COPYRIGHT AND DESIGNS NOTES

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COPYRIGHT AND DESIGNS NOTES

The European Court of Justice considered Art 3.1 of the Directive, which effectively implements Art 10(2) of the TRIPS Agreement by providing that ‘databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation shall be protected as such by copyright’. The Court held:

o the criterion of originality will be satisfied with respect to a database where, through the selection or arrangement of data, the author ‘mak[es] free and creative choices’ or stamps the data with his ‘personal touch’;

o the criterion of originality will not be satisfied when the setting up of the database is

‘dictated by technical considerations, rules or constraints which leave no room for creative freedom’;

o the expenditure of labour and skill on the part of the author of a database will not justify its protection by copyright;

o it is irrelevant whether the selection or arrangement of the data ‘includes the addition of important significance to that data’.⁴⁵

[2.2] PROTECTED SUBJECT MATTER [2.2.1] Generally

• Works: Part III of the Act deals with original literary, dramatic, musical or artistic works.

• Subject-matter other than works: Part IV of the Act deals with subject-matter other than works, eg recordings, films, broadcasts and published editions. Such subject-matter is often more commercially valuable than the work itself, but works generally provide the basis for the creation of other subject-matter.

• Performances: Note that Part XIA of the Act provides for protection of performances, but not through the grant of copyright.

[2.2.2] Original literary works

• ‘Literary work’:

o The expression ‘literary work’ obviously comprehends such things as novels, short stories, poems and essays.

o A literary work ‘typically will be expressed in some form of notation or code (as in the case of computer programs) and … the information contained within [it] will be comprehended by a human addressee through the process of reading’: Elwood Clothing (Lindgren, Goldberg and Bennett JJ).

Copyright Act 1968 (Cth) s 10(1) 10 Interpretation

(1) In this Act, unless the contrary intention appears:

[…]

literary work includes:

(a) a table, or compilation, expressed in words, figures or symbols; and

45 The decision of the European Court of Justice is consonant with the decision of the FCA(A) in Telephone Directories Company.

(5)

(b) a computer program or compilation of computer programs.

[…]

Compilations

• Compilations: Compilations are one of the types of subject-matter protected as literary works.

Compilations are dealt with at [2.1.2].

Words, titles, headlines and short phrases

Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd*

FCA 2010 FACTS

• Background:

o A’s publication: A was the publisher of the AFR.

o R’s publication: R provided a service known as ‘ABIX’, which involved the provision to subscribers of abstracts of articles published in various newspapers and magazines.

The abstracts included, in respect of each article, the headline, by-line and a short summary.

• Proceedings:

o Action:

- A brought proceedings for breach of copyright. The success of A’s claim required acceptance of the proposition that the individual headlines of the AFR articles were subject to copyright protection.

- A selected ten headlines, not relying on them as representative but instead claiming that each of them was a literary work in which copyright subsisted. It did not, however, adduce any evidence of the skill and labour that went into producing those ten headlines, instead relying on evidence of a general nature from experienced members of the AFR’s editorial staff.

- Some of the headlines were simply concise statements of the contents of the relevant article (eg ‘Investors warned on super charges’), others contained puns (eg ‘Blackout probe sheds little light’).

o Argued:

- A argued that: (1) its headlines, being original works, were subject to copyright protection; (2) previous authorities denying protection to titles denied such protection on the basis of a perceived lack of originality; and (3) the public policy considerations advanced by R did not support its position as R was not in the position of a researcher or academic wishing to cite an article or an author wishing to critique a work.

- R argued that: (1) the headlines were too insubstantial to qualify for copyright protection; and (2) an important public policy consideration weighed in favour of the exclusion of headlines from copyright protection, namely the need to identify works by name for the purposes of identification, including in bibliographic and reference systems. The fair dealing provisions of the Act supported R’s argument: ‘sufficient acknowledgement’ requires identification of the work by its title, so the Act proceeds on the footing that identification of a work by its title does not constitute infringement.

ISSUE

• Subsistence of copyright — protected subject matter — works — literary works — de minimis requirement.

HELD

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On originality

• More than authorship is required: IceTV recognises that ‘more than mere authorship’ is required for a work to be ‘original’ in the requisite sense. Bennett J referred to the judgment of Isaacs J in Sands & McDougall Proprietary Ltd stating that this requirement can be justified by reference to the fact that, the expression ‘author’ connoting some level of originality, the express use of the term ‘original’ in the Act must carry some additional meaning.

• The connection to ‘works’: The requirement that a copyright work must involve ‘more than mere authorship … may be another way of saying that it must be not only original in the sense of authorship but also a work’.

On works

• ‘Literary work’ — the definition in Hollinrake:

o The definition in Hollinrake: There is general — though not universal — acceptance of the proposition that a literary work is ‘one that gives “information, instruction or pleasure in the form of literary enjoyment”’.⁴⁶

o Qualification: It may be that a work has to fall within the Hollinrake definition to constitute a ‘literary work’; but it does not follow from the mere fact that a work falls within the definition that that work constitutes a ‘literary work’. In other words, the Hollinrake definition provides necessary, but not sufficient, criteria for the existence of a literary work.

• ‘Work’ and the de minimis requirement:

o ‘Work’: ‘Work’ is defined in the Macquarie Dictionary as ‘that on which exertion or labour is expended; the product of exertion, labour or activity’.

o Skill and labour: Whether something constitutes a work may be apparent on the face of the thing or may require an assessment of the skill and labour involved.

o De minimis requirement: Certain original writings — whether words or phrases — will simply not reach the level of constituting a ‘work’, regardless of literary merit. This is because such writings do not, either qualitatively or quantitatively,⁴⁷ justify that description.

• Precise identification of work: P must precisely identify the work it claims is subject to copyright protection.

On headlines

• ‘Headline’: A headline functions as the title of an article. The title of a work constitutes

‘meta-information about the work’. It does not form part of the work.

• Historical trend: The historical trend has been to deny headlines copyright protection, even where they ‘extend to the clever use of words to convey more than a simple description of the subject matter’.

46 This definition of ‘literary work’ was used as the basis on which to hold that no copyright subsisted in the word ‘Exxon’:

though it was original and created after considerable research and labour, it was not a ‘literary’ work because it was not intended to afford information and instruction or pleasure in the form of literary enjoyment: see Exxon Corporation.

47 Bennett J made it clear that the length of a work was not the only relevant consideration: ‘[A] deal of skill and effort can into producing, for example, a single line of poetry’.

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• General rule: Headlines are, generally speaking, too insubstantial and too short to qualify as literary works. They normally do not involve the application of a sufficient ‘degree of judgment, effort and skill’ required to constitute literary works.

• Caveat: Bennett J noted that the evidence in a particular case might establish that a particular headline or title is ‘of so extensive and of such a significant character’ that it warrants

copyright protection.

In the present case

• On headline-writing: Bennett J accepted the generalised evidence adduced by A that writing headlines required an understanding of current issues, a good sense of the style of the relevant publication, awareness of the legal implications of headlines and, in some cases, skill and experience. Her Honour further accepted that some headlines ‘have [a] subtle element of surprise, erudition, humour or charm’. She also accepted evidence adduced at trial that it occasionally took editorial staff half an hour to ‘find the right headline’.

• On the public interest: Bennett J accepted R’s public policy argument. ‘In my view, to afford published headlines, as a class, copyright protection as literary works would tip the balance too far against the interest of the public in the freedom to refer to or be referred to articles by their headings’.

• On the headlines in issue: The ten headlines in issue, even the slightly less prosaic ones, did not constitute literary works. The evidence A led of the general practice of the AFR in determining headlines was insufficient to overcome the general rule that copyright does not subsist in headings. No evidence relating directly to the composition of the headlines in issue was led.

[Bennett J dismissed A’s application. Note that Bennett J also considered other claims made by A, as well as defences raised by R in the event that A succeeded on the issue of subsistence.]

Victoria v Pacific Technologies

FCA 2009 FACTS

• Background:

o Help Words: R developed a driver duress alarm (which was subject to a patent). The alarm was capable of displaying, inter alia, the following message: ‘Help-Help-Driver- in-Danger-Call-Police-Ph.000’.

o Taxi Regulations: The Victorian Government passed a set of Regulations requiring taxi licence holders to fit their cabs with driver duress alarms. Specifications made under those Regulations provided that the alarms had to be programmed to display the Help Words.

o Tribunal proceedings: R sought reasonable remuneration from A for use of the Help Words in the Copyright Tribunal of Australia.

• Proceedings: A sought a declaration that the Help Words did not constitute an original literary work within the meaning of the Act. A argued that: (1) the Help Words were ‘too trivial, ordinary, insubstantial and commonplace to constitute an original literary work’; and (2) the Help Words constituted an idea and were therefore not protectable as a work.

ISSUE

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• Subsistence of copyright — protected subject matter — works — literary works — de minimis requirement.

HELD

• ‘Work’: Though a literary work need not be of high quality or style, ‘there must be some work involved in the 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’. (Emphasis added.)

• De minimis requirement:

o ‘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’.

o ‘Short phrases, single sentences and the like are too insubstantial or too short to quality as a literary work for the purposes of [the Act]’. This may be so notwithstanding that skill and labour has been expended in their creation.

• Examples of titles etc. denied protection: Emmett J provided the following examples of titles, slogans and phrases denied protection by courts:

o ‘Belgravia’ (magazine title);

o ‘Where There’s a Will There’s a Way’ (play title);

o ‘The Licenced Victualler’s Mirror’ (newspaper article title);

o ‘The Lawyer’s Diary’ (title of a — presumably published — diary);

o ‘Church and State’ (newspaper article title);

o ‘Splendid Misery’ (novel title);

o ‘Opportunity Knocks’ (TV program title);

o ‘Miss World’ (beauty pageant title);

o ‘Doc Martens’;

o ‘Exxon’.

• Is it a work? — Relevant considerations: Courts will take into account (1) the kind of skill and labour expended, and (2) the nature of copyright protection and its underlying policy.

• In the present case: The Help Words did no more than state an idea. The expression was

‘inseparable from the fundamental idea that [was] being conveyed by the words’ and, accordingly, the expression ‘form[ed] part of the idea and [was] not entitled to protection’.

Emmett J added that it would have been ‘inappropriate’, for policy reasons, to restrict the availability for use of the Help Words.

[Emmett J granted the declaration sought.]

Computer programs

• History: Prior to legislative amendments made in 1984, it was unclear whether computer programs were capable of constituting ‘literary works’. In 1983, Beaumont J of the FCA in Computer Edge held that computer programs were not protected under the Act. His Honour’s decision was reversed by the FCA(A), whose decision was in turn reversed by the HCA.

Copyright Act 1968 (Cth) s 10(1) 10 Interpretation

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(1) In this Act, unless the contrary intention appears:

[…]

computer program means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

[…]

Literary work includes:

[…]

(b) a computer program or compilation of computer programs.

[…]

• Previous definition of ‘computer program’: The definition of ‘computer program’, for which the current definition was substituted in 2000, once read: ‘an expression, in any language, code or notation, of a set of instructions (whether with or without related information), intended either directly⁴⁸ or after either or both of the following: (a) conversion into another language, code or notation; (b) reproduction in a different material form; to cause a device having digital information processing capabilities to perform a particular function’.

TRIPS Agreement, Art 10(1)

Computer programs, whether in source or object code,⁴⁹ shall be protected as literary works under the Berne Convention (1971).

• History of the interpretation of ‘computer program’:

o In Computer Edge, the HCA did not consider that programs in object code fell within the (old) definition. Gibbs CJ wrote that the ROMs ‘did not in any way express or render the source programs; rather the ROMs were the means of putting into action and making effective the instructions written in the source programs’. The electrical impulses in the Apple ROMs could not be described as expressions in a language, code or notation, though they could be described in binary and hexadecimal notation.

o One commentator stated, of the HCA’s decision in Computer Edge, that it was inconsistent with the explanatory memorandum to the amendment, which stated that the purpose of the definition was to ‘cover … compiled or assembled machine codes’.

o In Star Micronics the FCA held that an object code stored in a silicon chip ROM enjoyed protection as a literary work, semble the HCA in Autodesk.

Data Access Corporation v Powerflex Services Pty Ltd*

HCA 1999 FACTS

• Background:

48 The word ‘directly’ suggests that the provision was intended to apply to object code. But see Computer Edge.

49 When a programmer creates a computer program, he or she types a desired sequence of statements in a programming language into a text editor or programming tool. The text file is said to contain the ‘source code’, which code can be edited and improved. The source code is run through a ‘compiler’, which turns the code into an ‘object code’ (or ‘machine code’), ie a code that can be run on a computer’s processor. The object code is embodied in the processor ‘in such a way that … when electrical power is applied, there is generated the sequence of electrical impulses which cause the computer to take the action which the program is designed to achieve: Computer Edge (Gibbs CJ). The source code cannot be used directly in a computer. A computer cannot ‘understand’ source code; it can only understand object code (which can be represented in binary). The converse is true of humans (well, I suppose a human genius could read binary, albeit painstakingly slowly). Object codes are hardware-specific.

COPYRIGHT AND DESIGNS NOTES

COPYRIGHT AND DESIGNS NOTES

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