Archive for April, 2009

Blacklisted!

Thursday, April 30th, 2009

I’m having a little bit of a problem accessing IPwars from Chambers at the moment.

It would appear in their wisdom the administrators of vicbar.com.au have blocked access to it! Pity about all the nightlife enhancement and/or Kenyan investment opportunities their spam filter sends to me.

Oh well. I’ve been cybersquatted so I guess I shouldn’t complain about yet another part of the full cyberspace experience.

My apologies.

It’s also affecting my email accounts, so you should ensure you use my vicbar email available from Vicbar’s website here (if you don’t already have it).

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Assigning copyright and material breach reversions

Thursday, April 30th, 2009

The author’s of “songs” assigned their respective copyrights to Rive Droite with the latter having an obligation to pay royalties. The assignments included a clause providing that, if Rive Droite remained in material breach for x days after notice, the copyright reverted to the assignor. There was also one of those nice clauses that defined the assignee to include its successors and assigns.

Rive Droite assigned the copyright to Crosstown.

Disputes arose, however, about non-payment of royalties by Rive Droite.

The author assignors gave notice of material breach and Mann J (in the Chancery Division) upheld the automatic reversion of the copyright to them.

Crosstown Music Company v Rive Droite Music Ltd and others [2009] EWHC 600 (Ch) – lid dip IPKat who notes the impact of the reversion clause on the separate and independent national copyrights.

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Google’s sale of keywords could be trade mark use

Tuesday, April 28th, 2009

Well, strictly speaking, the 2nd Circuit in the USA has held that Google’s sale of keywords may be use in commerce.

Rescuecom had sued Google for trademark infringement by selling advertisements (sponsored links) triggered by Rescuecom’s trademark. The District Court had dismissed the claim on the grounds that Google’s conduct was not use in commerce. So now it goes back to the District Court.

Of course, Google’s conduct, if were done in Australia or transacted with a business located in Australia, would be in trade or commerce for the purposes of the Trade Practices Act. In context, however, the nearest analogue under our law is whether or not the conduct might be “use as a trade mark” (in the sense of using the sign in the course of trade) for the purposes of s 120 of the Trade Marks Act.

Professor Goldman considers the ramifications under US law (and the distinguishing of WhenU) here.

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ACTA

Sunday, April 26th, 2009

The USTR has released a 6 page (pdf) outline of issues being dealt with under the proposed ACTA.

Link via Intellectual Property Watch.

The IP Dragon has links to a 48 page document with rather more information.

More tea leaf sifting here.

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Domain names and regulatory requirements

Thursday, April 23rd, 2009

If the (US) FDA requires you to include information about the risks of using your drug and Google’s AdSense has a 95 character limit, what do you do?

Prof. Manara explores how companies, particularly pharmaceutical companies, are using domain names to ensure that their online presence doesn’t contravene regulatory requirements such as FDA requirements to include information about risks in materials advertising drugs.

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IP forum

Wednesday, April 22nd, 2009

IP Australia is hosting a half day seminar on 

The Economic Climate and its impact on innovation in Australia

in Melbourne on Wednesday 6 May 2009 (rsvp by 29 April).

Speakers include (?):

Leon Allen, President, IPTA

Mathew O’Keefe, President of Australia’s manufacturing association AMPICTA and also employed by Fosters 

Philip Noonan, Director General, IP Australia

Details via here.

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IceTV Second Look

Wednesday, April 22nd, 2009

IceTV publishes an electronic tv program guide or schedule. The ABC and SBS provide their program schedules, but the commercial free-to-air networks refused. Mr Rilet sat down and watched 3 weeks of Channel 9 programming, writing down the time and title of each program. He then made up a program schedule ‘predicting over’ what would be broadcast. As the broadcast date neared, however, IceTV employees checked up to 3 other program guides and made corrections to the ‘predicted over’ guide as appropriate. (A summary of the changes made to 2 particular days can be found at [179 - 181] of Gummow, Hayne and Heydon JJ’s reasons.) Mr Rilet and IceTV presumably engaged in the same kind of work for the other commercial networks.

The High Court unanimously held that IceTV’s use of time and title information (‘slivers’ in Bennett J’s evocative phrase at first instance) did not reproduce a substantial part of Nine’s copyright in [one or other programming schedule]. (It is necessary to be a bit vague here since, as in Feist, the alleged infringer mistakenly (as it now turns out) conceded copyright subsistence in something, to the evident frustration of all High Court judges.)

One thing the Court was unanimously agreed upon is that “copyright does not protect facts or information”, it protects forms of expression. See e.g. [28] per French CJ, Crennan and Kiefel JJ and [70] and [102] per Gummow, Hayne, Heydon JJ.

28.   Copyright does not protect facts or information[24]. Copyright protects the particular form of expression of the information, namely the words, figures and symbols in which the pieces of information are expressed[25], and the selection and arrangement of that information[26]. That facts are not protected is a crucial part of the balancing of competing policy considerations in copyright legislation. The information/expression dichotomy, in copyright law, is rooted in considerations of social utility. Copyright, being an exception to the law’s general abhorrence of monopolies[27], does not confer a monopoly on facts or information because to do so would impede the reading public’s access to and use of facts and information. Copyright is not given to reward work distinct from the production of a particular form of expression[28].

The judgments both bear strong indications that Australian copyright law should change track and follow the line pursued by the US Supreme Court in Feist

Both judgments appear to affirm that copyright involves a balancing of the competing interests of creators (and owners) and users or the public.

The fun, or future controversies, begin in what follows.

For French CJ, Crennan and Kiefel JJ, there appears to be a different approach according to whether one is considering questions of originality and substantiality in connection with subsistence of copyright or in connection with infringement.

French CJ, Crennan and Kiefel JJ appear to consider that copyright will subsist so long as what is expressed (in a material form) originates from the author in the sense of not being copied from somewhere else. See [33] and [48].

Their Honours accepted that infringement fell to be tested by ascertaining whether or not the time and title information in IceTV’s guides was a substantial part of the relevant Nine program guide. This required consideration of “the degree of originality of the particular form of expression of the part [taken].” at [52]

Just because the part taken originated from the author did not necessarily make that part a substantial part of the original copyright work – “[o]riginality in the context of infringement has a broader aspect.” at [38].

The time and title information reproduced by IceTV did not require much in the way of mental effort at [42]. Its chronological arrangement was obvious and prosaic at [43].

According to their Honours at [54]:

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[83]. 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.

That is, the work engaged in by Nine employees in choosing what programs to broadcast and at what times could be excluded from consideration. It was not relevant to the originality of the form of expression. On this approach, it will be necessary to divine at what stage of the process the author(s) actually start engaging in making the work (i.e., expending skill and labour on the form of expression). Therefore, the Full Federal Court’s decision in Milwell v Olympic would appear to have been wrongly decided.

Drawing this line may well prove extremely challenging in practice, although presumably no more difficult than it may be to identify a sufficient spark of creativity or independent intellectual effort if the inquiry arose at the stage of copyright subsistence.

Gummow, Hayne and Heydon JJ in what is a dense and closely reasoned opinion which is going to require far more consideration and reflection appear to have taken a rather different approach.

That said, their Honours might be thought to have been making a similar point to French CJ, Crennan and Kiefel JJ at [170]:

in assessing the quality of the time and title information, as components of the Weekly Schedule, baldly stated matters of fact or intention are inseparable from and co-extensive with their expression. It is difficult to discern the expression of thought in statements of which programmes will be broadcast and when this will occur. If the facts be divorced from the other elements constituting the compilation in suit, as is the case with the use by IceTV of the time and title information, then it is difficult to treat the IceGuide as the reproduction of a substantial part of the Weekly Schedule in the qualitative sense required by the case law. (emphasis supplied)

The way this is put suggests the importation into Australian law of a merger-like doctrine known to US law.

Similarly, their Honours’ reasons refer in a number of places to the need for there to be “independent intellectual effort” in the creation of the work for it to be an original copyright work. Accordingly, Gummow, Hayne and Heydon JJ concluded at [152] that:

the Court should accept the submission by Ice that the originality of the compilation being the Weekly Schedule lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole. (emphasis supplied)

There are indications, however, that other considerations are at play.

First, their Honours in a number of places expressly rejected resort to tests such as misappropriation, skill and labour and protection of the interests sought to be protected by copyright as substitutes for the statutory test.

Secondly, at [172] – [183], their Honours expressly affirmed Bennett J’s finding at first instance that IceTV had not in fact copied anything from Nine’s copyright material by writing down time and title information while watching the programs actually being broadcast on tv. This process appears to be similar to the proposition which their Honour’s endorsed at [77] from the Spicer Committee that no-one infringed a football club’s copyright in a list of its players and their numbers by making a list by watching the game.

If that be a correct understanding, the rest of the reasoning would be obiter dicta albeit extremely highly persuasive dicta in Australian courts!

Their Honours devoted considerable space to considering who was the author, or were the authors, of the program schedules. So much so that on the second day of the High Court appeal Nine sought to rely on copyright in yet a different program schedule. This may well have longer term ramifications as their Honours noted at [145]:

to emphasise the difficulties of adapting the provisions of Pt III of the Act to cases such as the present, where multiple works and authors might be identified and the requisite expression of “authorship” of each may be dictated by a specific commercial objective. The point is illustrated sufficiently by contrasting the provisions of the Act and the evidence with the proposition that “the work” was a single work represented in the Nine Database and “first published” upon dissemination to the Aggregators of the Weekly Schedule in “Excel” and “text” format.

Their Honours then went on to refer at [151] to a host of matters that the evidence would need to address to try and make out such a claim and pointedly drew attention to the absence from the Australian Copyright Act of any provision similar to s 9 in the UK’s CDPA 1988 which deems the author of a computer generated work to be the person who made the arrangements necessary for the work to be created. Earlier, at [139], their Honours indicated that IceTV’s alleged appropriation of “the fruits of Nine’s skill and labour” might not be capable of resolution in the absence of legislation such as the EU’s Directive on the Legal Protection of Databases.

Finally, in this quick overview, it is worth noting that Gummow, Hayne and Heydon JJ sought to deflect over anxious consideration of the impact of Data Access on copyright law. In that case, the majority had endorsed Mason CJ’s rejection of the “but for” test of infringement and recognition that substantiality for the purposes of determining infringement depended on the originality of the part taken. According to Gummow, Hayne and Heydon JJ at [159], however, Data Access is concerned with the special problems arising from the extension of copyright protection to computer programs and the consequent protection of functionality in that particular context.

IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14

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Blogger (Google) and the DMCA

Wednesday, April 22nd, 2009

Plagiarism Today considers Google’s new Blogger contact form for DMCA notfications here.

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A new law of copyright Down Under?

Wednesday, April 22nd, 2009

The High Court has unanimously allowed the appeal in IceTV.

IceTV did not reproduce a substantial part of Nine’s copyright in its program guides by reproducing the time and title information from those guides.

At least that means people in Australia will be able to use PVRs without the shackles imposed by the TV networks.

IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14 (lid dip Joshua Gans via Twitter)

More detailed consideration will require further time. Meanwhile, 2 points to ponder:

First, French CJ, Crennan and Kiefel JJ delivered one joint opinion. Gummow, Hayne and Heydon JJ delivered a second joint opinion.

Secondly, in their joint opinion, Gummow, Hayne and Heydon JJ trail a very long coat on the Feist-ian “spark of creativity”:

187.   One final point should be made. This concerns the submission by the Digital Alliance that this Court consider the Full Court’s decision in Desktop Marketing[196] and, to the contrary of Desktop Marketing, affirm that there must be ”creative spark”[197] or exercise of “skill and judgment”[198] before a work is sufficiently “original” for the subsistence of copyright.

188.  It is by no means apparent that the law even before the 1911 Act was to any different effect to that for which the Digital Alliance contends. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon “labour and expense” per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works. 

(emphasis supplied)

That might come as a surprise to someone who read the transcript of Desktop‘s failed special leave application.

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Pirate Bay fined and imprisoned (appeal pending)

Tuesday, April 21st, 2009

Nic Suzor has a nice summary of the brouhaha here.

Duncan Bucknell and the Inquisitr (lid dip Denise Howell on twitter) wonder about the ramifications for Google, MSN, Yahoo etc.

The IPKat recommends Andrew Logie on what should be done now.

Andrew Logie’s point:

The reason people use TPB is that you can get content fast, free and with hardly any effort. Take ABC’s popular series ‘Lost’. If you lived in the US you could either watch or record the series on television or watch it online on ABC’s website. However, here in the UK, you could be waiting 6 months to a year to see that same episode on television, and even longer still to buy it on DVD, and if you think you can watch it online on ABC’s website, forget it: licensing restrictions will block UK internet users.

You do have another option: piracy. ….

resonates with the absurdity Kwanghui Lim identified – he can parallel import the printed books from Amazon, but Amazon won’t sell him the audio files – because of licensing restricti0ns.

Meanwhile, the (unrelated) Swedish Pirate Party organised hundreds of demonstrators to protest the decision in various parts of Sweden, according to Louise Nordstrom.

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