Posts Tagged ‘Copyright’

Online copyright infringement reforms announced

Wednesday, December 10th, 2014

The Attorney-General and the Minister for Communications have issued a joint media release announcing the Government’s response to July’s Issues Paper:

  1. First step: they have written to “industry leaders” and told them to come up with an agreed industry code for a “graduated response” regime[1] to be registered with the Australian Communications and Media Authority (ACMA) under Part 6 of the Telecommunications Act 1997;
  2. Second step: if the “industry leaders” cannot come up with an agreement within 120 days [2]:

    the Government will impose binding arrangements either by an industry code prescribed by the Attorney-General under the Copyright Act 1968 or an industry standard prescribed by the ACMA, at the direction of the Minister for Communications under the Telecommunications Act.

  3. Third step: the Government will also amend the Copyright Act to enable rights holders to get injunctions ordering ISPs to block access to websites outside Australia that provide access to infringing content.

Well, at least, Option 1 in the Issues Paper seems to have died a deserved death.[3] The media release does not mention, however, whether or not the Government will extend the “safe harbour” provisions to “service providers” and not just “carriage service providers”.

The letter the Government sent to “industry leaders” did provide some general direction about the contents of the anticipated industry code:

  • that ISPs take reasonable steps (including the development of an education and warning notice scheme) to deter online copyright infringement on their network, when they are made aware of infringing subscribers, in a manner that is proportionate to the infringement
  • informing consumers of the implications of copyright infringement and legitimate alternatives that provide affordable and timely content
  • providing appropriate safeguards for consumers
  • fairly apportioning costs as between ISPs and rights holders
  • ensuring smaller ISPs are not unfairly or disproportionately affected, and
  • include a process for facilitated discovery to assist rights holders in taking direct copyright infringement action against a subscriber after an agreed number of notices

and included the exhortation:

Any code must be sustainable and technology neutral. It should be educative and attempt to address the reasons that people are accessing unauthorised content. Consumer interests must be given genuine consideration in your negotiations.

There is no more detail on what sanctions, if any, would apply.[4]

The media release also includes a warning, of sorts, to the right holders:

The issue of affordability and accessibility of legitimate content is a key factor in reducing online copyright infringement. The Government welcomes recent action by content owners and expects industry to continue to respond to this demand from consumers in the digital market.

It will be interesting to see if the “industry leaders” can come up with an agreed code, given they have failed to reach agreement for over a decade now. Even if the Government is forced to impose a code, it may also be interesting see which ISPs join in the scheme. If there is an industry code and significant ISPs join in, would that be a basis for reconsidering the High Court’s ruling of non-authorisation in the iiNet case which was predicated, at least in part, on the ability of subscribers to jump ship from iiNet to another ISP if sanctions were imposed.

Lid dip: David Andrews.


  1. That is a system whereby subscribers get some number of notices that their account is (allegedly) being used to infringe copyright and warning them to stop or …. All the media release says at this stage:  ?

    The code will include a process to notify consumers when a copyright breach has occurred and provide information on how they can gain access to legitimate content.

  2. According to the letter the Government sent to “industry leaders”, the industry code must be agreed by 8 April 2015. (Update: you can now read the letter via this link (scroll down).At the moment, I don’t seem to be able to find a copy of the letter, which was attached to the media release, online.)  ?
  3. The media release says that the effectiveness of these measures will be reviewed in 18 months as in “a world of rapid changes in technology and human behaviour, there is no single measure that can eliminate online copyright infringement.”.  ?
  4. Yesterday’s press reports suggested that “harsh measures” like internet throttling would not be available.  ?

Dallas Buyers Club sues to identify internet subscribers

Wednesday, November 19th, 2014

When the (inaptly named) Online Copyright Infringement Discussion Paper was released, Minister Turnbull was reported as suggesting copyright owners should sue the downloading end-users.

Last month, Dallas Buyers Club LLC was reported to have started that process. It has commenced proceedings against various telcos and ISPs seeking preliminary discovery from them of the identities of their customers who were using IP (as in Internet Protocol) addresses at times Dallas Buyers Club LLC says illegal copies of the film were being downloaded from those addresses.

Last Monday, Perram J rejected an application by some journalists and others for access under FCR r 2.29 to most of the documents on the court file. His Honour noted the usual rule that affidavits are not “public” until they have been used in court and the potential privacy sensitivities or releasing, amongst other things, subscriber identification information at this very early stage of the proceeding.

Apparently, Dallas Buyers Club LLC’s application for preliminary discovery will be heard all the way off on 17 – 18 February 2015.

For cases where the record companies successfully obtained preliminary discovery from the Universities of some student details alleged to be engaging in infringing activities, see Sony v University of Tasmania here, here, here and here.

On a slightly different tack, it was reported on 19 November that some Universities have been suspending staff and student access to the internet, and in at least the case of UNSW, issuing fines where “internet piracy” has been discovered.

Dallas Buyers Club, LLC v iiNet Limited (No 1) [2014] FCA 1232

Parallel imports

Wednesday, October 8th, 2014

Well, it seems the 10th anniversary of IPwars has come and gone! Yes, the first IPwars blogpost (on the now defunct iBlog system) was back on 4 October 2004, inspired by Marty Schwimmer, Denise Howell, Evan Brown, Ernie the Attorney and others who were originally “Between Lawyers” but have since moved on to podcasting, video casting and other, bigger things.

In the meantime, my article on Trade Marks and Parallel Imports has been published in Volume 22 No. 1 of the Competition & Consumer Law Journal starting at p. 54. It is essentially an overview of the Federal Court’s case law on s 123(1) to date.

In the same issue of the CCLJ, you will also find articles by:

  • David Brennan “Shifting shades of grey – International price discrimination and Australian copyright” law starting at p. 1; and
  • Matthew Taylor and Arlen Duke “Refocussing the parallel import debate” starting at p. 54.

I am afraid the online versions of these papers are behind the LexisNexis paywall.

Happy anniversary! and thanks for stopping by, especially those of you who have left a comment.

Online copyright infringement – back to drawing board

Thursday, September 11th, 2014

The way the press is reporting it, the Minister for Communications – one of the two Ministers who released the Online Copyright Infringement discussion paper in July – recognises it’s back to the drawing board in light of the (apparently) unanimous disapproval.

SMH

News

You can find the submissions received here (apparently they are being uploaded over time).

Will the ISPs voluntarily sit down and negotiate a warning system with the copyright owners? Do we really want the copyright owners and the ISPs coming up with their own scheme without “our” input?

$150,001 damages for infringing compatibility chart

Thursday, September 4th, 2014

Tonnex was found to have infringed Dynamic’s copyright in its printer cartridge compatibility chart. That finding was upheld on appeal. Now, Yates J has ordered Tonnex to pay Dynamic $150,001.00 in damages. The damages are comprised of compensatory damages under s115(2) of $1.00 and $150,000 by way of additional damages under s115(4).

The $1.00 nominal damages was agreed by the parties before the hearing. Interestingly, Yates J did not comment on this.[1]

Dynamic had argued for an award of additional damages of $400,000; Tonnex, while denying any award should be made, argued for an amount in the “tens of thousands”. Yates J arrived at $150,000 in the exercise of his Honour’s evaluative judgment.

Yates J’s reasons contain a useful summary of the applicable principles for the court to decide whether it is appropriate to award additional damages at [37] – [53].

Recognising that flagrancy is not required before an award of additional damages can be made, his Honour nonetheless found that the infringement was deliberate and studied. Although Tonnex’ directors denied knowledge of the copying and gave evidence that they had specifically instructed there was to be no copying,[2] the knowledge and acts of the employees involved – who included the National Marketing Manager – were at [101] relevantly the acts and knowledge of Tonnex. Further, Tonnex’ position throughout had not just been reliance on legal advice that copyright could not subsist in such a compilation. It had hi-handedly denied any copying at all.

Yates J also noted that, even if the directors were innocent of infringing knowledge, the situation should have changed after detailed particulars of infringement had been served (albeit late in the picture). Those particulars appear to have identified mistakes and other typographical peculiarities in the Tonnex catalogue which were really consistent only with copying from Dynamic. In other words, the directors were put on inquiry.

Instead, Tonnex sent out 38,000 emails with links to its infringing catalogue after Dynamic notified its infringement claims to it; only stopping just before the liability trial:

…. The cessation of Tonnex’s conduct was taken at a time of its own choosing, without regard to Dynamic’s rights. Regardless of Mr Solomon’s and Mr Kozman’s state of knowledge in that period, by reason of Mr Rendell’s knowledge, Tonnex must be taken to have known the true position regarding its copying of Dynamic’s Compatibility Chart. With that knowledge, it undoubtedly took commercial advantage of its wrongful conduct.

Tonnex did introduce an approvals process to vet material before it was published in future. Yates J was not particularly satisfied by this. His Honour was also concerned that Tonnex’ witnesses did not really exhibit appropriate contrition, but rather saw the litigation as a tactic by Dynamic rather than vindication of its rights.

The need to mark the court’s disapproval of Tonnex’ conduct and signal to the community that it was not alright to copy others’ property with impunity (i.e. deterrence) also played roles.

Dynamic Supplies Pty Limited v Tonnex International Pty Limited (No 3) [2014] FCA 909


  1. Contrast the apparent questioning of the practice raided by French and Kiefel JJ in [Venus Adult Films v Fraseride][venus] at [94].  ?
  2. it is fair to say his Honour expressed a degree of scepticism towards this evidence at esp. [102] and [103].  ?

Copyright, ISPs and authorisation 2

Friday, August 8th, 2014

I should note for the record, that the Government did officially release its Online Copyright Infringement discussion paper (pdf) on 30 July 2014.

Responses are required by 1 September 2014.

There are 3 main proposals:

  • extend the definition of ‘authorisation’ by amending ss 36(1A) and 101(1A)
  • introduce power for rights owners to obtain orders against ISPs to block access to infringing websites (like s 97A in the UK)
  • give some real scope to the “safe harbours” by extending their availability from “carriage service providers” to “service providers”.

The discussion paper does say in relation to ‘extended authorisation':

The Copyright Act would be amended to clarify the application of authorisation liability under sections 36 and 101 to ISPs.

It’s not clear how this will be done. While the discussion paper does specifically identify amendments to ss 36(1A) and 101(1A), the proposed changes apply generally to everyone and not specifically to ISPs. It is also not immediately clear how the proposed changes in fact cause ISPs to become liable for authorisation.

It does seem to be a policy still in development.

The Minister for Communications linked the reforms to some positive action about the very high prices Australians are charged for online access to copyright materials such as recorded music, movies, software etc. compared to the prices charged overseas. [1]

He and the Attorney-General may also have different ideas about who should bear the costs of the scheme.


  1. A transcript of my talk to the Copyright Society on the House of Rep’s committee report “At What Cost: The IT Pricing Inquiry and Copyright” can be found in Vol 31(2) Copyright Reporter 1 (attributed to Nick Smith).  ?

Is there a case for fair use? Lessons from the US – Seminar

Thursday, June 19th, 2014

Monash is holding a seminar on fair use: ‘Is there a case for fair use? Lessons from the US’, with the lead presenter being Prof. Geoffrey Scott from Penn State’s School of Law.

Date: 2 July 25 June at 5:15pm. (Lid dip: Gerard Dalton)

Venue: Monash University Law Chambers, Melbourne.

Details and registration via here.

Copyright in bikini designs

Wednesday, April 23rd, 2014

Seafolly is in the news again: this time as the winner. In her last decision before retiring, Dodds-Streeton J has ordered that City Beach[1] pay Seafolly $250,333.06 by way of damages for infringing copyright in 3 Seafolly designs: the English Rose artwork, the Covent Garden artwork and the Senorita artwork.

The English Rose artwork and the Covent Garden artwork were both patterns or ornamentation printed on the fabric. The Senorita artwork, however, was in effect stitched on to the garment using shirring and smocking. Dodds-Streeton J, however, rejected City Beach’s defence based on sections 74 and 77 of the Copyright Act. Apart from all the other issues, her Honour’s application of the Full Court’s decision in the Polo/Lauren case struck me as particularly important.

Seafolly’s Senorita artwork:

321.12
321.11

City Beach’s Richelle embroidery:

321.13

The subsistence point

As you can see, the Senorita design is pretty simple in appearance. City Beach’s argument was that this simple design was the more or less inevitable outcome of using the type of industrial sewing machine used to produce it. According to the evidence, however, it involved significant trial and error to produce because smocking fabric was very difficult to work with, smocking did not always involve using triangles or diagonals and City Beach’s expert conceded “there was a huge array of different ‘cams’ which could produce an almost indefinite variety of patterns.” Her Honour rejected City Beach’s attack, therefore:

416 …. the Senorita embroidery was not the inevitable outcome of the operation of an industrial sewing machine. Nor was the work so rudimentary and simple as to be unprotectable because, in essence, there was no meaningful distinction between the subject matter and the form of expression.

The use of the sewing machines, therefore, appears to involve use of the machine to implement the human idea more in the vein of Coogi or a wordprocessor to record the text than as an automatically generated entity like the phone books in PDC. The second point made by her Honour seems to pick up the High Court’s point that the ordering of title and time of television program in chronological order did not involve sufficient creativity (or intellectual effort) to qualify as original.[2]

The copyright/design overlap

City Beach’s defence based on the copyright/design overlap provisions failed also, because the Senorita design when sewn on to the bikinis was not a corresponding design.

When the Designs (Consequential Amendments) Act 2003 introduced the current form of s 74 and s 77, it was hoped that the old problems about whether something constituted a “design” and whether it had been “applied to” an article had been sidestepped. All that was necessary, was to identify an artistic work which had been embodied in the features of shape or configuration of the product.[3] Rares J, at first instance in the Polo case adopted that too simplistic (as we now know) approach to find that the 700 or so stitches used to embroider the Polo logo on to a shirt qualified. This was set right by the Full Court on appeal.

Dodds-Streeton J acknowledged that the Full Court’s observations were obiter. Her Honour also acknowledged that the Full Court’s reasoning “is not consistently explicit, but must be inferred”. Her Honour considered that the Full Court’s reasons:

470 …. in substance indicate that it is the features of shape or configuration of an artwork (not a label on which the artwork is reproduced) that must be relevantly embodied in a product, which will occur when the product (in the present case, a garment) is made in the shape or configuration of the artwork.

Thus, the diamond pattern was not a corresponding design because, when stitched on to Seafolly’s bikinis, it did not define the shape or configuration of the bikini as a garment.

In reaching this conclusion, Dodds-Streeton J had to interpret the Full Court’s declaration at [58] that a design must be conceptually distinct from the product in which it was embodied to qualify as ‘embodied’ for the purposes of s 74. That created a problem in the present case as Dodds-Streeton J considered the stitching, or smocking, could not have existed independently of the garment:

473 It is true that, in contrast to the logo in Polo/Lauren itself, the reproduction of the Senorita artwork sewn on to the relevant garment may not retain a separate existence, as probably, it could not survive removal and is not conceptually distinct from the garment. Accordingly, if the Full Court’s observations in [58] represent the correct and comprehensive test, the Senorita artwork could be embodied within the meaning of s 74(1). As stated above, however, the comment at [58] does not comprehensively reflect the reasoning of the Full Court’s judgment.

I am not sure, with respect, why the Senorita design was any the less capable of independent existence than the Polo logo. I think the design could not have an independent existence because it was created by attaching the stitching to the shirring framestrings and there was presumably no drawing.

Dodds-Streeton J identified a further problem. It seems difficult, with respect, to reconcile the Full Court’s interpretation of s 74 with the clear legislative intent to capture woven tapestries, bas relief and “textured” carpets within the concept of corresponding design by the inclusion in s 74(2) of:

“embodied in , ” in relation to a product, includes woven into, impressed on or worked into the product.

According to Dodds-Streeton J:

480 Following the insertion of the words “woven into”, “impressed on” or “worked into” in s 74(2), it seems clear that features of shape or configuration of an artwork can be embodied in an article which is itself a piece of embroidery, a carpet, bas?relief or similar, by being woven or worked in. This was the qualification to the maintenance of the tradition [sic] position to which the Full Court referred at [48]. The amendment to s 74(2) did not, however, apply to the circumstances of Polo/Lauren itself as the relevant product was a garment rather than a carpet, bas?relief or embroidery (although the design was applied or attached by means of embroidery or “weaving in”).

Instead:

481 In the light of the Full Court’s emphasis that the position was otherwise unchanged, it would seem that it rejected Rares J’s analysis not simply or principally because the logo remained conceptually distinct from the garment, but because the garment was not made in the shape or configuration of the artistic work, irrespective of whether it was three dimensional.

It’s not clear why garments should be treated any differently to tapestries, carpets etc. I suppose a carpet could for example be woven in the shape of a (stylised) polo player or teddy bear or some other novelty shape thought to be appealing to someone out there in the wide world, but a tapesty? One might have thought (if one didn’t have the Full Court’s obiter dicta hanging over one) the legislature intended to catch all such woven, stitched or otherwise ‘applied’ artistic works from its intention to ensure that carpets, tapestries and the like be “clearly” brought in.

This is not to say that the alternative, literal approach to interpreting s 74 is not without its challenges. Dodds-Streeton J went on in dicta to consider that the Full Court really also disagreed with Rares J’s view that the embroidered stitching was sufficiently three-dimensional to qualify as features of shape or configuration.In any event:

486 … the surface of the garment onto which the smocking is sewn is not flat because the fabric is shirred. Any protrusion of the smocking from the surface is minimal and probably significantly less than that in Polo/Lauren itself, which on a fair reading of its judgment, the Full Court nevertheless thought insufficient.

So, there may well be questions of degree in how much three dimensional appearance is required before something qualifies as shape or configuration.[4] That is, however, a problem which long challenged designs law.

Seafolly Pty Ltd v Feswtone Pty Ltd [2014] FCA 321

 

Update:

Tim Golder points out:

  1. At paragraph 13, her Honour noted that the Señorita work subsisted in final drawings – so my attempt to rationalise her Honour’s perceived distinction to the Polo logo fails dismally.
  2. City Beach has already lodged its appeal: VID224/2014 for mention before Gordon J on 2 May.

  1. City Beach Australia is the trading name of Fewstone Pty Ltd.  ?
  2. IceTV Pty Ltd v Nine Network Pty Ltd (2009) 239 CLR 458 at [54] and [170].  ?
  3. Putting to one side, of course, all the fun and games of what may be a work of artistic craftsmanship for the purposes of s 77(1)(a) or the difference between “shape or configuration” and “pattern or ornamentation”.  ?
  4. This would also be an issue to some extent under the UK’s test of “surface decoration”: see Lambretta Clothing v Teddy Smith [2004] EWCA Civ 886.  ?

Attorney-General on copyright reform DownUnder

Friday, February 14th, 2014

Yesterday, the Commonwealth Attorney-General, who has portfolio responsibility for copyright in Australia, gave an important speech at the opening of the Australian Digital Alliance forum.

Some things that caught my eye:

The Copyright Act is overly long, unnecessarily complex, often comically outdated and all too often, in its administration, pointlessly bureaucratic.

Can’t argue with that: s 195AZGF or s 135ZZZZA, anyone? So, we are going to embark on a process to reform copyright. Bearing in mind that the ALRC has just had its report tabled:

I remain to be persuaded that [adopting ‘fair use’] is the best direction for Australian law, but nevertheless I will bring an open and inquiring mind to the debate.

and

First, when this process is finished, and it will be a through and exhaustive exercise in law reform, the Copyright Act, will be shorter, simpler and easier to use and understand.

Secondly, the Act will be technology neutral – no more amusing references to videotapes as we find in current section 110AA.

Thirdly, we will pay careful regard to the broader international legal and economic context ….

In carrying out this work:

The challenge for us today is how to balance the benefits for creators against a range of other public interests including the interests of users, educators and other important public goods.

….

Nonetheless, the fundamental purpose of copyright remains unchanged – to ensure that those who take on the risks of creation are appropriately rewarded for their abilities and efforts.

On the subject of online piracy:

the High Court’s decision of 2012 in the iiNet casechanged the position. The Government will be considering possible mechanisms to provide a ‘legal incentive’ for an internet service provider to cooperate with copyright owners in preventing infringement on their systems and networks.

Options the Attorney identified for fixing this include ‘graduated response’, third party injunctions against ISPs or maybe just facilitating self-regulation.

Read the Attorney General’s speech in full.

Lid dip: Peter Clarke

Copyright and the ALRC

Friday, December 6th, 2013

The Copyright Society reports that Senator Brandis (the Commonwealth Attorney-General) has confirmed to the Senate that:

  1. the ALRC did submit its final report on Copyright in the Digital Economy on Monday; and
  2. the ALRC has recommended:

It has recommended the introduction of a flexible fair-use exception as a defence to copyright infringement. It has also recommended retaining and reforming some of the existing specific exemptions and introducing certain new specific exemptions; amending the act to clarify the statutory licensing scheme; limiting the remedies available for copyright infringement to encourage the use of orphaned works; reforming broadcasting exemptions and amending the act to limit contracting-out terms.

According to the ALRC, it received over 860 submissions and anticipates that the Final Report will be tabled in Parliament within 15 sitting days after its delivery.

Senator Brandis indicated the Government would respond in the New Year.

In response to a further question, Senator Brandis re-affirmed the Government’s commitment to “the content industries” and stated:

It is the government’s strong view that the fundamental principles of intellectual property law, which protect the rights of content creators, have not changed merely because of the emergence of new media and new platforms. The principles underlying intellectual property law and the values which acknowledge the rights of creative people are not a function of the platform on which that creativity is expressed. The principles did not change with the invention of the internet and the emergence of social media. So in this changing digital world, the government’s response to the ALRC report will be informed by the view that the rights of content owners and content creators ought not to be lessened and that they are entitled to continue to benefit from their intellectual property.

Read the Copyright Society’s report here.

 

Update:

Zdnet reads Senator Brandis’ remarks as indicating the Government will not adopt the ALRC’s recommendations.

 

Lid dip: Peter Clarke, barrister