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Last year, the Supreme Court of Canada handed down 5 decisions on the same day relating to fair dealing and other issues arising from digital transmission of copyright material.

In a number of respects, its decisions are directly opposite to conclusions that have been reached by our High Court (one example – but it appeared to turn on different statutory language). In others, such as the ‘digital taxi’ theory, the issue may well be regarded as still highly controversial here.

Anyway, a number of Canadian experts have published  a book looking at the ramifications of these wide ranging decisions.

In an interesting experiment, you can buy it in the traditional way through the publisher or you may also download an ebook version for free. For more details, see the 1709 blog post.

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Various members of Schapelle Corby‘s family, like most other people who take photographs, do own copyright in the photographs they have taken and Allen & Unwin, which published 5 of their photographs in The Sins of the Father, has to pay damages for the unauthorised use of those copyrights.

Buchanan J awarded:

• between $500 and $5,000 compensatory damages pursuant to s 115(2) for each photograph; and
• $45,000 by way of additional damages pursuant to s 115(4) for the deliberate and studied disregard of the applicants’ copyrights.

Allen & Unwin has also been ordered to remove the photographs from its existing stocks and not to reproduce them again.

The evidence disclosed that some 44,000 copies of the book had been sold up to March 2013, from several print runs, including print runs after the proceeding commenced. The larger amounts reflected his Honour’s perception of greater commercial significance largely indicated by the accompanying text in the book. The $5,000 award was for the last photograph of Ms Corby with her father in Australia and, in addition to being used in the book, was reproduced on the back cover with relevant text.

Given the (reported) content of the book, it might seem surprising that the main defence was licence. The photographs had been given to Fairfax, not Allen & Unwin, for publication in relation to one or another newspaper article. Buchanan J found at [85]:

whatever photographs had been given by any member of the Corby family to media organisations for some other purpose, photographs had never been given by any member of the family to the respondent to reproduce. [The respondent's publisher] accepted that no member of the Corby family had granted permission to the respondent to reproduce the photographs. It is clear that the respondent had never sought any such permission.

There was no attempt to justify any publication through a fair dealing defence but, on the other hand, Buchanan J expressly rejected any insult to the Corby family as relevant to the calculation of additional damages:

120   In the present case, I do not regard as relevant to the assessment of additional damages any criticism of the Corby family, its individual members and its associates (actual or presumed) which is to be found in the book. Those damages will not be fixed to address any perceived insult to the Corby family or any of its members but will be fixed having regard to the seriousness, amongst other things, of the studied disregard of the regime of copyright protection established by the Copyright Act. In my view, the present case suggests a need to deter the respondent and others from conduct of a similar kind.

Contrast von Doussa J’s approach to personal and cultural harm in the Milpurrurru case from [146]ff.

The decision is also our third (?) moral rights case: the authors’ moral rights of attribution being infringed. Buchanan J, however, did not award damages for this having regard to s 195AZGG(3), the unlikelihood that any of the author’s would want to have been identified as participating in the production of the book and the damages awarded for copyright infringement.

Corby v Allen & Unwin Pty Limited [2013] FCA 370

The defamation action arising from the book’s publication is still making its way through the NSW courts.

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The NSW Department of Education is looking for someone who:

will lead negotiations on behalf of the TAFE sector in respect of statutory copyright collecting agencies Copyright Agency and Screenrights and other voluntary agreements as appropriate with other collecting societies.

The Manager will also support the National Copyright Director to provide specialist copyright advice to the school and TAFE sector, and implement smart copying initiatives in Schools and TAFEs.

If you think this might be you, find out more here.

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Big week for parallel imports last week:

(1) the US Supreme Court declared US law applies a doctrine of international exhaustion for copyright material

(2) Adobe, Apple and Microsoft fronted the Australian Parliament to explain why digital “things” cost so much more in Australia than elsewhere (i.e., the USA).

Apple’s defence said, amongst other things, it was the price it had to pay to the owners of Australian copyright – lovely chart here. Other reports (with more analysis) here and here (which may be challenges Apple’s explanation a bit for its own products).

That didn’t really work as an explanation for Adobe, which gets lambasted here.

Perhaps, just maybe, treating digital downloads as a single global market might lead to some lowering of prices, but the beauty of digital delivery (from the content owner’s perspective) is that you can set your price and the customer can buy or not.

Is there a link between (1) and (2)?

In his analysis, Prof. Goldman sets out a number of reasons why he thinks Kirtsaeng, while it may provide some good news in terms of lower prices, will have only a short term effect.

(I suppose we can trumpet the fact that our technological protection measure protections don’t extend to protecting region coding (here and here), although I do wonder how one would prove that was the purpose of the (ac)tpm.)

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The 1709 Blog has a report about the operation of the resale royalty right scheme (here or here) given by the (then) Minister for the Arts to the Senate.

Some highlights:

• since the scheme started in 2011, CAL (the official collecting agency) has paid out just over $805,000
• 150 “rights holders” (I guess that would be painters or their heirs) have received the top 600 payments which totalled just under $300,000
• 59% of the payments went to indigenous artists; of which there were 301 payments of the top 600 payments going to 91 “right holders”

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While the European Commission is trying to reduce the number of licensors you have to deal with (and so reduce transaction costs), the Australian legislation as interpreted by the courts is causing them to proliferate:

IPKat on Max Planck comments on draft directive on collective rights management

Phonographic Performance Company of Australia Limited v Commercial Radio Australia Limited [2013] FCAFC 11

Yes, I know the EU is grappling with territorial issues and not, or not just, subject matter issues and, if someone were trying to set up an umbrella licence in Australia, it would be important to know who had what rights to include, but …

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In a decision which no doubt has some further distance to run, Newey J (sitting in the Chancery Division of the High Court in England) has ruled that the owner of copyright does not have a proprietary interest in the proceeds (read profits) made by an infringer of the copyright.

Harris et al. are alleged to be the person (or persons) behind the Newzbin file sharing sites which, amongst other things, have been found to infringe the movie studios’ copyrights in a range of films (here and here, where Arnold J ordered the ISPs to block access).

In December last year, the Newzbin sites appear to have closed down, claiming they had run out of money.

Having obtained freezing orders (formerly called Mareva injunctions) against the assets of the defendants (such as the house in which Mr Harris lives and the Maclaren car he parks in its driveway), the movie studios sought “proprietary injunctions” over the assets as well. This seems to involve a court determination that the assets in question were the property of the movie studios rather than the defendants. For example, Newey J explained the difference between the (already in place) freezing order and the injunctions now sought by reference to Millett LJ’s description:

“The courts have always recognised a clear distinction between the ordinary Mareva jurisdiction and proprietary claims. The ordinary Mareva injunction restricts a defendant from dealing with his own assets. An injunction of the present kind, at least in part, restrains the defendants from dealing with assets to which the plaintiff asserts title. It is not designed merely to preserve the defendant’s assets so as to be available to meet a judgment; it is designed to protect the plaintiff from having its property expended for the defendant’s purposes”.

The movie studios based their argument on observations in the Spycatcher cases that Peter Wright may have held the rights in Spycatcher on constructive trust for the Crown in view of his breaches of duties of confidence and fidelity.

Newey J seems to have rejected this claim partly on the basis that there were cases binding on him (albeit apparently disapproved by the Privy Council) ruling that there was no such proprietary interest and partly on the basis that s 18 of the Copyright Act 1956 had expressly deemed the copyright owner to be the owner of infringing copies and provided remedies in conversion and detention. That remedy, however, had been repealed by the Copyright Design and Patents Act 1988 as unjust and unfair.

There are some interesting issues for Australians.

First, the conversion/detention remedy on the basis of deemed ownership has not been repealed (but is now discretionary) – see s 116 (but the Full Court may not be too keen on the remedy – see [94] of French and Kiefel JJ (as their Honours then were).

Secondly, in Lenah Game Meats, Gummow and Hayne JJ did say at [102]:

A cinematograph film may have been made, as in Lincoln Hunt, in circumstances involving the invasion of the legal or equitable rights of the plaintiff or a breach of the obligations of the maker to the plaintiff. It may then be inequitable and against good conscience for the maker to assert ownership of the copyright against the plaintiff and to broadcast the film. The maker may be regarded as a constructive trustee of an item of personal (albeit intangible) property, namely the copyright conferred by s 98 of the Copyright Act[96]. In such circumstances, the plaintiff may obtain a declaration as to the subsistence of the trust and a mandatory order requiring an assignment by the defendant of the legal (ie statutory) title to the intellectual property rights in question[97]. Section 196(3) of the Copyright Act provides that an assignment of copyright does not have effect unless it is in writing signed by or on behalf of the assignor.

Gaudron and Callinan JJ also agreed.

Newey J considered, however, that:

i) The point under consideration (viz. whether copyright in a film made unlawfully was subject to a trust) was rather different to that with which I am concerned (viz. whether a copyright owner has a proprietary claim to the fruits of infringement); and

ii) The Australian approach to constructive trusts is by no means the same as that in this jurisdiction. In particular, as the Full Court of the Federal Court of Australia noted in Grimaldi v Chameleon Mining NL (No. 2) [2012] FCAFC 6 (in paragraph 574)

His Lordship’s second point may be thought to be a second factor why an Australian court might take a different approach to his Lordship’s conclusion.

As to the first point, one might well think, if such a constructive trust arose, that the trustee would have to account for the fruits of the use of the trust property and possibly even handover such fruits as were still in his possession.

Finally, the Privy Council’s rejection of the authority binding on Newey J (and the determination of the movie studios) may well indicate that Newey J’s decision is just the first step in the war.

Twentieth Century Fox Film Corporation v Harris [2013] EWHC 159

Lid dip: Fiona Phillips

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TVNZ has a video report on the launch of Kim Dotcom’s Mega 2.0 on the anniversary of that raid.

The report includes Clive Elliott‘s view on the copyright significance of the encryption arrangements. Unlike Dropbox et al., only the user/uploader has the encryption keys for the files they upload.

As Clive pointed out, there are already players in the user-encrypted field: e.g. SpiderOak, Wuala (which don’t come with quite the same notoriety, but do have their own challenges from a user’s point of view).

The new user encryption arrangements, however, may well not save Mega 2.0 if there is other evidence of Mega 2.0 employees inciting or being involved in infringing activity: cf. e.g. Roadshow at [101] or Kazaa.

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Following the conclusion of consultations about the draft Intellectual Property Legislation Amendment Regulations (the regulations to implement the “Raising the Bar” amendments), IP Australia has published a document outlining the outcomes of the consultation process.

The document outlines what IP Australia is proposing to do/implement in relation to:

Schedule 1

• preliminary search and opinion
• search fee
• priority date
• other things

Schedule 3

• filing of evidence in oppositions
• extensions of time to file evidence
• confidentiality
• fees for notice of intention to defenddefence (TM oppositions) (lid dip: Andrew Sykes)
• cooling off period for patent oppositions (not in the public interest)
• dismissing trade mark oppositions for inadequately particularised grounds
• document service
• no changes to basis for adding grounds / particulars to a notice of opposition
• no change to costs provisions

Schedule 4

• suspension regime for patent / trade mark attorneys will be retained

Schedule 5

• customs seizure: regulations will be amended to require importers to provide full name, telephone number and address for service in ‘claim for release’ forms
• email address will not be made mandatory

Schedule 6

• applicants for patents will have 2 months to respond to a direction to request examination after examination has been deferred
• acceptance period after 1st report on patent application has been issued will be reduced to 12 months
• “IP Australia will not require a statement of entitlement at filing for standard patents (or at national phase entry for PCT applications). Instead, the statement will be required when the applicant requests examination, as part of the approved form.” Applicants for an innovation patent will still need to provide the statement when filing the application
• The Commissioner / Registrar will retain discretion to decide whether hearings should be decided on the papers without oral presentation
• Apparently, there are technical corrections that will be implemented to

Links to:

Public Consultation Update papers

IP Australia’s Press Release

IP Australia’s helicopter summary of Raising the Bar, more links and IP Australia’s summaries for patents, copyright, trade marks and designs.

Patentology looks at the good news for SMEs and some of the things rejected, here.

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Having previously announced the conclusion that the Tobacco Plain Packaging laws were valid, today the High Court published their reasons.

6 of the judges, Heydon J dissenting, ruled that s 51(xxxi) did not apply because there was no “acquisition” of the tobacco companies’ intellectual property rights. It was true that the ability, or rights, of the tobacco companies to use their intellectual property rights was severely curtailed, if not extinguished. That was insufficient to constitute an acquisition in itself. But, the Tobacco Plain Packaging legislation did not appropriate those rights for use by the Commonwealth.

As a result, it was unnecessary to consider the Commonwealth’s further argument that, if there were an acquisition, it was justified and reasonable in the circumstances.

JT International SA v Commonwealth of Australia [2012] HCA 43

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