Archive for December, 2010

Summer daze

Friday, December 24th, 2010

IPwars has headed off for the summer sun.

Thank you for reading during the year, I hope you found something interesting and informative.

In the meantime, I wish you the compliments of the season and hope to see you again in the New Year (hopefully after Australia day celebrations).

The fee for using music in gyms

Friday, December 24th, 2010

Back in May, the Copyright Tribunal bumped up the fee payable for using recorded music in gym classes to $15 a class or $1 per attendee.

The Full Court has an allowed an “appeal” from that decision on the grounds of denial of natural justice. In setting the rate, the Tribunal had rejected the market survey relied on by the applicants, but had used the ‘rough and ready’ “pilot”. When the applicants opened the case, however, they expressly disavowed reliance on that first “pilot”. The subsequent evidence of the gym clubs referring to the survey was not sufficient to make it part of the case.

In short, the Full Court’s ruling does not affect principle (at least in terms of how much to pay); it is “procedural”, requiring the Tribunal to set the rate based on the material before it.

Fitness Australia Ltd v Copyright Tribunal [2010] FCAFC 148

A different take on originality (to IceTV and its progeny?)

Friday, December 24th, 2010

(Apparently) unlike its Australian counterpart, the High Court in England has reportedly found copyright in newspaper headlines (here and here).

In a variation on the theme, the Court of Appeal has referred a number of questions to the Court of Justice relating to the originality of football fixtures, so may be some definitiveness and uniformity (at least in Europe) will emerge in due course.

Gene patents

Friday, December 24th, 2010

The Commonwealth Senate’s Community Affairs committee tabled its report into the patenting of genes towards the end of last month.

After commenting on the still continuing cases (in both the USA and here), the Committee noted:

The Committee will continue to monitor these important international and national legal developments, and notes that these cases may bring greater clarity to the application of the invention-discovery distinction to isolated genetic materials. As part of its watching brief on this area, the Committee may wish to revisit this issue if the area remains problematic following the outcomes of these cases.

The, after referring to the private members bill (see below), the Committee recommended:

The Committee believes that the introduction of the Bill to the Senate will provide a further, and much-needed, opportunity for the arguments and questions around the impacts and effectiveness of an express prohibition on gene patents to be considered. The Committee is of the view that a Senate inquiry into the Bill should be undertaken, with a focus on the specific terms of the proposed amendments and the implications of their implementation for human health and other potentially affected fields of innovation. The Committee notes that its inquiry into gene patents has served a valuable purpose in bringing the issue of gene patenting to the light of public interest and attention, and provides a sound basis on which a targeted inquiry into the Bill can build. Accordingly, Recommendation 3 of the report requests that the Senate refer the Bill to a relevant Senate Committee for inquiry and report.

Then, there are a bundle of recommendations:

  • increase the threshold requirements of patentability (improve patent quality);
  • reduce the scope of patent claims;
  • reinforce mechanisms and policies by which governments can and should intervene with the rights of patent holders; and
  • assist judicial interpretation of the Act and establish an external accountability and quality control mechanism for the patent system.

Recommendation 9 appears directed at the Lockwood No 1 ruling:

5.175    The Committee recommends that the Patents Act 1990 be amended to introduce descriptive support requirements, including that the whole scope of the claimed invention be enabled and that the description provide sufficient information to allow the skilled addressee to perform the invention without undue experimentation.

Recommendation 16 called for the establishment of a patent audit committee.

Patentology commented here.

In the same week, Senators Heffernan, Coonan, Stewart and Xenophon and introduced their private members’ bill, Patent Amendment (Human Genes and Biological Materials) Bill 2010, which (according to the Parliamentary bills summary) is intended prevent the patenting of biological materials which are identical or substantially identical to materials as they exist in nature.

As Patentology reports here, it has been referred to the Senate’s Legal and Constitutional Affairs Committee for inquiry. Your comments are requested by 25 February 2011 and the Committee is scheduled to report by 16 June 2011.

In a different environment, the US Justice Department, perhaps surprisingly, filed an amicus brief in the Myriad appeal supporting the District Court’s conclusion that the patent was invalid.

Still no copyright in (telephone) directories DownUnder

Wednesday, December 15th, 2010

The Full Court (Keane CJ, Perram and Yates JJ) have dismissed Telstra’s appeal in the Phone Directories case.

First impressions.

Given the (arguably) disparate reasoning in the 2 judgments in IceTV, the Chief Judge has to weave a rather tricky path. His Honour nonetheless clearly recognised:

[79] The reasoning of all the judges of the High Court in IceTV requires a revision of the relevance of skill and labour to the subsistence of copyright. ….

[82] The dicta in IceTV shift the focus of inquiry away from a concern with the protection of the interests of a party who has contributed labour and expense to the production of a work, to the “particular form of expression” which is said to constitute an original literary work, and to the requirement of the Act “that the work originates with an author or joint authors from some independent intellectual effort”.

Keane CJ then distinguished Desktop Marketing:

[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 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.

(See also per Yates J at [177].) Accordingly, Keane CJ advanced as the principal reason for dismissing the appeal:

[89] The compilation of the directories was overwhelmingly the work of the Genesis Computer System or its predecessors. The selection of data and its arrangement in the form presented in each directory occurred only at “the book extract” or “book production” process. The compilations which emerged from the operation of the computer system do not originate from an individual or group of individuals. Indeed, none of the individuals who contributed to the production of the directories had any conception of the actual form in which they were finally expressed.
[90] In my respectful opinion, the decision of the trial judge must be upheld on the basis that the findings of primary fact made by her Honour establish that the WPDs and YPDs are not compiled by individuals but by the automated processes of the Genesis Computer System or its predecessors. That being so, it is neither necessary nor relevant to seek to come to a conclusion as to the sufficiency of the intellectual effort deployed by those individuals who provide data input to the computerised database. Their activities are not part of the activity of compilation: they do not select, arrange and present that data in the form in which it is published.

Similarly, Yates J said:

[130] In my view the primary judge was correct in concluding that the relevant compilations in the White Pages Directories (WPDs) and the Yellow Pages Directories (YPDs) for particular regions, as published by the appellants, were not original literary works for copyright purposes. The primary judge advanced a number of reasons for coming to that conclusion, including that much of the contribution to each work was not the result of human authorship but was computer-generated: at [5(2.3)]. In my view that finding alone justified the conclusion to which her Honour came on the question of copyright subsistence and is determinative of this appeal.

See also [165] and [167].

Perram J appears to have reached the same point albeit by what may rather be a somewhat different route. First, his Honour was willing to accept that the labour and effort spent in collecting, verifying and correcting the information may have assisted in establishing that the directories were original in the limited sense of not being copied from some other source. However, it did not qualify as “independent intellectual effort” (IceTV at [33]) or “sufficient effort of a literary nature” (IceTV at [99]” since it was not directed to the reduction of the collected data into the material form comprised of the directories. (See [104] and [112].)

Ultimately

[118] The Act does not presently deal explicitly with the impact of software on authorship (although this is not so in the United Kingdom: s 9(3) Copyright, Designs and Patents Act 1988 (UK)). But a computer program is a tool and it is natural to think that the author of a work generated by a computer program will ordinarily be the person in control of that program. However, care must taken to ensure that the efforts of that person can be seen as being directed to the reduction of a work into a material form. Software comes in a variety of forms and the tasks performed by it range from the trivial to the substantial. So long as the person controlling the program can be seen as directing or fashioning the material form of the work there is no particular danger in viewing that person as the work’s author. But there will be cases where the person operating a program is not controlling the nature of the material form produced by it and in those cases that person will not contribute sufficient independent intellectual effort or sufficient effort of a literary nature to the creation of that form to constitute that person as its author: a plane with its autopilot engaged is flying itself. In such cases, the performance by a computer of functions ordinarily performed by human authors will mean that copyright does not subsist in the work thus created. Those observations are important to this case because they deny the possibility that Mr Vormwald or Mr Cooper were the authors of the directories. They did not guide the creation of the material form of the directories using the programs and their efforts were not, therefore, sufficient for the purposes of originality.

Accordingly, as there were no human authors of the directories, they were not original works.

In taking this approach, it seems likely that it will prove very difficult for those using computer systems to store and manipulate data and to produce complicated “print outs” to claim copyright in those products.

On a more cheerful note, Keane CJ and Perram J both recognised the impracticality of a requirement that a copyright claimant must identify all the human authors by name.

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149

Lid dip “Rounders1990” (who presumably must update himself to “Rounders2010″).

“right of repair”

Sunday, December 12th, 2010

The JIPLP blog has a succinct online article, by Brian Whitehead and Richard Kempner, analysing Floyd J’s decision in Schütz (UK) Limited v Werit UK Limited, Protechna SA [2010] EWHC 660 on whether a defendant’s activities amounted to permissible repair or reconditioning of a patented product or infringement.