Author name: war

A barrister practising mainly in Australian patents, trade marks, copyright and other IP law; lecturer and contributing author to LexisNexis' Copyright & Designs and Patents looseleaf services

Help Help I don’t have a copyright

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The State of Victoria passed regulations requiring licensed taxis to be fitted with an alarm system that played the message (and only played the message)

“Help-Help-Driver-in-Danger-Call-Police-Ph.000”

It would appear the wording of the particular message derived from Pacific.

Pacific sought licence fees in the Copyright Tribunal pursuant to the Crown Use provisions. That proceeding was adjourned pending resolution of court proceedings to determine if copyright subsisted in the text of the message.

Emmett J held it did not:

17.  Copyright is concerned with the protection of the expression of ideas and not with the protection of ideas as such. Literary work comprises more than mere ideas. Many things that have no pretensions to literary style can be the subject of copyright. A literary work may be expressed in print or writing, irrespective of the question whether the quality or style is high (See University of London Press Limited v University Tutorial Press Limited [1916] 2 Ch 601 at 608). However, there must be some work involved in its production of a literary work, in the sense that it is necessary for the author to add something of substance in the form of the expression of ideas. Whether or not what the author adds is sufficient may be a question of degree in any given case.

18.  The originality that is required concerns the expression of the idea or thought and not the inventiveness of the idea (see University of London Press Case at 608). Whilst the required skill or labour necessary for the creation of a literary work in which copyright may subsist is not large, it must not be insubstantial. For example, as a rule, a title does not involve literary composition and is not sufficiently substantial to justify claims of copyright protection. However, that does not mean that in a particular case the title may not be so extensive and of such a significant character as to attract the protection of copyright ….

Copyright is concerned with the protection of the expression of ideas and not with the protection of ideas as such. Literary work comprises more than mere ideas. Many things that have no pretensions to literary style can be the subject of copyright. A literary work may be expressed in print or writing, irrespective of the question whether the quality or style is high (See University of London Press Limited v University Tutorial Press Limited [1916] 2 Ch 601 at 608). However, there must be some work involved in its production of a literary work, in the sense that it is necessary for the author to add something of substance in the form of the expression of ideas. Whether or not what the author adds is sufficient may be a question of degree in any given case.
The originality that is required concerns the expression of the idea or thought and not the inventiveness of the idea (see University of London Press Case at 608). Whilst the required skill or labour necessary for the creation of a literary work in which copyright may subsist is not large, it must not be insubstantial. For example, as a rule, a title does not involve literary composition and is not sufficiently substantial to justify claims of copyright protection. However, that does not mean that in a particular case the title may not be so extensive and of such a significant character as to attract the protection of copyright

After setting out a list of titles/slogans in which copyright had been denied, his Honour ruled:

21.  The question presently in issue may be stated as whether a piece of writing or collection of words is to be accorded the status of literary work, having regard to the kind of skill and labour expended and the nature of copyright protection and its underlying policy. It is not correct to say that the purpose of the Copyright Act is to protect original skill and labour (see Navitaire Inc v Easyjet Airline Company Limited [2006] RPC 111 at 148-149).

22.  The Help Words are not a form of literary expression, but a setting down of several simple words in the nature of saying something in ordinary parlance. They are no more than a simple instruction. The Help Words do no more than state the obvious words for use in drawing attention to a taxi driver requiring urgent assistance. They are not words that should be afforded monopoly protection.

23.  The Help Words simply indicate a desire to convey the notion that a taxi driver in duress seeks urgent assistance. They do no more than state an idea. The expression is inseparable from the fundamental idea that is being conveyed by the words. When the expression of an idea is inseparable from its function it forms part of the idea and is not entitled to the protection of copyright (see Autodesk Inc v Dyason [1992] HCA 2; (1992) 22 IPR 163 at 172).

His Honour also noted it would be inappropriate for copyright to subsist in such a message lest a taxi driver in trouble or a passerby be found to infringe.

The decision, with respect, is entirely consistent with the approach for infringement recently declared by the High Court in IceTV but, perhaps because the State’s submissions the decision is made one were prepared and filed in October last year, there is no reference to that case.

State of Victoria v Pacific Technologies (Australia) Pty Ltd (ACN 065 199 439) (No 2) [2009] FCA 737

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What the EU Commissioner said on the Internet and Downloading

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Commissioner Reding, the EU’s Commissioner for information society and media, has attracted a degree of attention planning an overhaul of internet downloading rules.

Her comments were part of a wide ranging speech on what the EU is doing and will be doing about broadband, access and …. So, what did she actually say?

After identifying access to digital content as the first of 4 priority issues, Ms Reding said:

1. My first and most important priority for Digital Europe is: To make it easier and more attractive to access digital content, wherever produced in Europe. The availability of attractive content that appeals to European viewers, listeners and readers will be decisive in driving further the take-up of high-speed broadband internet. It is therefore regrettable that we currently have an extremely polarised debate on the matter: While many right holders insist that every unauthorised download from the internet is a violation of intellectual property rights and therefore illegal or even criminal, others stress that access to the internet is a crucial fundamental right. Let me be clear on this: Both sides are right. The drama is that after long and often fruitless battles, both camps have now dug themselves in their positions, without any signs of opening from either side.
In the meantime, internet piracy appears to become more and more “sexy”, in particular for the digital natives already, the young generation of intense internet users between 16 and 24. This generation should become the foundation of our digital economy, of new innovation and new growth opportunities. However, Eurostat figures show that 60% of them have downloaded audiovisual content from the internet in the past months without paying. And 28% state that they would not be willing to pay.
These figures reveal the serious deficiencies of the present system. It is necessary to penalise those who are breaking the law. But are there really enough attractive and consumer-friendly legal offers on the market? Does our present legal system for Intellectual Property Rights really live up to the expectations of the internet generation? Have we considered all alternative options to repression? Have we really looked at the issue through the eyes of a 16 year old? Or only from the perspective of law professors who grew up in the Gutenberg Age? In my view, growing internet piracy is a vote of no-confidence in existing business models and legal solutions. It should be a wake-up call for policy-makers.
I f we do not, very quickly, make it easier and more consumer-friendly to access digital content, we could lose a whole generation as supporters of artistic creation and legal use of digital services. Economically, socially, and culturally, this would be a tragedy. It will therefore be my key priority to work, in cooperation with other Commissioners, on a simple, consumer-friendly legal framework for accessing digital content in Europe’s single market, while ensuring at the same time fair remuneration of creators. Digital Europe can only be built with content creators on board; and with the generation of digital natives as interested users and innovative consumers .

1. My first and most important priority for Digital Europe is: To make it easier and more attractive to access digital content, wherever produced in Europe. The availability of attractive content that appeals to European viewers, listeners and readers will be decisive in driving further the take-up of high-speed broadband internet. It is therefore regrettable that we currently have an extremely polarised debate on the matter: While many right holders insist that every unauthorised download from the internet is a violation of intellectual property rights and therefore illegal or even criminal, others stress that access to the internet is a crucial fundamental right. Let me be clear on this: Both sides are right. The drama is that after long and often fruitless battles, both camps have now dug themselves in their positions, without any signs of opening from either side.

In the meantime, internet piracy appears to become more and more “sexy”, in particular for the digital natives already, the young generation of intense internet users between 16 and 24. This generation should become the foundation of our digital economy, of new innovation and new growth opportunities. However, Eurostat figures show that 60% of them have downloaded audiovisual content from the internet in the past months without paying. And 28% state that they would not be willing to pay.

These figures reveal the serious deficiencies of the present system. It is necessary to penalise those who are breaking the law. But are there really enough attractive and consumer-friendly legal offers on the market? Does our present legal system for Intellectual Property Rights really live up to the expectations of the internet generation? Have we considered all alternative options to repression? Have we really looked at the issue through the eyes of a 16 year old? Or only from the perspective of law professors who grew up in the Gutenberg Age? In my view, growing internet piracy is a vote of no-confidence in existing business models and legal solutions. It should be a wake-up call for policy-makers.

I f we do not, very quickly, make it easier and more consumer-friendly to access digital content, we could lose a whole generation as supporters of artistic creation and legal use of digital services. Economically, socially, and culturally, this would be a tragedy. It will therefore be my key priority to work, in cooperation with other Commissioners, on a simple, consumer-friendly legal framework for accessing digital content in Europe’s single market, while ensuring at the same time fair remuneration of creators. Digital Europe can only be built with content creators on board; and with the generation of digital natives as interested users and innovative consumers .

She then gave 2 examples.

The first was facilitating online licensing across all 27 member states. [Why stop there? As Prof. Gans has pointed out, albeit inaccurately under the rubric of parallel imports, this is a global problem.]

The second is to create a modern set of rules to encourage the digitisation of books:

Let us be very clear: if we do not reform our European copyright rules on orphan works and libraries swiftly, digitisation and the development of attractive content offers will not take place in Europe, but on the other side of the Atlantic. Only a modern set of consumer-friendly rules will enable Europe’s content to play a strong part in the digitisation efforts that has already started all around the globe. (The Commissioner’s emphasis)

Read the full text of the Commissioner’s speech here (the downloading wars start about 80% of the way ‘down’).

The idea of looking at the issue from the eyes of 16 year olds, rather than people who grew up in the 50s and 60s, is rather Lessig-ian (watch the Ted Talk video).

Bit of a stretch, blaming the law professors though!

Meanwhile, the very same day, Euro publishers, demonstrating the “us” versus “them” mentality Commissioner Reding criticised, took the opportunity to open another front on their war against Google, linking and aggregating. Publishers’ announcement and Hamburg declaration via here.

post-publication postscript: Chris Anderson from Wired on “Free”, reviewed in NYT.

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ASCAP, AT&T and ringtones

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ASCAP is suing AT&T in the USA for copyright infringements when an AT&T subscriber’s phone plays a ringtone. ASCAP is a collecting society for public performance and broadcast rights. It alleges that when the subscriber receives a phone call in, say, a restaurant and the phone plays a ringtone it is a performance in public that needs a licence.

Fred Lohman from the EFF says this claim is doomed in America. Their copyright act has §110(4) that excludes from the public performance right ‘performances made “without any purpose of direct or indirect commercial advantage.”‘

Why wouldn’t Telstra or Optus or, for that matter, Apple be liable in Australia if APRA or PPCA came calling?

We don’t have a §110(4) so, if you were in a restaurant or walking down Collins St in rush hour and your phone started playing a ringtone you had installed, you the phone owner wouldn’t be able to use Fred Lohman’s escape clause.

So could the phone company or Apple or whoever sold you the ringtone potentially be liable for authorising your infringement (if it be an infringement)? If we are still living in the world where Telstra was liable for the music on hold played by users of Telstra’s network (before the Act was changed by the Digital Agenda Act), the question doesn’t seem so fanciful?

The phone company or whoever could presumably be liable only on the basis of authorising the phone user’s conduct which would have to be infringing in itself. Now, liability for authorisation may not be a foregone conclusion; but in Cooper, the ISP was liable at least in part because it could have prevented the website even operating. Would it make a difference if the alleged authoriser just provided the phone or the ringtone?

One argument might be that if you, the subscriber, paid for and downloaded something described as a “ringtone”, there must be an implied licence. Maybe. But in an awful lot of cases, the person who can give you rights to download and store the ringtone on your phone will not have rights to license the performance right – that right will have been assigned to, you guessed it, APRA or another collecting society. Although APRA and AMCOS now seem to be “almost” the same entity.

Surely, a court would find that, although the ringtone might be heard incidentally in public by unwitting passersby or bystanders, the playing of the ringtone was really in private? Well, maybe. But then why have those exceptions in the Act for incidental uses of things like artistic works in public places (s 65) or reading or recitation of reasonable portions of published literary or dramatic works (s 45)? (At least, you wouldn’t have to pay a licence fee for the lyrics!) and making temporary copies as part of a technical process of use (s 111B)? And there is a specific statutory licence for the playing in public of sound recordings (s 108).

Maybe a court could be persuaded to look a little more liberally at whether or not a ringtone is a substantial part of the original recording? A ringtone afterall can only be 30 seconds in duration. This seems very unlikely given that 8 bars of  Colonel Bogey infringed.

Is there something wrong with the way we legislate specific exceptions for specific technological problems?

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Shameless self-promotion

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Turns out, I’m doing a talk on IceTV for the Victorian Society of Computers and the Law in Melbourne on Monday, 13 July 2009June 2006 at 1.00 pm.

More details here.

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The Pope on IP

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Howard extracts from, and links to, Pope Benedict VI’s Encyclical on Social Issues which includes some pronouncements on intellectual property: via here.

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What’s the priority date for a divisional patent?

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Mont has an innovation patent for a travel pack.

It sued Phoenix for infringing the innovation patent; Phoenix  counter-claimed for invalidity on the grounds of Mont’s own use commencing in October 2004.

Patents Act 1990 s 24 (read with Reg. 2.2(1A)) provides a patentee with a grace period: protecting the patentee against attacks on grounds of lack of novelty or inventive step/innovative step by reason of the patentee’s own authorised use or disclosure within the 12 months prior to “the filing date of the complete specification”.

The background was as follows:

In October 2004, it had started offering travel packs made according to the invention for sale.

In May 2005, it filed a complete application (with a complete specification) for a standard patent.

In November 2006, however, it filed a complete application (and of course a complete specification) for an innovation patent as a divisional application from the earlier standard application and this application matured into the innovation patent.

The trial judge had found that the “grace period” had to be calculated from the date of filing the complete specification for the divisional application, not the parent.

The Full Court has now allowed an appeal ruling that “the complete specification” referred to in reg. 2.2(1A) in the case of a divisional application is the complete specification for the parent.

Jagot J (with whom Emmett J agreed) explained the rationale:

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.
77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.

77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

Similarly Bennett J said [49]:

49 The scheme of the Act provides that, where the invention of the divisional was disclosed in the parent, the publication or use of the invention within 12 months before the filing date of the parent must be disregarded for the purposes of assessing the novelty and inventive/innovative step of each of the parent and the divisional, provided that a patent application for the invention is filed within the prescribed period. This applies where the divisional is of a parent standard patent or a parent innovation patent. Where the invention of the divisional was disclosed in the parent, the words “the complete application” in reg 2.2(1A) refer to the parent application and not to the divisional application.

Jagot J also provided a detailed rebuttal of Phoenix’ contentions.

Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84

ps: IPTA was granted leave to intervene (and while advocating the view that the Full Court adopted, was ordered to pay any additional costs incurred by the parties as a result of the intervention).

pps:a patentee who needs to rely on a grace period to preserve the validity of the patent in Australia may well still lose the patent outside Australia where the grace period does not apply

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Linking should infringe?

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Judge Posner (of the 7th Circuit Court of Appeals in the USA) writing extra-judicially on his blog has stirred up a maelstron in the blogosphere with a typically  thoughtful and provocative post contending that linking to websites should be copyright infringement. (At the time of writing, there are only 211 comments!)

Less contentiously (at least in terms of blogosphere reaction), Prof Becker’s reaction is that newspapers are doomed:

That the Internet is a more efficient provider of news and opinion than newspapers is seen in the fact that hardly anyone under age 40 now reads papers. Readership is also declining among older persons ….

Although the printed newspaper industry is doomed, and will be missed by those of us that remember newspapers in their heyday, they are being replaced by good substitutes in the form of blogs, social networks like Facebook and Twitter, online news gathering by various groups, including newspapers, and other electronic forms of communication. People in democracies will continue to have access to independent and often quite accurate, reports on events in their own countries and most other parts of the world.

from The Social Cost of the Decline of Newspapers? Becker

Marty Schwimmer rounds up some of the reaction to Judge Posner.

Judge Posner has seized on what is widely seen as a crisis in the newspaper industry. That crisis has led Rupert Murdoch and Associated Press, in particular, to start waging a public relations war against Google. The difficulty is, if they really don’t want the links (and all the incoming traffic), they can block them quite simply.

Read Danny Sullivan’s thoughtful expose of the threadbare nature of these Emperors’ clothes: esp. here and here.

(ps Of course, here in Australia, you do have to be careful you are not linking to websites that contain infringing content themselves – Cooper v Universal.)

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Upcoming copyright and patent talks

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Ben Fitzpatrick will be giving his highly regarded annual update of patents for IPSANZ on 16 July at 12.15 at the RACV Club in Melbourne.

Details will be available here (in due course).

After talking in Melbourne on 3 August, Dr Gurry will be delivering a speech at the National Press Club in Canberra on 4 August and then

on 6 August, the keynote speech at the Reimagining copyright for the 21st century in Canberra at the National Gallery. In what promises to be an exciting conference, there will also be papers by:

  • Professor Brad Sherman: Key developments in the last 40 years of copyright
    that shape our thinking about the future
    * Professor Sam Ricketson: Copyright and functional products
    * Sophie Goddard SC: Development of copyright by the courts
    * Dr Matthew Rimmer: The role of fair use in creative freedom
    * Associate Professor Melissa de Zwart:The role of copyright in innovation
  • Professor Brad Sherman: Key developments in the last 40 years of copyright that shape our thinking about the future
  • Professor Sam Ricketson: Copyright and functional products
  • Sophie Goddard SC: Development of copyright by the courts
  • Dr Matthew Rimmer: The role of fair use in creative freedom
  • Associate Professor Melissa de Zwart:The role of copyright in innovation

More details from here.

Finally, details about the biennal Copyright Society Symposium on 14 and 15 October 2009 in Sydney are up here.

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Parallel imports and UPC codes

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Marty (The Trademark Blog) extracts from the 11th Circuit’s ruling in Davidoff v CVS, where the parallel importer was found liable for infringement by removing the UPC codes (which, of course, are not put there to detect parallel import leaks, but in case of product recall requirements).

He appends the text of the decision.

Off the top of my head, I don’t think that argument would help Davidoff down here as s 123 operates on consent in respect of ‘similar goods’. The 1994 Act, which never came into force and was repealed by the 1995 Act did make an attempt to deal with quality issues in s , but that ultimately fell be the wayside.

What chance of arguing misleading or deceptive conduct under s 52?

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US patent instructions

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A committee comprised of judges and attorneys has published the National Patent Jury Instructions.

As its name suggests, a set of model instructions for juries in the USA for patent actions.

Apart from when your client might be litigating in lawyer paradise, you never know, you might find some useful ideas – bearing in mind that their law and our law are not exactly the same!

Download from here. Lid dip Patently-O.

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