Australian Technology and IP Business

Facebook US wins Australian domain name dispute

In the WIPO Administrative Panel Decision  Facebook, Inc. v. Callverse Pty Ltd Case No. DAU2008-0007 Callverse which had registered <facebook.com.au> was ordered to transfer the name to Facebook US.

The decision analyses the 3 grounds required to be satisfied in a domain name dispute.

Worldwide patent searches

Try PriorSmart.com for worldwide patent searches.

AusPat: Australia's new patents search engine

IP Australia has launched AusPat, the new search system for Australian patents.

Its coverage goes back to 1904.

Intellectual property for businesses in Australia

Patent attorneys Eagar & Buck have published a White Paper (pdf) on intellectual property for businesses in Australia. It comes with a self-assessment questionnaire (pdf).

The White Paper includes:

• Numerous case studies illustrating the use and misuse of IP.
• Guidelines to implementation of an intellectual asset management program.
• How to identify hostile competitor IP positioning before it causes financial loss.
• IP checklist before launching a new product or brand.
• How to stop employees leaving with critical IP assets.

Domain name disputes 2007 update

WIPO reports that in 2007, a record 2,156 complaints alleging cybersquatting - or the abusive registration of trademarks on the Internet - were filed with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center (Center), representing an 18% increase over 2006 and a 48% increase over 2005.

WIPO parties have settled a quarter of all cases without a panel decision. Of the remainder, 85% of panel decisions have ordered transfer of the domain names in question to the complainant and 15% of the complaints were denied, leaving the names in the possession of the registration holder.

The top five sectors for complainant business activity were Biotechnology and Pharmaceuticals, Banking and Finance, Internet and IT, Retail, and Entertainment.

Domain Name Tasting

Domain name tasting exploits the fact that someone registering a domain can keep it for up to five days and then return it for free. Some operators are using that grace period to test domain names for marketability. Visitors find an empty site.

A proposal has been put to ICANN, which oversees the grace period, to limit the number of refunds any registrar can claim on behalf of customers.

It wants the operators of generic top level domains (gTLDs) such as .com or .org to be restricted in the refunds they can offer. It has proposed that they only be allowed to offer refunds to 10% of the newly registered domain names in any given month. If that number is under 50 they will be allowed to refund up to 50 fees.

Website designer fails in action against former employee

In Dais Studio Pty Ltd v Bullet Creative Pty Ltd [2007] FCA 2054 Dais failed in its action against a former employee it accused of copying without authorisation 2 utility files from its website design program.

Dais sued for infringement of copyright, to restrain the unauthorised use of confidential information, for breach of contract and for breach of certain provisions of the Corporations Act 2001 (Cth).

Although the judge concluded that each of the 2 small files  was a computer program, and therefore a literary work capable of being protected by copyright, Dais failed to prove they were a substantial part of the source code as a whole in their program.

Does copyright in a label prevent importation?

In The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49, the Australian copyright owner of the Palph Laren "polo player" symbol failed in its action under s 37 of the Copyright Act in the Federal Court to prevent clothing bearing its embroidered logo being imported from USA into Australia.

The symbol was lawfully embroidered overseas into the external surface of an article of clothing, but the  person entitled to the copyright here did not consent to its importation.

The defendants succesfully contended that the polo player logo embroidered on each article amounted to a non-infringing accessory within the meaning of the exception to infringement in section 44C of the Copyright Act, because it is a ‘label’ embroidered onto an article of clothing.

Use of name permitted: Mythbusters

In Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 the Full Court of the Federal Court of Australia rejected an appeal by Mr Knight from the Court's dismissal of his claim that Beyond Properties breached the Trade Practices Act 1974 (Cth) and engaged in the tort of passing off by publishing its Mythbusters television programs and spin-off books. Knight earlier wrote (using a nom de plume) 3 books about a group of persons who investigate paranormal or supernatural phenomena, using the name of ‘Mythbusters’.

The central issue for determination in thes appeal was whether the use of the name ‘Mythbusters’ in the Mythbusters TV Show was likely to wrongly suggest to the mind of a reasonable television viewer that the show was associated in some way with Mr Knight’s Mythbusters Books (and other associated activities, such as interviews and plans to develop a television show of his own) when in fact, as is acknowledged by both parties, there was never any such association. Determination of this issue involved a consideration whether Mr Knight’s reputation in relation to the name was sufficient to provide a reasonable basis for such an assumption of association.

The trial judge concluded as a question of fact that the development and adoption of the name had nothing to do with Mr Knight or any of his ideas, and that it was a belated choice because "it was a catchy term descriptive of the activities portrayed by the Mythbusters TV show".His Honour analysed the material supplied by Mr Knight, including material which his Honour held was not received by Beyond, and found no similarity between the content of Mr Knight’s Mythbusters Books and other materials and the content of the Mythbusters TV Show.

The Full Court agreed that Mr Knight failed to prove a sufficient connection between the Mythbusters TV Show and his books: "any reputation vested in Mr Knight’s Mythbusters Books, quite apart from being limited to a narrow class of television broadcasters and executives, was not sufficiently widespread to create an association in the mind of the ordinary television viewing public with the Mythbusters TV Show when that show entered the public arena in late 2004."

we are of the view that the term ‘Mythbusters’ describes, in general terms, the breaking of beliefs or understandings wrongly held in relation to a certain topic or proposition, and is therefore in a broad sense descriptive.  It is, however, also true that when one looks at the Mythbusters TV Show, the type of myths it addresses, the personalities of the presenters, the format of the show, the script, and the methods used are not described by the term ‘Mythbusters’, and to this extent the term is not descriptive.  His Honour so concluded, and he used the expression "to an extent at least" at... to indicate that the name ‘Mythbusters’ was only broadly descriptive of the process of "busting" myths, and did not describe the detailed content of the program with any specificity.

Legal Aspects of Web 2.0 Activities

"Legal Aspects of Web 2.0 Activities: Management of Legal Risk Associated with Use of YouTube, MySpace and Second Life"(pdf), considers general issues created by these social networking sites as well as specific issues created in each case. (via The House of Commons)

Lessig at TED: are we heading for a "read only" culture?

I saw Professor Lessig speak in Brisbane 2 years ago. He has a distinctive presentation style.

At TED this year he distilled his argument into an entertaining, but persuasive, 20 minute presentation on the nature of copyright, youth culture and technology. Do we want a "read only" culture (where use of original material is restricted) or a "read/write culture" (where original material can be adapted)?

Watch the video here.

Implications of US file sharing decision for Australia

Last week's US copyright breach decision in favour of the record companies ($222,000 for 24 songs, $9,250 for each) has raised the question: could it happen in Australia?

Kim Weatherall gives a thorough analysis of the differences in concluding that actions against individuals are unlikely here.

Copying house designs: Barrett Property Group Pty Ltd v Metricon Homes Pty Ltd

In Barrett Property Group Pty Ltd v Metricon Homes Pty Ltd [2007] FCA 1509 the Federal Court upheld a breach of copyright claim by Porter Davis Homes because substantial parts ("the alfresco quadrant") of certain of its home designs had been copied by Metricon Homes to produce designs from which project homes have been built and sold to the public.

Judge Gilmour gives a thorough review of copyright issues relating to project home design and the importance of "overall impression", analysing firstly whether the claimant's design was capable of protection and then conducting an objective similarity analysis to decide whether the defendant's designs were in breach.

Liability of internet forum operators: Silberberg v The Builders Collective of Australia Inc

In Silberberg v The Builders Collective of Australia Inc [2007] FCA 1512 the Federal Court of Australia held that the person who posted messages on to an unmoderated Internet discussion forum which contained material which caused offence and distress to the subject of the messages because of his Jewish race and ethnicity breached Pt II of the Racial Discrimination Act 1975 (Cth). But the forum operator was not held liable.

Whilst the failure of the operator to remove the material was offensive, the trial judge could not conclude that the operator's failure to remove the offensive material was attributable, even in part, to the race or ethnic origin of the applicant.

He distinguished the test under the Racial Discrimination Act from the liability of a publisher for defamation or breach of copyright. 

Is the Collective responsible without actual knowledge of the offensive contents of the messages? If the question arose in defamation or breach of copyright, the answer is likely to be in the affirmative. The Collective chose to conduct an open anonymous forum available to the world without any system for scrutinising what was posted.  The party controlling a website of such a nature is in no different position to publishers of other media. In my opinion, failure to remove the offensive material within a reasonable time of it having been posted was an act caught by s 18C(1)(a)...

However, there is substance to the argument that the failure to remove the offensive material has not been shown to have any relevant connection with race or ethnic origin of the applicant or indeed any other Jewish person as required by s 18C(1)(b) of the Act. The failure of the unidentified administrator to remove the Second Message on and after 1 July 2006 was the clearest case of failure to act.  I cannot conclude that such failure was attributable, even in part, to the race or ethnic origin of the applicant.

For further comment on this case see this post by a representative for the forum operator. See also his comments on other cases pending relating to forum operators.

Australian Blogging Conference 2007: legal issues

Bloggers are a diverse bunch and thanks to organiser Peter Black the Australian Blogging Conference managed to have something of interest for most people: politics, legal issues, research issues, creativity, citizen journalism, education and corporate and business blogging.

I deal with the business blogging session here. And there's a note on the politics of blogging here and here. So this note deals with the legal issues and other thoughts on the day

First off, my observation was that they weren't all techies. I had just read Cory Doctorow's When Sysadmins Ruled the Earth and was relieved to be with ordinary "authentic" people (see attendee's list).

I was spoiled for choice but was pleased I attended the Legal Issues session. The theme ended up being "what are the risks related to what you say on your blog, what other people say on your blog and what you link to?". Lead by Professor Brian Fitzgerald and Nic Suzor from QUT and Dale Clapperton from Electronic Frontiers Australia over 2 hours we ranged from copyright to defamation, primary and secondary liability issues, "innocent dissemination", a brief history of internet law, privacy, what we'd like in a blogger's guide to law and current legal actions.

The bottom line: understand the risks and take strategies to minimise them (and don't rely on US centric information).

I see that Dale Clapperton has posted a note on "backdoor defamation" issues we didn't get to properly.

Also noted were Legal Issues for Wikis (pdf) and  Blogs and the Law.

WIPO Internet treaties come into force in Australia

On 26 July 2007, the World Intellectual Property Organisation (WIPO) Copyright Treaty and the Performances and Phonograms Treaty came into force in Australia. The treaties are known as the Internet treaties and protect copyright in the online environment. There are over 60 other parties to the treaties including the USA, Japan and China.

The coming into force of the treaties means that Australian creators and performers will enjoy digital-age protection for their creative output in other treaty‑member countries.

It also means that Australia’s performers will enjoy the right to be known and respected for their performances in a similar way to authors and film-makers.  Now that Australia is a party to the WIPO Performance and Phonograms Treaty, provisions currently set out in Note 2 of the Copyright Act for performers’ moral rights come into operation as new Part IX.

A fact sheet outlining moral rights for authors, film-makers and performers is available.

Copyright infringement notice scheme guidelines

The Attorney-General's Department has developed draft guidelines for the administration of the infringement notice scheme. These are intended to assist police officers in the administration of the scheme. For example, these include a list of factors that police officers may take into account when deciding whether to issue an infringement notice, and procedures for the destruction of forfeited infringing copies.

The introduction of the scheme was designed to deal specifically with lower-level copyright crime such as first time offenders, street stall or market operators.

The draft guidelines are open for consideration and comment until 5 October 2007.

Copyright Infringement Notice Scheme

The Attorney-General’s Department has developed draft guidelines for the administration of the infringement notice scheme introduced in 2006 to the Copyright Act.

The scheme is designed to deal specifically with lower-level copyright crime such as first time offenders, street stall or market operators,

An infringement notice penalty is 12 penalty units ($1,320).

Comments can be made until 5 October 2007.

Channel Nine loses IceTV action

In Nine Network Australia Pty Ltd v IceTV Pty Ltd [2007] FCA 1172 Nine's action for breach of copyright against Ice TV for reproducing its TV schedules in electronic form was dismissed by the Federal Court.

The Court held that Nine owned the copyright to its program guide but dismissed Nine's claim on the basis that IceTV "does not reproduce a substantial part of" Nine's guide.

Nine provides its schedules to "Aggregators" who  integrate the schedule with that of other free to air stations and edit and add to the information for inclusion in the various public guides and determine the arrangement of that information. There was no claim by the Aggregators that Ice infringed their copyright.

Ice contended that it did not copy the aggregated guides but created its templates by watching the broadcast programs and writing down the title of the programs and the days and times at which they were shown.

The Judge found that Ice did take "slivers of time and title information each day from the Aggregated Guides. ... Ice does not reproduce a substantial part of the Weekly Schedule in so doing."

Justice Bennett agreed with IceTV that its "electronic program guide" was compiled independently and ordered Nine to pay IceTV's costs.

see Fairfax Digital's report

Online contracts, eBay and legal enforceability

According to the Sydney Morning Herald, the Supreme Court of New South Wales has upheld the enforceability of an online sale on eBay (Judgment in Smythe v Thomas now available online here).

The successful online bidder of a vintage WWII plane sued the seller after the seller refused to complete the sale. (The seller had been offered $100,000 more off-line by someone else). The online buyer won the case.

Business 2.0 also reports on an advance in online contracts: Tractis, the first Web platform that lets users create, manage, and execute contracts online from a Spanish startup called Negonation. (via law.com)

For a refresher on the Australian law see my March 2006 post here.

ACCC alleges Google adwords misleading

Further to a previous complaint against Trading Post, the ACCC has issued proceedings against Google and Trading Post over their use of adwords.

UPDATE 5 October 2007: Directions hearing

Version 3 GNU General Public License issued

Version 3 of the GNU General Public License has been issued.

FAQ's here.

High Court refuses BP appeal for colour green

In BP plc v Woolworths Limited [2007] HCATrans 249 (25 May 2007), the High Court of Australia has refused BP's application for special leave to appeal against the Full Court of the Federal Court's decision that BP's application for a trade mark over its colour green be refused.

Notwithstanding BP's successful registration of the colour green (more specifically  pantone 348C) in Benelux, France, New Zealand, Andorra, Azerbaijan, community trade mark in France, Germany, Guernsey, Indonesia, Jersey, Poland, Portugal, Singapore, Spain, Switzerland, Turkmenistan, the UK, Hong Kong, Fiji, Malaysia, Mozambique, Philippines, Ukraine and the United States of America, the High Court was concerned about its use of green in conjunction with yellow.

BP's counsel's argued that "we are not claiming all use of the colour green.  We are only claiming that use of the colour green which is used as a trademark...It is not contended that their (Woolworth's) use of green would constitute an infringement of the mark", but the Court was more interested in a possible hearing of Cadbury's case in respect of purple.

Telstra-Fox NRL dispute settled

According to the Sydney Morning Herald and Fairfax Telstra's dispute with NRL over internet broadcast rights has settled.

Although I can't find a media release from Telstra, NRL or News Limited on the issue, Fairfax reports that Telstra agreed to resume its sponsorship payments to NRL following an agreement between News and Telstra to limit the amount of time that News-related companies could broadcast footage for news reporting. Fox Sports will be able to broadcast up to 105 seconds of each match on its website and offer 90 seconds on mobile phones. The deal does not impose any time limits on other media outlets in broadcasting news reports about the code.

Cadbury wins partial retrial on ownership of purple

In Cadbury Schweppes Pty Ltd (ACN 004 551 473) v Darrell Lea Chocolate Shops Pty Ltd (ACN 000 498 386) [2007] FCAFC 70 (21 May 2007), Cadbury won an appeal against the Federal Court's original decision that Cadbury does not have an exclusive reputation in the use of this dark purple colour in connection with chocolate and that, therefore, by such use of purple, Darrell Lea engaged in conduct that is misleading and deceptive, in contravention of provisions of Part V of the Trade Practices Act 1974 (Cth). Cadbury also claimed that Darrell Lea’s conduct constitutes passing off of its chocolate confectionary business and products as a business or products of, or connected or associated with, Cadbury.

The principal question in the appeal was whether the primary judge erred in refusing, in the course of the trial, to admit certain evidence that Cadbury sought to adduce from Brian John Gibbs, Associate Professor of Marketing and Behavioural Science in the Melbourne Business School at the University of Melbourne and others relating to the making of consumer decisions for the purchase of chocolate.

On appeal the Full Court found that the evidence was wrongly rejected and the Court could not conclude that there was no miscarriage of justice."If the evidence of Dr Gibbs and Messrs Stavros and Riches were to be accepted at face value, it would certainly be open to a Court to find that Darrell Lea’s use of purple is likely to cause the consumer errors identified by Dr Gibbs. That could be sufficient to justify a conclusion that Darrell Lea had engaged in conduct that was likely to mislead or deceive."

The action was remitted to the primary judge for further hearing.

When is a work "artistic"?

In Burge v Swarbrick [2007] HCA 17 (26 April 2007), the High Court of Australia considered the meaning of "artistic work" in s 10 and in s 77(1)of the Copyright Act and whether copyright protection for the designer was available for a yacht marketed as the "JS 9000" in Australia, Europe, the United States and elsewhere.

The designer (Swarbrick) failed in his claim because the boat was designed to satisfy functional utilitarian considerations (eg speed, safety) and be mass-produced rather than for artistic purposes.

The designer had not registered the design under the Designs Act.

Intellectual Property Principles for Australian Government agencies

What happens to intellectual property (IP) acquired by the Australian Government through its many activities in science, health, education, public infrastructure, information technology, defence and arts and culture?

Most government contracts stipulate that IP created under the contract belongs to the Crown. Is there a list of such rights? Can the public have access to such IP?

Whilst it does not answer these questions specifically, the Statement of IP Principles (pdf) (published by the Attorney-General's Department) provides a framework for effective management of IP by Australian Government agencies. It identifies a range of issues relevant to effective management of IP, including procurement, record keeping, industry development and broader innovation policy, and public access.

All Australian Government agencies which are subject to the Financial Management and Accountability Act 1997 must comply with the requirements of the Statement of IP Principles by 1 July 2008.

A guidebook, the IP Better Practice Manual, will provide agencies with up-to-date information on implementing the Statement, and is expected to be published in late 2007.

What is copyright fair dealing on the internet?

In Telstra Corporation Pty Limited v Premier Media Group Pty Limited [2007] FCA 568, the Federal Court refused to grant Telstra (which had an exclusive license from the NRL to show NRL matches on the internet) an injunction against FoxSports News using NRL match highlights audio-visual footage on its website.

The interim hearing focussed on whether the use was fair dealing under s 103B of the Copyright Act.

There was no dispute that the footage used in each Fox Sports news report on each NRL match represented a substantial part of whatever copyright might subsist in the total footage of an individual match. FoxSports said, however, that the relevant footage was a fair dealing with an audiovisual item for the purpose of or associated with the reporting of news by means of a communication, and hence within s 103B(1)(b).

The length of each of the footage in relation to each match covers a range of times but the longest were over two minutes of footage from the match.

Judge Allsop said:

31 The evidence reveals that in other media, that is free to air television and pay television, there has been over the years, the use of audio visual footage of a similar nature to the impugned program. Examples include past and present programs, such as Channel 10’s "Sports Tonight", SBS’s "World Sport" and "World Game", Channel 9’s "AFL Footy Show" and Channel 7’s "Sportsworld" and "Sportswatch".

32 Similarly, pay television had broadcast news services that include sporting news, for instance, "SKY News". The respondents submitted that it is an integral part of free to air or pay television news services to report on events by showing relevant video footage of a particular sport, such as rugby league.  Just as events are covered in written match descriptions in print media.  Fox Sports News is a species of that form of sporting news which has for many years been shown on Australian television, and I accept those submissions.

33 It is unnecessary to compare minutely the length of time taken in these examples of other media, given the respondents’ evidence as to the impugned broadcasts.  It may be, and I do not make a finding about this now, that even by these standards, that is the standards of pay television and free to air television, it will be found, that the respondents have, to put it bluntly, been a little greedy in what they have taken for the dealing to be fair as well as newsworthy...

36 I accept that there will be a substantial issue on a final hearing as to the operation of the internet and mobile phones and telephony, including the nature and character of their structure, and how the public use them.  This will be important in the assessment of fairness in the fair dealing, in the use of audio-visual footage and in the delivery of news.  At an interlocutory level, however, I am simply not persuaded that there is a case to distinguish delivery of such programs on the internet and telephony from free-to-air and pay television, bearing in mind the clear conduct of Telstra in negotiating the AFL bargain in December 2005.

UPDATE 22 May: Dispute settled

e-Research conference

The QUT e-Research project will hold a Legal Framework for e-Research Conference from 11th-12th July on Queensland's Gold Coast.

This conference aims to analyse the legal framework necessary to ensure the effective take up of e-Research techniques in Australia. The conference program will address issues, including:

• Research contracts
• Data sharing
• Patent licensing
• Privacy

More information

Open content licensing and creative commons

The QUT Creative Commons and Open Content Licensing conference in January 2005 brought together leading thinkers on the internet, law and the importance of open content licensing in the digital age. (see my posts on Day 1 and Day 2 and video streams of the conference).

Drawing on the material presented Sydney University Press has now published Open Content Licensing: Cultivating the Creative Commons, edited by conference convenor Professor Brian Fitzgerald.

It is an excellent resource not just on legal issues but also for case studies on projects as disparate as art, education and gaming.

Both the hardcopy and the electronic version of the book have been published under a Creative Commons Attribution-Noncommercial-No Derivatives licence.

A PDF of the entire work can be downloaded for free from the QUT e-Prints Archive. Individual chapters can be downloaded here.

via The House of Commons.

Australian online legal services

I attended Simon Lewis' Sinch Online Legal Services Conference 2007 last Thursday.

My overall impression is that there are a number of Australian lawyers actively using the web to deliver their services, whether to consumers, businesses, governments or to other lawyers and accountants. Some are at an early stage while others are well advanced.

There was vibrant discussion about business models and billing methods as well as technology.

Presenters and case studies discussed included:

• Fabian Horton (ConnectLaw)
• Dr Andrew Stranieri (JustSys)
• David Brown (The Automatic Debt Collector)
• Tim Weekes (PromoLaw)
• Peter Mericka's Lawyers Real Estate
• Jim Severino (HR Advance and FantasticNew)
• Stephen Bonner (Information Exchange)
• Chris Balmford (ClearDocs)

Thank you Simon for organising this forum.

Geographical indications: protected names in Australia

A Geographical Indication (GI) is an official description of a region to protect the reputation and name of a product of that region.

In Australia the only geographic indications are for an Australian wine zone, region or sub-region. GI is similar to the Appellation naming system used in Europe. There are no Australian geographic indications currently for food products.

GIs are determined by the Geographical Indications Committee, a statutory authority of the Australian Wine and Brandy Council (AWBC), and listed on the Register of Protected Names, which is maintained by the AWBC.

The GI system was introduced in 1993 to allow Australia to fulfil its Agreements with the European Community on Trade in Wine and the Agreement on Trade-Related Aspects of Intellectual Property Rights.

The Register therefore contains geographical indications in relation to wines manufactured in an agreement country and the conditions (if any) applicable to those indications (eg Champagne, Chianti) as well as geographic indications in relation to wines manufactured in Australia (Margaret River, Barossa Valley).

Viacom sues YouTube and Google

The biggest news in copyright on the internet is Viacom v YouTube and Google (pdf copy of complaint via Lessig).

For a less serious perspective here's Jon Stewart's The Daily Show and Demetri Martin. (Note that I've linked to the Comedy Central's lawful version which includes a short lawful ad at the beginning...worth sitting through).

International Trade Mark Information: ROMARIN database

The ROMARIN database contains information regarding all international marks recorded under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, that are currently in force in the International Register.

An online version of ROMARIN is updated daily and free.

ROMARIN stands for "Read-Only-Memory of Madrid Active  Registry INformation".

Copyright, the internet and the entertainment industry

I attended a terrific public address last night by Professor Terry Fisher (Harvard University) at the State Library organised by QUT's IP: KCE research group.

In 1 hour Fisher took us on a tour of copyright issues in the enertainment industry from the past, how they are affected today by the internet and he then suggested some alternative futures.

What made his presentation so effective was his use of an economic framework, not just a legal one, starting with consumption and production and reference to statistics of what was actually happening.

Although he used charts and only one video (the "Grey movie") his visual presentation was based on a mindmap (using Freemind) with links to charts on powerpoint and keynote.

He gave 4 possible futures (and suggested there might be a combination of one or all of them):
1. Strengthen existing IP rights
2. Reinforce self-help strategies
3. An alternative compensation system.(the most radical)
4. A renewed entertainment ecology.

He argued that the existing entertainment giants prefer 1 and 2. He is in favour of 3 and if not 3, then 4.

Number 3 (a new compensation system) proposes that there be no copyright for digital content but that there be a new tax to pay creators of content including a tax of $5 a month per user of broadband internet services. The money would be distributed based on the frequency of consumption (ie watching/listening) not by downloads. Any counting technology would need to overcome privacy issues and manipulation.

His next best alternative is 4, a whole new framework which compensates creators fairly but makes digital content freely available by allowing new business models.

He gave an example of a new project in which he has an interest: Noank Media.

Summary: a whirlwind 1 hour tour of the issues plus an insight into possible futures.

Website take down notices

Peter Black at Freedom to Differ has a good analysis of take down notices under Reg 20J of the Copyright Regulations as used by the NSW Minerals Council against a critical web site.

Copyright fact sheets

A series of fact sheets on the new Australian copyright laws have been released by the Attorney-General, the Hon Philip Ruddock MP, including:

• offences for unauthorised pay-TV access;
• jurisdiction of Copyright Tribunal;
• criminal offence provisions;
• customs seizure of imported infringing copies;
• private copying – format-shifting;
• private copying of music;
• parody and satire;
• evidential presumptions;
• technological protection measures liability scheme;
• time-shifting;
• use of copyright material for certain ‘special’ purposes;
• commercial-scale electronic infringements;
• preservation copying;
• educational institutions – performances in the classroom and internet-caching; and
• official copying of library and archive material.

The fact sheets are available to download from the Attorney-General's Department’s website from the Copyright Amendment Act 2006 page.

Being a director of a VC-backed company

A VC Working Group On Directory Accountability And Board Effectiveness has released a White Paper on " A Simple Guide to The Basic Responsibilities of VC-Backed Company Directors" (simple registration required).

The Guide covers the following topics:

• What You Need to Know Before Joining the Board
• Defining the Board’s Essential Role
• General Duties and Responsibilites of Private Company Directors
• Summary of the Legal Requirements of Board Service
• Common Characteristics of Effective Private Company Boards/Directors
• Common Characteristics of Ineffective Private Company Boards/Directors
• Minimum Service Expectations of VCBC Directors
• Minimum Expectations of Board Service for Management Directors
• Minimum Expectations of Board Service for Independent Directors
• Minimum Expectations of Board Service for VC Directors

The Guide also provides some useful board and director evaluation tools.

It is easy to read and provides a good introduction for someone who is approached to serve on a start-up board.

Is Banjo Paterson Australia's most famous copyright lawyer?

I was listening to ABC Radio National and heard Pip Wilson being interviewed about Henry Lawson and Mary Gilmour. Then he mentioned Banjo Paterson, Lawson's friendly rival as Australia's national poet.

Pip Wilson said that Paterson was Lawson's copyright lawyer. Wow!

No wonder Wilson is so enthusiastic about late 19th century literary Australia: Lawson, Paterson, The Bulletin at their most creative. And Paterson is working in the city as a lawyer for his day job protecting Australia's literary heritage.

Great stuff: Wilson's novel Faces in the Street

Second Life: a fresh approach to a cease and desist letter

Cease and desist letters are usually heavy-handed.

But when Darren Barefoot put up a parody of Second Life called Get a First Life, using a variation of Second Life's logo, Second Life's lawyers responded with a nonexclusive, nontransferable, nonsublicenseable, revocable, limited license to use the modified eye-in-hand logo rather than a prohibition demand.

Advertising broadband internet speed

The ACCC has released an Information Paper which provides guidance on how the ACCC approaches claims about broadband internet speeds.

The ACCC says that ISP's  are likely to breach the Trade Practices Act if:

• they use maximum theoretical download speeds to describe the speeds available to users of internet services
• they have no basis to believe the represented speeds will be available to a future customer or their basis is not reasonable
• they only provide a maximum speed and no further information on the speeds actually available or the factors affecting speeds

The ACCC is concerned with ADSL2+ being described as a 24Mbps/1Mbps service and with blanket claims that 24Mbps/1Mbps is an “up to” or “maximum” speed.

The ACCC's guidelines say that:

• ISPs should avoid using hypothetical speeds in headline claims describing a service and in the names or titles that ISPs give to particular plans.
• Headline speed claims could be avoided entirely for descriptions such as “ADSL2+”. “Maximum” or “up to” claims could be avoided in favour of typical speeds or a typical range of speeds.
• If the stated speed cannot be provided to a single customer then it is misleading to describe a service as reaching “up to” that speed. Similarly, if the stated speed can only be delivered to a limited number of customers, but the advertisement is directed to the public at large, there may be a contravention of the TPA.
• ISPs must be able to substantiate stated maximum or “up to” speeds as being achievable by users of their services.

The ACCC monitors advertising by ISPs, and has stated that it will continue to closely monitor advertising of internet speeds to ensure that high-speed broadband services are appropriately qualified.

The Paper makes it clear that all ISPs must comply with the TPA regardless of their size or whether they are a network owner or a reseller of others’ services.

The Information Paper focuses on Asymmetric Digital Subscriber Line (ADSL) services and, in particular, on ADSL2+ services. However, the ACCC warns that ISPs should ensure that all advertisements for internet services comply with the TPA and that these principles apply also to cable and wireless broadband as well as 3G High-Speed Downlink Packet Access (HSDPA).

Copyright Act updated

ComLaw has issued an updated version of the Copyright Act including the amendments made in November 2006.

Copyright meme

My last post looked at the different types of Creative Commons licences that copyright owners may wish to use.

Lawrence Lessig has subsequently drawn a simple matrix to distinguish commercial and sharing uses on the one side and Read Only and Read/write on the other.

In respect of RO v. RW environments he says there is a distinction between the primary use intended for creative work that the site makes available. It answers the question: “What can you do with the content on this site?”

In respect of Commercial v. Sharing environments he says there is distinction between the objectives of the site. Is it intended to make money?

He acknowledges these distinctions are not clear, there are hybrids.

Denise Howell at Lawgarithms says "non-commercial means non-commercial" and then gives an example of how even Microsoft has difficulty in applying that term. There is a fuzzy line between commercial and non-commercial (is use of something on every site operated by a business commercial even if it is not designed to generate income?) and between business, personal and educational.

The copyright owner has to be clear about his or her restrictions on use and a user of someone else's creation needs to be cautious (especially if it has potential commercial value).

Copyright and Creative Commons licences

If you are trying to understand how to copyright your work then consider a Creative Commons licence which is available as an easy way of licensing most creative work (except software), without the need for complex legal drafting each time.

Provided you are happy with the concept of sharing your work on standard terms there are 6 types of creative commons licenses to choose from.

Frequently Asked Questions

Licenses Compatibility Wizard

Cooper v Universal Music appeal decided: hyperlinks can authorise copyright infringement

The Federal Court Full Court in Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 has rejected an appeal by a website owner and an ISP against findings of infringement of copyright of sound recordings by the operation of a website (MP3s4FREE) which linked to mp3 recordings but allowed an appeal by the ISP employee who provided technical assistance from time to time in relation to the establishment and operation of the website.

In Universal Music Australia Pty Ltd v Cooper [2005] FCA 972 the trial Judge found Cooper (the website owner) "permitted or approved, and thereby authorized, the copyright infringement by internet users who access his website and also by the owners or operators of the remote websites from which the infringing recordings were downloaded."

In relation to Mr Cooper the sole issue for the Full Court's determination was the true meaning of the term ‘authorize’ in s 13(2) of the Act and the related term ‘authorizes’ in s 101(1) of the Act and whether providing a website with hypertext links (hyperlinks) constituted authorisation.

Judge Branson rejected Cooper's appeal:

"41...The evidence leads to the inexorable inference that it was the deliberate choice of Mr Cooper to establish and maintain his website in a form which did not give him the power immediately to prevent, or immediately to restrict, internet users from using links on his website to access remote websites for the purpose of copying sound recordings in which copyright subsisted. 

42 I conclude that, within the meaning of s 101(1A)(a), Mr Cooper had power to prevent the copying in Australia of copyright sound recordings via his website.  He had that power because he was responsible for creating and maintaining his MP3s4FREE website.  As stated above, the principal content of the website comprised links to other websites and files contained on other servers.  Senior counsel for Mr Cooper conceded that, in effect, the overwhelming majority of the files listed on the website were the subject of copyright.  The website was structured so that when a user clicked on a link to a specific music file a copy of that file was transmitted directly to the user’s computer. 

43 It is immaterial, in my view, that Mr Cooper’s website operated automatically in the sense that, although he could edit links on the site, he did not control the usual way in which links were added to the site. The evidence also leads to the inexorable inference that it was the deliberate choice of Mr Cooper to establish his website in a way which allowed the automatic addition of hyperlinks. 

44 I also conclude that, within the meaning of s 101(1A)(a), Mr Cooper had power to prevent the communication of copyright sound recordings to the public in Australia via his website.  Again he had that power because he was responsible for creating and maintaining his MP3s4FREE website with the characteristics referred to above...

52 Having taken into account the matters identified above, and the name of his website, I conclude that Mr Cooper infringed the Record Companies’ respective copyrights in sound recordings by in Australia authorizing internet users to do acts comprised in those copyrights, namely make copies of the sound recordings.  I also conclude that Mr Cooper infringed the Record Companies’ respective copyright in sound recordings by authorizing operators of remote websites to communicate those sound recordings to the public in Australia."

In rejecting the ISP's appeal, Judge Branson said:

"64 E-Talk could have, but did not, take reasonable steps to prevent or avoid the doing of the acts of infringement (s 101(1A)(c)).  Rather than withdrawing hosting of Mr Cooper’s website, or otherwise placing pressure on Mr Cooper to stop his website being used for the predominant purpose of copyright infringements, E-Talk sought to achieve a commercial advantage from advertising on Mr Cooper’s website."

The employee's appeal was allowed on the basis of a lack of evidence that he had power to prevent Mr Cooper's conduct.

UPDATE: detailed analysis from Kim Weatherall

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Legal liability of employee web designers

In Houghton v Arms [2006] HCA 59, the High Court of Australia has held that two website designers who misled an internet wine business about the operation of a bank’s financial transactions facility were liable for misleading and deceptive conduct under the Victorian Fair Trading Act 1999 even though they were employees. The representations were fundamental to the wine merchant's decision to structure his business in a particular way.

Mr Arms traded under the name "Australian Cellar Door" and formulated a proposal for the provision by means of an internet web site, www.auscellardoor.com.au, of a service for the direct marketing of the products of small to medium independent wineries. The expectation was that direct "cellar door" sales would attract sales tax at a much lower rate and would avoid the need for the payment by the wineries of the margin, usually in the order of 30 per cent, required by agents or distributors when sales were effected by retail outlets. However the promised payment mechanism could not achieve that result.

The trial judge had accepted that representations had been made to their client Mr Arms, the substance of which was that, in order to run his business effectively and operate the auscellardoor web site, Mr Arms was not required to obtain any documentation from the wineries other than a form, with provision for banking details; WSA (the employer)had engaged in that conduct when it was incumbent upon it to alert Mr Arms to the existence of the additional requirements of the ANZ Bank, or to ascertain that there were no such additional requirements in order for a winery to become an ANZ e-Gate merchant. Ryan J found that, had Mr Arms known the true position, he would have changed the auscellardoor web site to a profitable method of trading by November 2000, not June 2001, and would not have lost the sum of $58,331 from the seven month "set back".

While the trial judge gave judgment against the employer but refused judgment against the employees, the Federal Court of Appeal allowed the action and the High Court upheld the Appeal Court decision.

Copyright Amendment Bill passed

The Copyright Amendment Bill  2006 was passed on 5 December 2006. It is expected to commence by 1 January 2007.

The Copyright Amendment Act 2006 will shortly be is available on the ComLaw website here. The unamended Copyright Act 1968 is available at http://www.comlaw.gov.au/copyrightact1968 and a consolidated version of the Copyright Act 1968 is likely to be available on ComLaw by the end of January 2007. 

The Bill is awaiting was given Royal Assent on 11 December. Some of the provisions in the Bill will commence on Royal Assent (new exceptions and responses to Digital Agenda review in Schedules 6-8 and Copyright Tribunal provisions in Schedules 10 and 11). The encoded broadcast provisions in Schedule 9 commence 28 days after Royal Assent and the remaining provisions (criminal offences and other provisions in Schedule 1-5 and technological p