The Institute for Information Law at the University of Amsterdam is holding two copyright related courses between 2 and 6 July:
Follow the links for more information.
The Commonwealth government is participating in negotiations for a new Convention on the recognition and enforcement of foreign judgments. Now it is seeking public input on a range of outstanding issues.
One of the general issues on which input is sought is the extent to which and the nature of problems experienced in trying to enforce a judgment in a foreign country.
Intellectual property issues are high on the list of matters being debated. Chapter 5 of the consultation paper is directed to intellectual property rights’ issues.
The issues include whether or not intellectual property rights should even be included in the judgments covered by the Convention. So draft article 2(m) proposes to exclude judgments about intellectual property rights from the Convention altogether; alternatively, articles 5 and 6 proceed on the basis that intellectual property rights are included. Which approach should it be?
If included, the basic idea is that a judgment on subsistence, ownership or infringement of an intellectual property right made by a Court in the country which granted the right could be enforceable under the proposed Convention to the extent that the judgment dealt with the subsistence, ownership and infringement of the right in that country.
It is proposed to treat judgments about the subsistence, ownership and infringement of registered rights granted by the country where the judgment is made as falling exclusively under the Convention. Judgments about unregistered rights, such as copyright and unregistered designs, would not be exclusive.
According to the consultation paper, one consequence of this arrangement would be that judgments involving “multi-state IP infringements” of registered rights will be enforceable under the Convention only to the extent that the judgment relates to infringements in the country/jurisdiction issuing the judgment.
No doubt for sound philosophical rationalising, trade secrets do not count as intellectual property rights under the draft Convention. Practically speaking from a business’ perspective, however, one might wonder why confidential information should be treated differently to unregistered “rights”.
Another area of issues raised in the consultation paper is the extent to which awards of damages, especially additional or exemplary or otherwise punitive damages, should be capable of enforcement under the Convention.
As the next (and possibly final) meeting of the commission preparing the draft for a Treaty conference is on 24 – 29 May 2018, the deadline for submissions is COB 27 April 2018.
The three main issues on which consultations are being undertaken are:
The consultation paper arises from the Government’s response to the Productivity Commission’s final report into Intellectual Property Arrangements indicating that these matters required further consideration.
Following the Productivity Commission’s report, the consultation paper sets out an interesting framework for considering how to approach these matters. According to the consultation paper, the proposals “recognise copyright’s role as part of a wider intellectual property system that is:
The consultation paper proposes seven questions:
To what extent do you support introducing:
• additional fair dealing exceptions? What additional purposes should be introduced and what factors should be considered in determining fairness?
• a ‘fair use’ exception? What illustrative purposes should be included and what factors should be considered in determining fairness?
What related changes, if any, to other copyright exceptions do you feel are necessary? For example, consider changes to:
• section 200AB
• specific exceptions relating to galleries, libraries, archives and museums.
Which current and proposed copyright exceptions should be protected against contracting out?
To what extent do you support amending the Copyright Act to make unenforceable contracting out of:
• only prescribed purpose copyright exceptions?
• all copyright exceptions?
To what extent do you support each option and why?
• statutory exception
• limitation of remedies
• a combination of the above.
In terms of limitation of remedies for the use of orphan works, what do you consider is the best way to limit liability? Suggested options include:
• restricting liability to a right to injunctive relief and reasonable compensation in lieu of damages (such as for non-commercial uses)
• capping liability to a standard commercial licence fee
• allowing for an account of profits for commercial use.
Do you support a separate approach for collecting and cultural institutions, including a direct exception or other mechanism to legalise the non-commercial use of orphaned material by this sector?
In a final section of the consultation paper, a number of “ongoing concerns raised by federal cultural and collecting institutions” are identified for consultation. Apparently, these “arts portfolio agencies” are concerned that copyright is being used to inhibit their ability to “provide broad-based access to their collections”. The consultation paper explains:
This includes concerns over exceptions being tied to an institution’s physical location, and thus preventing offsite supply of material. At other times, exceptions permit digitisation of content but not providing digitised content to users. Some arts portfolio agencies expend a disproportionate effort on copyright due diligence, especially when identifying and locating authors of works. This can discourage institutions from digitising, promoting or providing access to their collections. As a result, copyright law may inhibit them from adopting modern cultural institution practices and engaging with Australians online. The Department notes that, at least in some cases, better online access would involve non-commercial use or the use of copyright material with low commercial significance.
Accordingly, the consultation paper questions whether the Copyright Act 1968 should be amended by:
Submissions should be provided to the Department of Communications and the Arts by 5pm on 4 June 2018.
The government has commenced a review of the regime under s 115A of the Copyright Act 1968 by which copyright owners can seek injunctions ordering ISPs to block access to offshore infringing websites.
The discussion paper raises three questions:
The discussion paper notes a survey by Kantar Public which reported that the downloading of unlawful content by individuals had fallen by 10% from 2015 to 2017. However, there had been a slight increase for video games. These results were considered consistent with other evidence from Creative Content Australia and Choice. The discussion paper did not that other factors such as increased availability and increasing use of subscription services may also have contributed to the falling levels of infringement.
Submissions are requested by 6 March 2018
Pagone J has awarded Pokémon $1 in damages and 70% of its costs from Redbubble for misleading or deceptive conduct and copyright infringement. An interesting aspect of the case is that Redbubble’s implementation of a notice and take down scheme under the DMCA didn’t save it from liability, but did influence the ruling on remedies.
Redbubble provides a print on demand online market place by which artists can upload their works to the Redbubble website and purchasers can then buy the artworks or designs applied to desired products such as t-shirts, cups and the like. A person uploading a work to the marketplace warrants that he or she has the relevant intellectual property rights and indemnified Redbubble against infringement claims.
The evidence showed Google searches in which paid (sponsored) and organic search results listing “Pokémon” products such as t-shirts bearing Pokemon’s Pikachu character which could be ordered from the Redbubble site. The sponsored links were paid for and arranged by Redbubble through the Google Merchant Centre and the products themselves were offered for sale through Google Shopping. From the tenor of the judgment, I think that the designs were uploaded by third parties, but Redbubble arranged the “fulfillers” who printed and shipped the t-shirts (and other products) with the designs printed on them.
Pagone J found that Pokémon owned the copyright in the images of the Pokémon characters depicted on the various products in evidence. Further, the images were uploaded without Pokemon’s consent.
Pagone J found therefore that Redbubble had infringed Pokemon’s copyright and misrepresented, contrary to sections 18 and 29(1)(g) and (h) of the Australian Consumer Law, that the products were official or authorised Pokémon products.
In finding that there had been misrepresentations that the products were sponsored or approved by Pokémon, Pagone J referred, amongst other things, to the fact that the “sponsored” links did include the word “sponsored” (although this meant in fact that the products were sponsored by Redbubble, not Pokemon). His Honour also found significance in the fact that:
There was nothing on the Redbubble website to inform the consumer that there was no connection, authorised or otherwise, between Redbubble on the one hand and [Pokemon] (or any other entity authorised to exploit Pokémon products) on the other.
Pokémon was able to prove it owned the copyright in the artistic works through the evidence of its attorney responsible for obtaining copyright registration in the USA. Although the attorney, Mr Monahan, had not been personally present when any works were created, Pagone J considered his evidence sufficient. At 36, his Honour said:
…. He conceded in cross?examination that he had not stood over the shoulder of any creator and, therefore, that he did not have direct eyewitness, or other direct, knowledge beyond that gained from “detailed consultation with the client” but that “with respect to each series of the cards, [he had] consult[ed] with the client to determine which – for instance, which Japanese card they derive[d] from, or [… where] the artwork comes from”. His specific and direct evidence was that of consulting with the client to determine that the works were made by the Japanese company and were made as the Japanese card, although, as mentioned, he did not fly personally to Japan and had not been witness to the creation process. It had been his specific professional responsibility to obtain and secure registrations in accordance with lawful entitlements and requirements. He was confident in that context of his conclusion that the Pikachu work was not a copy based upon an animation cell because of his experience over many years of consulting with the client as his professional obligations and legal duties. In specific response in cross?examination about being confident in giving evidence that the pose of Pikachu was not derivative of any other pose already published, Mr Monahan said that every investigation he had done about the card making process enabled him to say that the cards were generated on their own and were not derivative of the animation, “common poses notwithstanding”.
Further, unlike Perram J in Dallas Buyer’s Club, Pagone J also accepted that the certificate of copyright registration in the USA identifying Pokémon as the claimant to copyright ownership was sufficient to enliven the presumption under s 126B(3) of the Copyright Act. (Given the history of the provision recounted by his Honour, one might think this should not be too controversial: afterall, how many other countries out there have a copyright registration system?)
Pagone J then held that Redbubble had infringed the copyright in three ways. First, his Honour held that Redbubble infringed by communicating the infringing images from its website. Although the images were uploaded by third parties, Redbubble made the communication for the purposes of [s 22(6)]: Pagone J distinguished Redbubble’s position from that of ISPs like iiNet at :
In the present case Redbubble does not provide the content of the communications in the sense of being the originator of any of the 29 images on its website said to be infringements of the Pikachu work. In each case the originator was the artist who had placed the image on the Redbubble website. Redbubble, however, was responsible for determining that content through its processes, protocols and arrangements with the artists. Redbubble’s position is not like that of an internet provider. Redbubble is the host of the website with the infringing material. It has a user agreement with artists which deals with matters including the possibility of infringing materials, an IP policy, and a team dedicated to deal with impermissible content.
Secondly, offering the products for sale online was sufficient to enliven s 38 which, amongst other things, extends to exhibiting “infringing” articles in public by way of trade.
Although there appear to have been some rather unspecific complaints about copyright infringement by Pokémon between 2012 and 2014, Pagone J found that Redbubble knew, or ought reasonably have known, that the products were infringing from the date of the letter of demand from Pokémon’s external solicitors on 25 November 2015.
Thirdly, Pagone J held that Redbubble had infringed Pokemon’s copyright by authorising the manufacture of the infringing products when orders for their purchase were placed.
In this respect, it is worth noting that Redbubble had implemented and acted on a notice and takedown system under the (US) DMCA. Pagone J recognised, therefore, that Redbubble did not expressly authorise infringement and took conscious, considered and reasonable steps, both proactively and responsively, to prevent infringements. These, however, were not enough. At , his Honour said:
The business established by Redbubble carried the inherent risk of infringement of copyright of the kind complained of by [Pokemon]. It is true that Redbubble sought to mitigate the risk, but it was an inevitable incident of the business, as Redbubble chose to conduct it, that there were likely to be infringements. It could have prevented them by taking other steps but for business reasons Redbubble chose to deal with the risk of infringement by a process that enabled the infringements to occur. Such infringements were embedded in the system which was created for, and adopted by, Redbubble. There may have been a sound commercial basis for Redbubble to manage the risks of infringement as it did, but in doing so it authorised the infringements which occurred.
Pokémon sought $44,555.84 in damages by way of lost royalties for the consumer law breaches and only nominal damages for copyright infringement. As already noted, however, Pagone J awarded only $1 in total.
The evidence did not establish that sales made by Redbubble were lost sales by Pokémon. There was, for example, no evidence that many of the sales were sales of kinds of products sold by Pokémon or its licensees. For example, his Honour said:
…. Many of the items sold through the Redbubble website involved a “mash up” of images, such as the combination of Pikachu and Homer Simpson. The finding of an infringing use of a work, or an impermissible representation in trade, does not necessarily lead to the conclusion that the sale made by the infringement or upon the misrepresentation was necessarily a sale that would have been made by the wronged party. The unreliability of such an assumption in this case can be seen from the fact that the infringements were in the use of the image in mash ups in, and in items that were not sold or authorised for sale by [Pokemon]. ….
Given the notice and take down processes put in place by Redbubble, Pagone J was not prepared to find the infringements were “flagrant”, warranting the award of additional damages under s 115(4)
Pokémon Company International, Inc. v Redbubble Ltd  FCA 1541
The Commonwealth Government introduced the Copyright Amendment (Service Providers) Bill 2017 into Parliament today.
The way the amendments will work is essentially to remove the references to “carriage service provider” and replace them with a new reference to “service provider”.
For this purpose, “service provider” will be defined to mean:
116ABA Definition of service provider
(1) Each of the following is a service provider:
(a) a carriage service provider;
(b) an organisation assisting persons with a disability;
(c) the body administering a library, if:
(i) all or part of the collection comprising the library is accessible to members of the public directly or through interlibrary loans; or (ii) the principal purpose of the library is to provide library services for members of a Parliament;
(d) the body administering an archives;
(e) the body administering a key cultural institution;
(f) the body administering an educational institution.
(2) If a service provider is not:
(a) a carriage service provider; or
(b) an organisation assisting persons with a disability; or
(c) the body administering an educational institution, being an educational institution that is a body corporate;
this Division only applies to activities that the service provider carries out because of its relationship to the relevant library, archives, key cultural institution or educational institution mentioned in subsection (1).f you are not one of those people, you will be able to claim the benefit of the safe harbours
If your name is Google or Facebook, or you are some other provider of services inflicting user generated content on the world, you won’t qualify.
The new definition of “service provider” may be compared with the definition enshrined in the Australia – US Free Trade Agreement in Article 17.11.29(xii) (scroll down):
(xii) For the purposes of the function referred to in clause (i)(A), service provider means a provider of transmission, routing, or connections for digital online communications without modification of their content between or among points specified by the user of material of the user’s choosing, and for the purposes of the functions referred to in clause (i)(B) through (D), service provider means a provider or operator of facilities for online services or network access.
This is because, the Government has pointed out, copyright industries are highly valuable for Australia. Accordingly, the consultation process will continue:
In so doing, the Government will be mindful of the need to ensure the rights of creators are properly protected. Australia’s copyright framework ensures that creators can receive a fair return for their work. Australia’s copyright industries make a significant contribution to our economic and cultural life, including collectively generating approximately $122.8 billion in economic activity, $6.5 billion in exports and employing more than 1 million Australians.
McDougall J, in the New South Wales Supreme Court, has dismissed mployeeIFY’s claims that 3DSafety infringed copyright in the “look and feel” or structure of EIFY’s website. If you are preparing terms and conditions for website use, you should read that part of his Honour’s decision too.
Amongst other things, EIFY provides web-based induction services for construction sites. Apparently, before a new employee or contractor can enter a building site and start work, he or she must undergo an induction process and pass certain tests. Historically, these induction processes were conducted “face to face” when the employee or contractor arrived on site for the first time. EIFY developed a web-based service for people to work through before they attended on site. The service included online tests to ensure that the worker had assimilated the required knowledge.
In 2011, EIFY and 3DSafety entered into a joint venture to integrate their respective systems. The joint venture vehicle was “Group”. However, the joint venture fell over fairly quickly and apart from some work for existing clients was inactive.
3DSafety subsequently secured contracts to provide web-based induction processes for Thiess and Mirvac. EIFY had evidence that at least two of the principals of 3DSafety had accessed sites prepared by EIFY repeatedly during the design process for the resulting websites. EIFY sued 3DSafety and those principals for breach of confidential information, breach of contract (the terms on which a browser was permitted to access EIFY’s website) and copyright infringement.
In the end, EIFY claimed copyright in 5 types or categories of works in 8 different versions of its system:
In the result, each claim failed.
EIFY’s claims failed because there was no attempt in its evidence to compare the source code, or the object code, in the 3DSafety product to any version of EIFY’s product. There was also no evidence that 3DSafety ever had access to the source code or object code for any of the EIFY products.
At , McDougall J explained:
The high point of the evidence is an assertion by Professor Braun that “[i]n cases where the screens are very similar, the underlying Object Code in the Video RAM is also very similar”. Even assuming the requisite degree of similarity (and Professor Braun’s evidence, to the extent it was admitted, does not prove this), it does not follow that the object code underlying the screens in the 3D Safety online induction system (or any other functional part of that system) results from any act that could constitute an infringement of any copyright that subsists in the object code underlying the screens in any versions of the e-Induct System.
Seventeen years into the 21st century, if you want to prove infringement of the copyright in a computer program, you really do need to compare the code said to infringe to the code you are claiming copyright in.
McDougall J understood this to be a claim to copyright in the EIFY System as identified in paragraph 33AB of EIFY’s pleading which defined that structure in the following terms:
33AB The plaintiff’s expression of the Concept is by means of the following structure (or sequence or organisation):
(a) the preparation of a data base structure to cater to the requirements of the system;
(b) the creation of a system of modules and elements written in computer code to produce object code which creates the user interface in the appropriate sequence for the logical process;
(c) the inclusion in the user interface of digitized images to either provide information to the user for the particular stage of the induction process or to illustrate or enhance the induction procedure;
(d) a user registration process by the user entering personal information into a web interface backended by a data base to store the information, to link the employee to an employer;
(e) the acquisition of an access code (token) by the user or their employer;
(f) the collection of data and other information particular to the user as required for access to the workplace site to which the induction refers;
(g) the validation of the user’s ability to undertake the induction by verifying the existence of a pre-existing access code (token) and verification of the user’s identity;
(h) the commencement of the induction process once the token or access code is verified;
(i) a two factor authentication to confirm the user’s identity, via text message to a mobile phone or mobile device;
(j) the inclusion of user selectable actions to permit the user to move through the induction process and voiceover with relevant controls;
(k) the inclusion of safeguards at each stage of the induction process to ensure the user has correctly assessed the information, risks and requirements of each stage of the induction process, and to prohibit the user moving forward from one stage to the next without successfully completing a prior stage; and
(l) a final result screen to illustrate the final result of the induction procedure undertaken by the user, and including an option such as printing out a certificate or induction card
As with novels, plays and films, McDougall J accepted that “textual” infringement was not the only way copyright could be infringed. At , his Honour cited Arnold J’s decision in SAS Institute Inc v World Programming Ltd  EWHC 1829 (Ch) to that effect:
…. I accept that copyright protection is not limited to the text of the source code of the program, but extends to protecting the design of the program, that is, what has been referred to in some cases as its “structure, sequence and organisation”. …. But there is a distinction between protecting the design of the program and protecting its functionality. It is perfectly possible to create a computer program which replicates the functionality of an existing program, yet whose design is quite different.
McDougall J also accepted that the application of the “structure, sequence, organisation” approach poses particular problems in the context of computer programs because it was perfectly possible to emulate the functionality of a computer program, even its ease of use, without copying (or even access) to the underlying code. His Honour accepted Jacob LJ’s summation in Nova Productions Ltd v Mazooma Games Ltd  EWCA Civ 219 at :
Pumfrey J in Navitaire was quite right to say that merely making a program which will emulate another but which in no way involves copying the program code or any of the program’s graphics is legitimate.
In the absence of analysis of the code, McDougall J concluded that EIFY’s case confused the functionality of the respective programs with the protectable elements of the design of EIFY’s software. At , McDougall J said:
Returning to the distinction that Arnold J drew in SAS Institute at  , 3D Safety’s online induction programs for Thiess and Mirvac may well have replicated the functionality of EIFY’s existing online induction program. It does not follow that 3D Safety has thereby copied the design of EIFY’s program, and such other evidence as there is does not prove copying of design as opposed to replication of functionality.
One might add, if one turns to the definition of “computer program” in the Copyright Act 1968:
“computer program ” means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
it would seem to follow that one should be comparing the structure, sequence and organisation of the set of statements or instructions constituting the program.
McDougall J noted there was already Australian authority rejecting protectability of the “look and feel” of a computer program.
EIFY, however, argued that American case law provided for such protection and so StatusCard should not be followed. McDougall J rejected this submission for two reasons.
First, at  –  McDougall J pointed out that the US Copyright Act defined copyright subject matter differently to the approach taken in the Australian Act. Under the Australian Act, s 31 requires identification of something which fits within the specific category of a “literary work” – the pigeonhole approach. §102 of the US Act, however, defines copyright subject matter inclusively, not exhaustively.
Secondly, McDougall J pointed out at  that cases in the US subsequent to Whelan v Jaslow had questioned, or even refused to accept, that copyright extended to the “look and feel” of a program.
Turning to EIFY’s case, McDougall J held at  –  that the “Structure” of its System as defined was not itself a literary work. Further, its case impermissibly sought to conflate the “structure, sequence or organisation” of the System with those elements of the underlying program. Accordingly, this part of EIFY’s case failed too.
There doesn’t seem to have been much debate that the 34 images in question were copies of the images EIFY claimed copyright in. The problem was that EIFY did not own copyright in the images.
It turned out that the original images had been created either by Group or by an entity called Clearsite, for Mirvac when Group was operating and had a contract to create a web-based induction service for a Mirvac site. Group of course was not EIFY, being the failed joint venture vehicle.
The evidence showed that employees of Clearsite had created a number of the images in question. Clearsite had been commissioned to create the images by Group, not EIFY, had invoiced Group and had been paid by Group.
Clearsite did execute an assignment of its copyright to EIFY. This did not help for two reasons.
First, at  –  the terms of the assignment defined the intellectual property assigned as the intellectual property resulting from the provision of consultancy services by Clearsite to EIFY. The images in question, however, had been created in the course of providing consultancy services to Group, not EIFY.
Secondly, the assignment was made on 14 May 2015. The allegedly infringing use of the images took place before that date. The assignment, however, did not include an assignment of the rights to sue for past infringements.
EIFY Systems Pty Ltd v 3D Safety Services Pty Ltd  NSWSC 1310 (McDougall J)
The New Zealand High Court has found the NZ National Party’ 2014 advertising campaign theme infringed the copyright in Eminem’s “Losing Yourself”.
you might remember the social media stir when the lawyers managed to appear sober and, er, lawyerly, when they played the two songs in court.
Now, we have the 300+ paragraph ruling.
The Copyright Society’s summary.
Eight Mile Style, LLC v New Zealand National Party  NZHC 2603
ps Probably not,the National Party’s biggest loss this month.
Some more reports from the AIPPI Congress 2017 in Sydney – Day 3:
i was lucky enough to attend a panel on the impact of the digital revolution on the music industry featuring discussants with real world experience.
You can see my report over on the IPKat.
My barristerial colleague, Clare Cunliffe, also has a report on inventor remuneration.
i understand more reports of other sessions are in the pipeline.