The Corbys have copyrights

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.

Acohs v Ucorp or the limits of implied licences

The Full Federal Court (Jacobson, Nicholas and Yates JJ) has largely upheld Jessup J’s ruling, but with a noteworthy limitation on the scope of implied licences.

Acohs and Ucorp both provide in competition with each other Material Safety Data Sheets (MSDSs) which are required by law to identify the properties, uses and hazards of dangerous chemicals.

At first instance, Jessup J found Acohs owned copyright in the MSDSs which had been written by its employees, but not by employees of third parties. His Honour also held that copyright did not subsist in the HTML source code of the MSDSs in its collection: the employees who prepared the software to generate the source code were not collaborating with those who subsequently entered the data in the sense necessary to constitute a work of joint authorship.

The Full Court has upheld these conclusions.

Jessup J also held that Ucorp could claim the benefit of an implied licence which permitted it to reproduce the MSDSs in which Acohs held copyright.

Acohs did not challenge the existence of an implied licence on appeal (after all, it has the benefit of a similar implied licence arising from the earlier litigation against Bashford). There was, however, an important difference in this case.

Ucorp copied several thousand MSDSs each week. At least some of these were made in response to requests from customers who had the benefit of an implied licence from Acohs. The copies made by Ucorp in response to such requests were protected by the implied licence.

However, Ucorp also “trawled” the internet looking for any other MSDSs and, when it found ones it did not already have stored, it downloaded them so as to have them available if a customer came along with a request for one. As these were not made in response to a request, but rather in anticipation of a request (which might never be made), they fell outside the scope of the implied licence. The Full Court reasoned that the licence that would be implied could be the bare minimum necessary and it was only necessary that a licence be implied in favour of customers who placed a request with Ucorp for a copy. The “trawling” could not be sanctioned.

Thus, Ucorp will be found liable for infringing the copyright in all those MSDSs which it reproduced without a specific request from a customer before the copy was made.

Two additional points:

First, Bennett J has adopted a similarly strict approach to the scope of the “interoperability” defence for infringement of copyright in computer programs. ISI made software that enabled users of CA’s Datacom database system to convert to IBM’s DB2 system. Section 47D protects reproductions made (for the relevant interoperability purpose) by the owner or licensee of copyright in a computer program or someone acting on their behalf. Bennett J found that ISI was not acting “on behalf” of such licensees when it made reproductions of “macros” used in the Datacom system for its commercial 2BDDB2 program as they were not made in response to specific requests from customers before the reproduction was made: CA Inc v ISI (starts around [334]).

Secondly, the Full Court does not appear to have been too happy with the licence Merkel J implied in the original Acohs v RA Bashford litigation at [108]:

The apparent acceptance by the parties of the correctness of Bashford has important ramifications for this appeal. As the parties conducted both the trial before the primary judge and the present appeal on that basis, the occasion does not arise for us to proceed otherwise than in accordance with, and to the extent of, that acceptance. In so proceeding, we do not wish to be taken as endorsing the correctness of all aspects of that decision.

Perhaps, the new reference to the ALRC cannot come soon enough.

Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16

 

 

PPCA v Commonwealth

The High Court has rejected the constitutional challenge to the validity of the “1%” cap on licence fees payable by broadcasters to the record companies on very narrow and specific grounds.

Section 109 of the Copyright Act 1968 provides a compulsory licence for the broadcasting to the public of sound recordings. Section 152, however, caps the royalty payable to record companies by broadcasters at 1% of the gross earnings of the broadcaster.

No such limitation had applied to the “corresponding” copyright in sound recordings under the 1911 Act.

The 1911 Act was repealed when the 1968 Act came into force on 1 July 1969. Section 220 of the 1968 Act provided that sound recordings in which copyright subsisted immediately before 1 July 1969 qualified for copyright under the 1969 Act effectively as provided for under the 1968 Act.

The record companies argued that the imposition of the 1% cap was an acquisition of their property in sound recordings made before July 1969 otherwise than on just terms in contravention of s 51(xxxi) of the Constitution.

The High Court has unanimously rejected that claim.

French CJ, Gummow, Hayne and Bell J said the record companies’ argument was predicated on a wrong assumption. They no longer owned copyright under the 1911 Act which had been qualified. Rather that copyright had been terminated and replaced with a new and different copyright under the 1968 Act. So at [10] and [11]:

[10] The assumption by the plaintiffs is that the copyright presently enjoyed in respect of the pre?1969 recordings, and which will expire in accordance with the extended term fixed by the operation of the Free Trade Act upon the 1968 Act, is that which arose under the 1911 Act and was carried forward by the 1968 Act, but with the impermissible imposition upon those copyrights of the “cap” in the compulsory licensing system introduced by the 1968 Act. The Commonwealth denies that assumption. The Commonwealth submission, which should be accepted, is that upon the proper construction of the 1968 Act: (a) copyrights subsisting in Australia on 1 May 1969 under the Imperial system were terminated; (b) thereafter, no copyright subsisted otherwise than by virtue of the 1968 Act; and (c) to that copyright in respect of sound recordings there attached immediately the compulsory licensing system including the “cap” upon the royalties payable thereunder.

[11] It should be emphasised that the plaintiffs do not assert that the 1968 Act is invalid by reason of its bringing to an end the operation in Australia of the Imperial system without the provision of just terms. To do so successfully would be to leave them with such rights in respect of the pre?1969 recordings as they had under the 1911 Act and the 1912 Act, and without any copyrights subsisting under the 1968 Act. Rather, the plaintiffs seek to attack the validity of the attachment to their rights under the 1968 Act of one aspect of the compulsory licensing system for sound recordings. For the reasons which follow, that attack must fail.

Heydon J to similar effect at [63]:

In short, the 1968 Act did not preserve the second to sixth plaintiffs’ rights under the 1911 Act and the 1912 Act. It abolished those rights. It substituted for them distinct and fresh rights – some more advantageous to those plaintiffs, some less. Thus ss 109 and 152 did not cause any property to be acquired. Property may have been extinguished by other provisions, but the plaintiffs’ case was not concerned with them.

After considering the application of s 51(xxxi) of the Constitution to statutory intellectual property rights generally, Crennan and Kiefel JJ reached the same conclusion at [129], pointing out at [130] that the record companies could not accept s 220 of the Copyright Act as valid and at the same time contend that ss 109 and 152 were invalid.

[129] When ss 8, 31, 85, 89(1), 207 and 220(1) of the 1968 Act are read together, it is clear that the copyright of the relevant plaintiffs under the 1911 Act, which included the exclusive right to perform the record in public, is not continued under the 1968 Act; rather it is replaced. Whilst it is true that, as the plaintiffs submit, certain records in which copyright subsisted under the 1911 Act are brought within the scheme of the 1968 Act, that is achieved by the re enactment, in substance, of qualifying provisions in the 1911 Act in, and for the purposes of, the 1968 Act. The effect is that the plaintiffs’ entitlement to sue for infringements under s 101 of the 1968 Act in respect of sound recordings in which copyright subsists pursuant to s 89(1) is an entitlement to sue in respect of infringements of the copyright in sound recordings contained in s 85, which replaces the copyright in records under s 19(1) of the 1911 Act. Inasmuch as ss 109 and 152 operate to qualify a record manufacturer’s exclusive rights by providing an exception to infringement, it is the exclusive rights under s 85 which are affected, not the exclusive rights under the 1911 Act (which have been replaced).

[130] Whilst the plaintiffs mount no attack on the validity of provisions of the 1968 Act which effect the replacement of the relevant plaintiffs’ copyright under the 1911 Act with a copyright under the 1968 Act, their attack on the validity of ss 109 and 152, which depends on the continuing subsistence of copyright under s 19(1) of the 1911 Act, is untenable. If the plaintiffs were to attack the validity of the provisions of the 1968 Act which effect the replacement of copyright under s 19(1) of the 1911 Act with a differently constituted copyright under s 85 of the 1968 Act, they would risk being left not only with the awkwardly expressed copyright under s 19(1) of the 1911 Act in respect of records, but also with a copyright, the term of which was limited to 50, rather than 70, years.

Now the High Court have reminded themselves of all these matters, they will be primed for the tobacco companies challenge to the validity of the Tobacco Plain Packaging Act 2011, the hearings for which start in April.

Phonographic Performance Company of Australia Limited v Commonwealth of Australia [2012] HCA 8

capable of being confused with the trade mark

Jessup J has ruled that Idameneo’s use of:

Idameneo's trade mark

does not infringe Symbion’s registered trade mark for:

Symbion's trade mark

(As registered, the trade mark is not coloured; it was generally used in the colours depicted. See s 70(3).)

However, Idameneo’s use of its trade mark did breach its contractual obligations.


On the trade mark infringement front, you might have been thinking like me, “Who would have thought?” It turns out, however, that what enabled Idameneo to escape was the nature of the services: medical imaging services. Although the customer, you or I needing an x-ray, pays the bill and has the service practised on us, the relevant public were the doctors (and the odd dentist) who referred the patient to the service. This constituted a specialist market within Lord Diplock’s definition :

My Lords, where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence, is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused.

By law, the doctor (and presumably the dentist) could not make a referral without providing the patient with the name and address of the service provider: i.e., they had to know who was going to provide the service.

It is rather a messy deal how Symbion came to license its trade mark to the corporate group of which Idameneo was a member. Under the terms of the licence, however, the licensee agreed (for itself and the other members of the corporate group which included Idameneo) by cl. 5.5:

Use of Similar Marks

Except as permitted by this deed, the [respondent] must not, and must ensure that each Licensee does not, use:

(a)       any Trade Mark; or

(b)     any Mark similar to or capable of being confused with any of the Trade Marks or which contain the words SYMBION or FAULDING,

as a trade mark, business name, domain name or otherwise anywhere in the world.

(emphasis supplied)

Jessup J was not prepared to treat the obligation as being 2 separate obligations: not to use similar trade marks or ones capable of being confused …. Rather, his Honour considered that the notion of ‘similar’ had to take colour from its context.

On the other hand, his Honour rejected Idameneo’s argument that the contractual obligation was no different to the test provided by s 10 for deceptive similarity for trade mark infringement:

36. …. The respect in which the test stated by the contractual provision conspicuously differs from that under s 10 is that it is concerned with similarity which is capable of causing confusion, whereas the section is concerned with resemblance which is likely to deceive or to cause confusion.  Here I think that the applicant has the better of the argument.  It is as clear as may be that the parties to the licence agreement were conscious of the circumstance that many of the marks referred therein were registered under the Trade Marks Act; and it may be inferred that they had an active appreciation of the requirements of s 10.  I have no reason to doubt that their choice of different language by which to express the prohibition in cl 5.5(b) was a conscious one.  I consider that for the court to conflate, as it were, the terms of that prohibition into those of s 10 of the Trade Marks Act would be to neutralise that choice, and would go against the parties’ intentions.

In [37], Jessup J went on to note that the contractual prohibition was part of the consideration Symbion had extracted in return for granting the licence and must be thought to have some intended value.

Applying the usual rules of visual comparison and imperfect recollection, the lower threshold established by capable of confusion compared to likely to deceive or cause confusion meant the contract had been breached.

Jessup J did accept that the setting in which the competing marks were used should be taken into account in deciding whether or not cl. 5.5 was breached. The facts that Idameneo used its mark for medical diagnotic imaging while Symbion used its mark for the wholesale distribution of pharmaceuticals, however, did not save Idameneo:

47 But I do not accept the respondent’s factual submission that the circumstances in which the respondent’s mark is used are so distinct from the business activities of the applicant as to leave no realistic scope for confusion by reason of similarity.  Both marks are used in the allied health sector: indeed, before 2008, the applicant’s mark was used by the respondent and its subsidiaries (then not part of the Primary group) in both the pharmaceutical and the imaging parts of that sector.  I think I am entitled to regard it as notorious that there is a degree of contact, at both the professional and the consumer levels, as between these parts, such as would make it quite unsurprising if the same people – to some extent at least – had occasion to encounter both the respondent’s mark and the applicant’s mark from time to time.  And there is some evidence that the respondent’s mark is used in settings, such as the premises of hospitals, where those who have regular business dealings with the applicant – pharmacists and the staff of hospital pharmacy departments, for example – might be expected to be found. …. (emphasis supplied)

Idameneo argued that cl. 5.5 should be read down so as not to apply to its use of its trade mark because it had been using its trade mark before Symbion’s trade mark had been developed and it was in use when the licence was negotiated. Thus, it argued it was unreasonable to read cl. 5.5 as applying to its continued use of the trade mark. Jessup J rejected this argument, noting the strictness of the test for implying terms into a comprehensive, professionally drafted written agreement. Moreover, Idameneo’s business appears to have been something of a sideline or relatively remote activity within the corporate group as a whole. Jessup J pointed out at [42]:

there is no evidence that the applicant … knew of the existence of the respondent’s mark in the period August-October 2008.

Thus, the conditions for implication of a term could not be made out.

Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited [2011] FCA 389