Emmett, Jagot and Nicholas JJ brought this one down in 268 paragraphs.
EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited  FCAFC 47
Lid dip Peter Clarke
Emmett, Jagot and Nicholas JJ brought this one down in 268 paragraphs.
EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited  FCAFC 47
Lid dip Peter Clarke
Bennett J’s reasons for ruling that Fairfax does not hold copyright in the Australian Financial Review’s headlines have now been published.
In conclusion, Bennett J stated:
159 As to the subsistence of copyright in the contended works, I have reached the following conclusions:
 is strikingly reminiscent of her Honour’s ruling at first instance in IceTV. As you will see from , her Honour also addressed the fair dealing defence and rejected Reed’s argument that Fairfax was estopped.
While the courts have been careful not to say there can never be copyright in film titles and the like, one wonders, if there wasn’t copyright in The Man Who Broke The Bank at Monte Carlo, whatever were they thinking?
The Australian (rather ironically given News Corp’s campaign) has some fun at Fairfax’ expense picking out some key points and repeats Alan Kohler’s question what would they have achieved commercially even if they succeeded?
Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd  FCA 984
While on the subject of Mars and darkened conference rooms, Men at Work have been found to infringe Larrikin’s copyright in Kookaburra Sits on the Old Gum Tree.
It would seem (from newspaper reports) that 2 bars were a substantial part – shades of the old Colonel Bogey newsreel case.
The video on the Age’s website has the clips of every kid’s favourite folk song and that flute riff.
Richard Acland highlights the crucial comparison in a vacuum:
Even though there was evidence that the pitch, key, rhythm, melodic shape, harmony, musical sentences and context are different, Justice Jacobson found that there was nonetheless a reproduction of a substantial part of Kookaburra in Down Under. This is not to say that Kookaburra amounted to a substantial part of the pop song.
but it all seems rather academic when Jacobson J found at :
Mr Hay also accepted that for a period of about two or three years from around 2002, when he performed Down Under at concerts, he sometimes sang the words of Kookaburra at about the middle of Down Under, at the point at which he reached the flute line.
Looks rather like the crucial battle was last year’s fight over whether or not the Girl Guides or Larrikin owned the copyright in the first place.
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited  FCA 29
The UK Court of Criminal Appeal has dismissed an appeal against a criminal conviction for selling modchips to enable Sony Playstations, Nintendo and Microsoft to play counterfeit games.
The 1709 [delete mouthfull of title] blog has a detailed report.
Those of us living in the autochthonous realm hidden away in the summer sun may find some interest in the reasons why the playing of the (counterfeit) games would result in a reproduction of a substantial part of the copyright – a point doubted or left open in Stevens v Sony  HCA 58 at  – .
However, a considerable degree of caution will be required:
First, (what I guess constitutes a plurality of) the High Court has already ruled that a single image (or “frame”) from a film is not (or is not necessarily) a substantial part – at least of a television broadcast (Network Ten v Nine Network):
Secondly, as Stevens v Sony shows, Australia has very definitely embarked on its own course in relation to technological protection measures and this whole area of “meta” copyright.
Thirdly, at least 3 of the judges in the IceTV case resoundingly declared that it is not appropriate to test substantiality by reference to the taking of the skill and effort of the author. Well, that is what they said; whether or not it is what they did is another matter. The 3 judges in the other judgment, of course, appear very much to have applied that misappropriation of the skill and effort (in expression) approach.
Those of you who are political philosophers or constitutional scholars may also look with some bemusement, or perhaps appreciation, on the Court of Criminal Appeal’s thundering against the idea of leaving to that engine of democracy, otherwise known as the jury, such recondite questions as copyright infringement, when perfectly well-trained Chancery judges were ready and waiting to serve. Of course, those of us who practise in the civil jurisdiction where IP cases are usually heard might well be horrified by the prospect of trying to present such a case to 12 men and women good and true!
IceTV publishes an electronic tv program guide or schedule. The ABC and SBS provide their program schedules, but the commercial free-to-air networks refused. Mr Rilet sat down and watched 3 weeks of Channel 9 programming, writing down the time and title of each program. He then made up a program schedule ‘predicting over’ what would be broadcast. As the broadcast date neared, however, IceTV employees checked up to 3 other program guides and made corrections to the ‘predicted over’ guide as appropriate. (A summary of the changes made to 2 particular days can be found at [179 - 181] of Gummow, Hayne and Heydon JJ’s reasons.) Mr Rilet and IceTV presumably engaged in the same kind of work for the other commercial networks.
The High Court unanimously held that IceTV’s use of time and title information (‘slivers’ in Bennett J’s evocative phrase at first instance) did not reproduce a substantial part of Nine’s copyright in [one or other programming schedule]. (It is necessary to be a bit vague here since, as in Feist, the alleged infringer mistakenly (as it now turns out) conceded copyright subsistence in something, to the evident frustration of all High Court judges.)
One thing the Court was unanimously agreed upon is that “copyright does not protect facts or information”, it protects forms of expression. See e.g.  per French CJ, Crennan and Kiefel JJ and  and  per Gummow, Hayne, Heydon JJ.
28. Copyright does not protect facts or information. Copyright protects the particular form of expression of the information, namely the words, figures and symbols in which the pieces of information are expressed, and the selection and arrangement of that information. That facts are not protected is a crucial part of the balancing of competing policy considerations in copyright legislation. The information/expression dichotomy, in copyright law, is rooted in considerations of social utility. Copyright, being an exception to the law’s general abhorrence of monopolies, does not confer a monopoly on facts or information because to do so would impede the reading public’s access to and use of facts and information. Copyright is not given to reward work distinct from the production of a particular form of expression.
The judgments both bear strong indications that Australian copyright law should change track and follow the line pursued by the US Supreme Court in Feist.
Both judgments appear to affirm that copyright involves a balancing of the competing interests of creators (and owners) and users or the public.
The fun, or future controversies, begin in what follows.
For French CJ, Crennan and Kiefel JJ, there appears to be a different approach according to whether one is considering questions of originality and substantiality in connection with subsistence of copyright or in connection with infringement.
French CJ, Crennan and Kiefel JJ appear to consider that copyright will subsist so long as what is expressed (in a material form) originates from the author in the sense of not being copied from somewhere else. See  and .
Their Honours accepted that infringement fell to be tested by ascertaining whether or not the time and title information in IceTV’s guides was a substantial part of the relevant Nine program guide. This required consideration of “the degree of originality of the particular form of expression of the part [taken].” at 
Just because the part taken originated from the author did not necessarily make that part a substantial part of the original copyright work – “[o]riginality in the context of infringement has a broader aspect.” at .
The time and title information reproduced by IceTV did not require much in the way of mental effort at . Its chronological arrangement was obvious and prosaic at .
According to their Honours at :
the critical question is whether skill and labour was directed to the particular form of expression of the time and title information, including its chronological arrangement. The skill and labour devoted by Nine’s employees to programming decisions was not directed to the originality of the particular form of expression of the time and title information. The level of skill and labour required to express the time and title information was minimal. That is not surprising, given that, as explained above, the particular form of expression of the time and title information is essentially dictated by the nature of that information.
That is, the work engaged in by Nine employees in choosing what programs to broadcast and at what times could be excluded from consideration. It was not relevant to the originality of the form of expression. On this approach, it will be necessary to divine at what stage of the process the author(s) actually start engaging in making the work (i.e., expending skill and labour on the form of expression). Therefore, the Full Federal Court’s decision in Milwell v Olympic would appear to have been wrongly decided.
Drawing this line may well prove extremely challenging in practice, although presumably no more difficult than it may be to identify a sufficient spark of creativity or independent intellectual effort if the inquiry arose at the stage of copyright subsistence.
Gummow, Hayne and Heydon JJ in what is a dense and closely reasoned opinion which is going to require far more consideration and reflection appear to have taken a rather different approach.
That said, their Honours might be thought to have been making a similar point to French CJ, Crennan and Kiefel JJ at :
in assessing the quality of the time and title information, as components of the Weekly Schedule, baldly stated matters of fact or intention are inseparable from and co-extensive with their expression. It is difficult to discern the expression of thought in statements of which programmes will be broadcast and when this will occur. If the facts be divorced from the other elements constituting the compilation in suit, as is the case with the use by IceTV of the time and title information, then it is difficult to treat the IceGuide as the reproduction of a substantial part of the Weekly Schedule in the qualitative sense required by the case law. (emphasis supplied)
The way this is put suggests the importation into Australian law of a merger-like doctrine known to US law.
Similarly, their Honours’ reasons refer in a number of places to the need for there to be “independent intellectual effort” in the creation of the work for it to be an original copyright work. Accordingly, Gummow, Hayne and Heydon JJ concluded at  that:
the Court should accept the submission by Ice that the originality of the compilation being the Weekly Schedule lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole. (emphasis supplied)
There are indications, however, that other considerations are at play.
First, their Honours in a number of places expressly rejected resort to tests such as misappropriation, skill and labour and protection of the interests sought to be protected by copyright as substitutes for the statutory test.
Secondly, at  – , their Honours expressly affirmed Bennett J’s finding at first instance that IceTV had not in fact copied anything from Nine’s copyright material by writing down time and title information while watching the programs actually being broadcast on tv. This process appears to be similar to the proposition which their Honour’s endorsed at  from the Spicer Committee that no-one infringed a football club’s copyright in a list of its players and their numbers by making a list by watching the game.
If that be a correct understanding, the rest of the reasoning would be obiter dicta albeit extremely highly persuasive dicta in Australian courts!
Their Honours devoted considerable space to considering who was the author, or were the authors, of the program schedules. So much so that on the second day of the High Court appeal Nine sought to rely on copyright in yet a different program schedule. This may well have longer term ramifications as their Honours noted at :
to emphasise the difficulties of adapting the provisions of Pt III of the Act to cases such as the present, where multiple works and authors might be identified and the requisite expression of “authorship” of each may be dictated by a specific commercial objective. The point is illustrated sufficiently by contrasting the provisions of the Act and the evidence with the proposition that “the work” was a single work represented in the Nine Database and “first published” upon dissemination to the Aggregators of the Weekly Schedule in “Excel” and “text” format.
Their Honours then went on to refer at  to a host of matters that the evidence would need to address to try and make out such a claim and pointedly drew attention to the absence from the Australian Copyright Act of any provision similar to s 9 in the UK’s CDPA 1988 which deems the author of a computer generated work to be the person who made the arrangements necessary for the work to be created. Earlier, at , their Honours indicated that IceTV’s alleged appropriation of “the fruits of Nine’s skill and labour” might not be capable of resolution in the absence of legislation such as the EU’s Directive on the Legal Protection of Databases.
Finally, in this quick overview, it is worth noting that Gummow, Hayne and Heydon JJ sought to deflect over anxious consideration of the impact of Data Access on copyright law. In that case, the majority had endorsed Mason CJ’s rejection of the “but for” test of infringement and recognition that substantiality for the purposes of determining infringement depended on the originality of the part taken. According to Gummow, Hayne and Heydon JJ at , however, Data Access is concerned with the special problems arising from the extension of copyright protection to computer programs and the consequent protection of functionality in that particular context.
IceTV Pty Ltd v Nine Network Australia Pty Ltd  HCA 14
The High Court has unanimously allowed the appeal in IceTV.
IceTV did not reproduce a substantial part of Nine’s copyright in its program guides by reproducing the time and title information from those guides.
At least that means people in Australia will be able to use PVRs without the shackles imposed by the TV networks.
More detailed consideration will require further time. Meanwhile, 2 points to ponder:
First, French CJ, Crennan and Kiefel JJ delivered one joint opinion. Gummow, Hayne and Heydon JJ delivered a second joint opinion.
Secondly, in their joint opinion, Gummow, Hayne and Heydon JJ trail a very long coat on the Feist-ian “spark of creativity”:
187. One final point should be made. This concerns the submission by the Digital Alliance that this Court consider the Full Court’s decision in Desktop Marketing and, to the contrary of Desktop Marketing, affirm that there must be ”creative spark” or exercise of “skill and judgment” before a work is sufficiently “original” for the subsistence of copyright.
188. It is by no means apparent that the law even before the 1911 Act was to any different effect to that for which the Digital Alliance contends. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon “labour and expense” per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works.
That might come as a surprise to someone who read the transcript of Desktop‘s failed special leave application.
The Full Court (Lindgren, Goldberg and Bennett JJ) has allowed the appeal in Elwood v Cotton On. So, for example, contrary to the trial Judge’s ruling, Elwood’s copyright in this:
was infringed by this:
First, the Full Court agreed with the trial Judge that Elwood’s t-shirt design was properly classified as an artistic work and not a literary work nor both an artistic work and a literary work: the semiotic component – the words and numbers – was too slight for the design to be viewed as an artistic work.
As an aside, the Full Court did not express a view of whether or not the ruling in Anacon that a circuit diagram was both an artistic work and a literary work represented the law in Australia.
Secondly, the Full Court reiterated that infringement was to be tested in 3 steps:
(1) to identify the work in suit in which copyright subsists;
(2) to identify in the alleged infringing work the part taken (ie derived or copied) from the work in suit; and
(3) to determine whether the part taken constitutes a substantial part of the work in suit.
At the stage of identifying the work in suit, the Full Court ruled that it was the work as a whole which needed to be identified. The Full Court held, however, that the trial Judge had erred by excluding from consideration at this stage those matters which her Honour found were matters of “idea” rather than “expression”.
Cotton On was found, both at trial and on appeal, to have blatantly copied from Elwood’s work. As a comparison of the work and Cotton On’s designs above shows what Cotton On took was the the layout, positioning of elements and the overall “look and feel”. What it didn’t take were the actual words, symbols and images.
The trial Judge had found this significant, ruling that:
The text and symbols matter. The colours matter. Similarly, unlike Finkelstein J in Autocaps [a reference to Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339], I cannot say that what is conveyed by the two prints is the same – it is not.
Having found the error identified above, the Full Court disagreed. Their Honours found that the layout, selection , arrangement and style of the various elements were a substantial part of the copyright work and so there had been an infringing reproduction.
The means by which the Full Court arrived at this conclusion is significant.
The Full Court had appeared to accept that there may be a role for “ideas” and “expression” at the infringement stage of the inquiry. However:
35 While the idea/expression dichotomy is basic to the law of copyright, it is a difficult one, particularly in the case of artistic works. What principles are to govern the demarcation? The “idea” underlying a copyright work can plausibly be identified at different levels of generality. The higher the level of abstraction, the more that is left as protectable expression. The lower the level of abstraction, the less that is left as protectable expression. ….
37 A difficulty associated with the idea/expression dichotomy is that the choice of the level of abstraction is subjective and uncertain. Mr Simons’s identification of the underlying concept (see  above) was not conclusive.
In contrast, the Full Court preferred a rather more mechanistic approach. The layout, etc., “look and feel” were substantial because the evidence showed that far more effort went into achieving them:
70 Mr Gillott said that he and Mr Simons tried to achieve a “balance” of the six elements on the front and the five elements on the back, and the proportion they bore to one another. He estimated that there were at least 10 to 15 printouts by Mr Simons on which he (Mr Gillott) wrote his comments and his “scribbles”. He said that the entire process took a good two weeks, but no more than three weeks, from the time he handed over his initial draft to Mr Simons.
71 Mr Gillott described Elwood’s design procedure. He said that the form and shape was settled upon first, and the “type elements”, “wording and text elements”, last. It was after that two to three week period that attention was directed to finalising the wording and text. Mr Gillott said that “once we’re down to inputting the words that we would like in the art, that happens quite quickly”. He explained that it took no more than two days to put those elements into the design, because he “already had the ideas to carry “Raging Bulls” through”, and the expression “Durable by Design” was Elwood’s “core logo”. He said that once those elements were introduced, he signed off on the NewDeal print and it took no more than two days for production to commence.
73 Mr Gillott’s evidence recounted above, which was not contradicted, was to the effect that by far the greater part of the effort, skill and time involved in designing of the NewDeal T-shirt was devoted to layout rather than with the choice of words and numerals. (emphasis supplied)
Two weeks versus two days may seem, perhaps, a rather quantitative approach to the qualitative assessment of judgment and degree which the traditional inquiry into a substantial part is acknowledged to require.
It also turned out that Elwood’s design was in fact a development of its earlier 96ers T. Unfortunately, an image of that earlier design is not included in the judgment. Their Honours explained, however, that the New Generation design involved the following differences:
74 There are obvious similarities between the 96ers and the NewDeal design but the NewDeal design contained artistic expressions of an underlying idea that were not found in the 96ers. Mr Gillott and Mr Simons introduced the following features:
• curved sections;
• some changes to the presentation of the bull’s head trade mark;
• new letter forms;
• accentuation of the overall V shape;
• a balance of the six elements on the front and the five elements on the back; and
• changes in the proportions borne by the respective elements to one another.
By taking these features of the NewDeal design or layout, Cotton On reproduced something that was or included a substantial part of that design or layout.
Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd  FCAFC 197