting) law

A review of sections 47J and 110AA of the Copyright Act 1968 governing the private copying of films and photographs has recommended that no changes be made to current copyright law for the time-being. 

Sections 47J and 110AA of the Copyright Act 1968 were introduced in 2006 to permit "format-shifting" by allowing photographs and cinematograph films to be reproduced in a different format for private use, subject to certain conditions.

Who owns employee inventions?

In University of Western Australia v Gray (No 20) [2008] FCA 498 the Federal Court of Australia rejected a claim by the University that ownership of an invention relating to cancer treatment belonged to it and not its employee who was appointed to teach and to conduct and stimulate research. Gray's conditions of appointment did not expressly reserve the ownership of inventions to the University.

It was a fiercely contested and complex matter: The trial of the action lasted some 50 days with the Court sitting extended hours most days to ensure that the trial was finished within the available time.  There were some 4,586 pages of transcript and more than 1,000 documentary exhibits.  Much of the case was based on the documentary evidence which related to a 20 year period.

The trial judge remarked: It would seem that the only secure way for UWA to acquire property rights from its academic staff in respect of intellectual property developed by them in the course of research at UWA is by express provision in their contracts of employment.  Even then, as this case demonstrates, the transaction costs of administering and enforcing such provisions and the uncertainty surrounding their scope and application, raises a real question as to their utility.

In this case the employee had no duty to invent and therefore the issue was whether his inventions were created in the course of his employment.

The common law provides that "Where an employer is entitled to the benefit of an employee’s invention by express provision or by implication, the employee will hold the invention in trust for the employer. " But the common law did not apply to this particular case of an academic employed by a university to undertake research and other duties with no duty to invent.

The judge concluded:

"Research of the kind that Dr Gray was engaged to do carried with it the possibility that he would develop inventions capable of attracting patent protection.  The duty to undertake research could be discharged in a variety of ways.  These were within the discretion of the researcher. One of the ways in which the duty could be discharged was the development and testing of new technologies. It could be said therefore that an invention made in the course of Dr Gray’s research activities as an employee of UWA was an invention made within the scope of his employment and doing what he was employed to do.  It does not follow that there was an implied term that the rights to which his invention gave rise belonged to UWA....

In my opinion the circumstances of Dr Gray’s employment at UWA and those of the other academics employed as researchers with him negated the implication of any term whereby UWA acquired rights in relation to inventions developed in the course of their research. In that respect the case demonstrates the validity of the cautionary observation by Monotti and Ricketson in their book Universities and Intellectual Property – Ownership and Exploitation (Oxford University Press, 2003) (at p 6.59):

... it will be unwise for a university to rely upon general principles if its intention is to claim title to inventions that are made by its academic employees during their working hours and using university facilities and funding."

Nine wins Ice TV appeal

In Nine Network Australia Pty Limited v IceTV Pty Limited  [2008] FCAFC 71 the Federal Court of Australia Full Court allowed Nine's appeal against the original decision (discussed here) which permitted Ice to reproduce Nine's TV schedules in electronic form.

The Full Court decided that Ice TV had infringed Nine’s copyright in its television program schedules by indirectly copying  a substantial part of the television guides.

On the issue of substantiality of the copying the Court decided:

Ice’s use of time and title information, derived ultimately from the Weekly Schedules, involved the reproduction of more than a slight or immaterial portion of Nine’s copyright work...Ice appropriated many pieces of the time and title information, apparently on a weekly basis. It did so in order to create something commercially valuable out of templates that otherwise would have had no commercial value to it...When the quality of the material taken by Ice is considered, the substantiality of the part taken becomes even clearer.  Ice took, via the Aggregated Guides, precisely the pieces of information that reflected the exercise of skill and labour by Nine in determining the program for a particular day or other period.

On whether there was a link between the time and title information in IceGuide and Nine's Weekly Schedule the Court said:

Ice used Nine’s copyright work by indirectly copying time and title information from the Aggregated Guides.  Ice could not fulfil the requirements of its business model unless IceGuide incorporated accurate and up-to-date details of Nine’s programming schedule...Ice in fact updated and confirmed the accuracy of its database by accessing, on a regular and systematic basis, the Aggregated Guides.  Ice took time and title information from, and checked other details against, the Aggregated Guides.

For an analysis of the decision see Kim Weatherall's comments here.

.au domain name registration and transfers policy

A new policy on transfers of .au domain names will take effect on 1 June 2008.

auDA (the Australian Domain Name Administrator) has announced that key features of the new policy are as follows:

• it will not be allowable to register a domain name for the sole purpose of resale or transfer to a third party
• registrants will not be able to transfer their domain name for the first 6 months after the initial registration (this does not apply to domain names that have been renewed or previously transferred)
• after 6 months, registrants will be able to offer their domain name for sale/transfer by any means (eg. by listing the domain name for sale on a domain brokerage website, advertising the domain name for sale in a newspaper, or contacting a prospective buyer directly)
• the new registrant must comply with normal eligibility and allocation rules:
  registrant transfers will be processed by the registrar of record using a standard transfer form, and the registrar may charge a transfer fee
• parties to a transfer will be asked to disclose the sale method and price, on a voluntary and confidential basis, so that auDA may collect aggregated statistical data to improve access to market information for buyers and sellers.

The current Transfers (Change of Registrant) Policy (2004-03) remains in force until 1 June.

Cadbury fails to stop Darrell Lea from using the colour purple

In a partial rehearing of its passing off action against Darrell Lea, Cadbury has failed to stop Darrell Lea from using the colour purple.[ Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 8)  [2008] FCA 470]

Even though certain expert evidence had to be heard, the trial judge thought the evidence made no difference and rejected Cadbury's long-running claim.

I am not persuaded that Darrell Lea, in using the colour purple, has passed off its business or products as those of Cadbury or contravened the Trade Practices Act.  I am not satisfied that such usage has resulted, or would result, in a hypothetical ordinary and reasonable member of the class constituted by prospective purchasers of chocolate being misled or deceived, contrary to ss 52 or 53(c) and (d).