LAWS3480 - IP: Copyright and Designs

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LAWS3480 - IP: Copyright and Designs

Study Notes

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Topic 1 – Introduction to IP _______________ 1 1.1 The nature of intellectual property 1 1.2 The constitutional basis for IP law 1 1.3 International influences _ 1 Topic 2 – Introduction to Copyright: History and Basic Principles _ 3

2.1 Introduction_____________ 3 2.2 History of Copyright Law 3 2.3 Philosophical Justifications _ 3

Incentives and neoclassical accounts ____________________________________________________________ 3 Natural Rights: Lockean labour theory and personality theories _______________________________________ 4

2.4 Copyright Principles _____________________________________________________________ 4

The concept of the public domain _______________________________________________________________ 4 Copyright as property ________________________________________________________________________ 4 Expression vs. Ideas _________________________________________________________________________ 5

Topic 3 – When Does Copyright Exist? ___ 6 3.1 Originality 6 3.2 The Requirement of Material Form 8 3.3 Territorial Connecting Factors/Qualifications _ 9 3.4 Duration _ 11 Topic 4 – Subject Matter _____ 14

4.1 Part III Works___________________________________________________________________ 14

Literary Works _____________________________________________________________________________ 14 Dramatic Works ___________________________________________________________________________ 16 Musical Works _____________________________________________________________________________ 17 Artistic Works _____________________________________________________________________________ 17

4.2 Part IV Subject Matter ___________________________________________________________ 20

Sound Recordings _________________________________________________________________________ 20 Cinematograph films ________________________________________________________________________ 21 Broadcasts _______________________________________________________________________________ 22 Published Editions _________________________________________________________________________ 23

4.3 Immoral works? ______________________ 23 Topic 5 – Ownership and Exploitation _ 24

5.1 General Ownership Rules for Works _______________________________________________ 24

5.2 Joint Authorship ________________________________________________________________ 24

5.3 Employees and Journalists _______________________________________________________ 26

Employees _______________________________________________________________________________ 26 Journalists ________________________________________________________________________________ 27

5.4 Commissioned works and subject matters __________________________________________ 28

5.5 General Ownership Rules for Films, Sound Recordings, Broadcasts and Published Editions 28

5.6 Crown Copyright _______________________________________________________________ 30

5.7 Exploitation: Assignment and Licensing ____________________________________________ 31

Assignment _______________________________________________________________________________ 31 Licensing _________________________________________________________________________________ 31 Assignment or Licence? _____________________________________________________________________ 32

5.8 Collective Administration of Copyright _____________________________________________ 33

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Topic 6 – Infringement __________________________________________ 34 6.1 Direct Infringement: General principles, causation and objective similarity _ 34

Causal Connection _________________________________________________________________________ 34 Objective Similarity _________________________________________________________________________ 35

6.2 Substantial Part ________________________________ 35 Topic 7 – Economic Rights: the enumerated rights 37

7.1 Reproduction in a Material Form __________________ 37 7.2 Publication of works 37 7.3 Performing works in public _ 38 7.4 Communication of works to the public _ 38 7.5 Adaptation of works _____ 39 7.6 Rental Right _ 39 7.7 Exclusive rights in subject matter other than works 39 7.8 Responsibility: who is the (direct) infringer? 40 Topic 8 – Authorisation of infringement ____________ 41

8.1 Authorisation of acts comprised in the copyright ______ 41 8.2 Intermediary liability_ 42 8.3 Indirect Infringement 43 Topic 9 – Exceptions and Limitations on Copyright __ 44

9.1 Fair Dealing ____________________________________________________________________ 44

Fairness _________________________________________________________________________________ 44 Fair Dealing for the purposes of Research of Study ________________________________________________ 45 Fair Dealing for the purposes of Criticism or Review _______________________________________________ 45 Fair Dealing for Parody or Satire ______________________________________________________________ 46 Fair Dealing for Reporting News _______________________________________________________________ 46 Fair Dealing for Professional Advice and Judicial Proceedings _______________________________________ 47

9.2 Private Copying __________________________________ 47 9.3 Using digital works: exceptions for communicating and using digital works 47 9.4 Artistic Works Exception _ 48 9.5 Public Interest?_____________ 48 9.6 Other miscellaneous free exceptions _ 48 Topic 10 – Other rights of creators and owners ______________ 49

10.1 Moral Rights __________________________________________________________________ 49

Right of Attribution _________________________________________________________________________ 49 Right not to be Falsely Attributed ______________________________________________________________ 50 Right of Integrity ___________________________________________________________________________ 50 Infringement ______________________________________________________________________________ 51 Defences _________________________________________________________________________________ 51 Remedies ________________________________________________________________________________ 51

10.2 Performers’ Protection __________________________________________________________ 52

Anti-bootlegging right _______________________________________________________________________ 52 Economic Rights of Performers _______________________________________________________________ 53 In summary _______________________________________________________________________________ 53

10.3 Hybrid Rights: the droit de suite (or resale royalty) __________________________________ 53

10.4 Traditional Cultural Expressions _________________________________________________ 53

10.5 Anti-Circumvention Rules _______________________________________________________ 53

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Topic 11 – Remedies for Infringement ___________________________________________ 55

11.1 General Introduction ___________________________________________________________ 55

11. 2 Who can sue? ________________________________________________________________ 55

11.4 Interlocutory Injunctions ________________________________________________________ 55

11.7 Permanent Injunctions __________________________________________________________ 55

11.8 Monetary Remedies ____________________________________________________________ 55

11.10 Innocent Infringers ____________________________________________________________ 56

11.11 Groundless Threats ___________________________________________________________ 56

Topic 12 – An introduction to design law _________________________________________ 57

Topic 13 – The Copyright-Design Overlap ________________________________________ 58

13.1 Why is there an overlap between copyright law and designs, and why is it a problem? ____ 58

13.2 What constitutes a ‘corresponding design’? ________________________________________ 58

13.3 Section 77 and the Exclusion of Works of Artistic Craftsmanship ______________________ 59

13.4 The Meaning of ‘applied industrially’ ______________________________________________ 59

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Topic 1 – Introduction to IP

1.1 The nature of intellectual property

 IP is a set of laws that define property rights in intangibles in order to protect the products of human creativity and inventiveness

 Copyright is a law that grants creators (e.g. authors, producers) exclusive (property) rights in their creations 1.2 The constitutional basis for IP law

 IP is a matter of Federal jurisdiction

o Suing over copyright is in the Federal Courts, not the State Courts

 Early authority interpreted this power narrowly: Attorney-General for NSW v Brewery Employees’ Union of NSW (1980) 6 CLR 469 (‘Union Label case’)

o In this case, the Trade Marks Act 1905 provided for registration of “workers’ trade marks” which indicated that the goods were made by an individual Australian worker or members of a trade union.

This part of the Act was challenged as not being supported by s 51(xviii) of the Constitution. The court held that the term ‘trade mark’ as used in s 51(xviii) meant a mark which was the visible symbol of a particular kind of industrial property consisting in the right of a person engaged in trade to distinguish by a special mark goods in which he deals from the goods of other persons. Therefore, the workers’

trade mark did not conform to the concept of a trade mark as used in the Constitution, narrowing and casting doubt on the ambit of Parliament’s legislative power.

 Uncertainties with s 51(xviii) were resolved in Grain Pool of Western Australia v Commonwealth (2000) 202 CLR 479, and now the scope of s 51(xviii) is settled

o In this case, the HCA held that it is within the head of power in s 51(xviii) to determine that there be fresh rights in the nature of copyright, patents of inventions and designs and trade marks, including plant varieties and circuit layouts The boundaries of the power conferred by s 51(xviii) are not to be determined solely by identifying what would have been intellectual property in 1900.

 The external affairs power is also relevant, as IP is often the subject of treaties; hence the power is used for enacting legislation

1.3 International influences

 IP law has long been the subject of a series of international agreements The Berne Convention 1886

 The Berne Convention for the Protection of Literary and Artistic Works seeks to provide an international system of protection for some subject matters recognised in the Australian Copyright Act

 The logic of the Berne Convention rest on two pillars: national treatment and minimum standards

o National treatment is embodied in article 2(1) of the Berne Convention: each member of the Berne Union affords foreign authors the same copyright standards they afford to domestic workers o Minimum standards: the Convention established minimum levels of protection that give authors a

minimum basic level of protection for a minimum term

 The Convention is administered by the World Intellectual Property Organisation (‘WIPO’), covering ‘works’ and films; additionally, the Convention is incorporated into the Agreement on Trade-Related Aspect of Intellectual Property Rights (‘TRIPS’)

Rome Convention 1961

 The Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting

Organisations 1961 provides an international system of protection for so-called ‘neighbouring rights’ in sound Australian Constitution

51 Legislative powers of the Parliament

The Parliament shall, subject to this Constitution, have power to make laws for the peace, order and good government of the Commonwealth with respect to:

…

(xviii) copyrights, patents of invention and designs, and trade marks;

…

(xxix) external affairs.

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2 TRIPS

 The Agreement on Trade-Related Aspect of Intellectual Property Rights is an agreement under the umbrella of the WTO Agreements

o Every member of the WTO must comply with TRIPS

 It incorporates most of the provisions of Berne, and includes some further obligations, particularly on newer technologies and enforcement; covers all copyright and neighbouring rights

o Breaches of TRIPS can be the subject of dispute settlement proceedings in the WTO which may ultimately lead to sanctions

 Introduced the principle of most favoured nation (Article 4): In Country A, authors from Country B must receive the most favourable treatment offered to any other set of foreign authors, e.g. those from Country C

o Can’t do preferential trade deals in IP

 Whilst Berne has set certain kinds of minimum rights that all countries have to have, TRIPS is broader in most senses, in particular with specific protection for computer programs, neighbouring rights and enforcement WIPO Internet Treaties

 In 1996, two new agreements, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty were concluded. The goal of these treaties was to update/supplement copyright law to take account of the rise of digital and network technologies

 Essentially updated Berne Convention and Rome Convention for the digital age

Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired or Otherwise Print Disabled

 First multilateral agreement that obliges signatories to have exceptions to copyright law

 The Treaty came into effect in September 2016, and spurred amendments to Australian law in the form of the Copyright Amendment (Disability and other Access Measures) Act 2017 (Cth)

Bilateral, Regional and Plurilateral Trade Agreements

 IP obligations have become commonplace in bilateral, plurilateral and regional trade agreements

 Bilateral Agreements include:

o US-Australia Free Trade Agreement 2004 o Korea-Australia Free Trade Agreement 2014

o Japan-Australia Economic Partnership Agreement 2014 o China-Australia 2015

 Plurilateral Agreements include:

o Trans-Pacific Partnership Agreement Remedies

 Berne Convention – ICJ only

 TRIPS: inter-state dispute settlement where all WTO members can intervene

 Some bilateral agreements: inter-state dispute settlement (without external rights of intervention), and, in some cases, investor-state dispute settlement

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Topic 2 – Introduction to Copyright: History and Basic Principles

2.1 Introduction

 Copyright is an IP right generally familiar to the community as a body of law affecting the world of art and entertainment by providing financial reward to those who make and distribute literature, art, music and other forms of entertainment

 This area of law also regulates the creation and use of cultural goods, and affects a broad sweep of cultural, commercial, technological and educational activity

2.2 History of Copyright Law

 Copyright as we know it traces back to the Statute of Anne 1710

o This was a statute written to recognise the contributions that authors made, and it granted to the writers of books a copyright term of 14 years that was assignable

o If the author was still alive after 14 years, they could review for another 14; hence for 28 years, authors of books and other literary works had an exclusive right to make copies

 This was quite a limited right, and did not extend to an exclusive right to for instance make the book into a play

 In the 18^th century, when the copyrights started to expire, there were the ‘literary property wars’

o Authors went to court and argued that although there was the Statute of Anne, there was also a common law perpetual right of the author such that people could not just copy their work

 Millar v Taylor: the UK COA held that there is a perpetual common law right, based on the Lockean style of reasoning, i.e. they made it, therefore they own it forever; the statute was merely a sort of regulation

 Donaldson v Beckett: HOL held that there was no common law copyright; if there was a common law copyright, it had been overridden by statute; therefore, after 28 years, copyright lapses and falls into the public domain

 Section 8 of the Copyright Act 1968 (Cth) gives that:

o I.e. The Copyright Act has exclusive jurisdiction over any claims to property in creative works

 In the 19^th century, copyright went from rights in books to a series of rights in art; however, new forms of creative works continued to come up, and the statute has changed over time to incorporate these new technologies

 In 1968, the Copyright Act was enacted, bringing everything together, recognising copyright in film, sound recordings and broadcasts for the first time

2.3 Philosophical Justifications Incentives and neoclassical accounts

 The classic economic incentives rational (utilitarian rational)

o Investment is necessary to create intangibles (literary/art works, or scientific works)

 In the creation of a work, there is time and money spent in the creation of that work o Intangibles are readily duplicated once publicly released

o Copyists can undercut the original creators because they did not make the investment in creation with less sunk cost to recover

 Thus, without copyright, creators won’t recover their investments; this in fact means that creators won’t make the investment in the first place

o Hence, the justification for copyright is to grant creators exclusive rights in the text that they have created so that no one is allowed to print, reproduce, distribute copies, perform the music etc. without the permission of the creators

 This is the basic underlying rationale: copyright creates an incentive to create, an incentive for creators to make the necessary investments

 However, the reality is a much more complex than that:

o Looking at what authors actually get, what tends to happen is that authors get an advance, which varies massively depending on the stage of the author’s writing career

o Actually looking at the money that can be attributed to copyright directly (royalties and money under statutory licences), it is not even all of that income that you can see from creative work

Copyright Act 1968 (Cth) 8 Copyright not to subsist except by virtue of this Act

Subject to section 8A, copyright does not subsist otherwise than by virtue of this Act.

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 Therefore, we have to question whether this kind of rationale is incentivising people to actually create

 Taking this incentive argument further:

o Copyright lasts for the author’s life plus 70 years; does the copyright subsisting after the death of an author still providing an incentive for creative?

 Exclusive rights are therefore given to encourage people to create, but have to question whether these rights actually incentivise people

o Additionally, the commercial life of music, books, artistic works and films do not exceed 5-10 years

 Hence, copyright is not just about incentives; it is also about wanting to reward creators, and recognise that there is a connection between them and their work

Natural Rights: Lockean labour theory and personality theories

 Two broad rationales that emphasise the importance of recognising the creator

o One is based on the concept of the work that the author puts in, and hence they are entitled to the fruits of that labour

 This argument is often linked to John Locke’s treatise on government, and in particular his idea that you have property in the thing, then you are entitled to the property rights in the fruit of the labour

o The second set of theories is a set of ideas associated with philosophers like Hegel and Kant, expressing the idea that when an artist creates a work, the artist is putting something of himself/herself into it; it is an emanation of the artist’s personality or spirit

 Hence, the artist should have rights of refusal 2.4 Copyright Principles

The concept of the public domain

 When something is out of copyright, it falls into or becomes part of the public domain, meaning people can use it; the public domain is the sum of things not protected by copyright

 The case of Victoria Park Racing and Recreation Grounds Co Ltd v Taylor illustrates the role of the public domain in structuring legal reasoning

o In this case, the owner of a land next to a racecourse from which it was possible to overlook the course. The owner permitted for a fee an employee of a broadcaster to use the platform to broadcast description of races and results. The racecourse proprietor sought an injunction to retrain this use of the adjoining land. The court held that there is no principle that prevents people from describing what they see. It was further held that a ‘spectacle’ cannot be owned.

Copyright as property

 Copyright is a proprietary right; it is a right of exclusion, to exclude other people from your property o It is an intangible right to make copies of the work

 Like other property, it is transmissible; it can be sold by assignment

 With copyright works there are usually two associated property rights:

o The rights to the original work in its tangible form, such as a manuscript; and o The copyright, the intangible right to make copies of the work

 I.e. the property in the thing in terms of copyright is the words and the ideas and the characters, not the physical book

 The case of In re Dickens; Dickens v Hawkley illustrates the complication when different parties hold the two different kind of property rights

o In this case, Charles Dickens bequeathed his ‘private papers’ to his sister-in-law, but the residue, expressly including Dickens’ ‘copyrights’, went to his children. When the right to publish an

unpublished work was eventually sold, the question arose as to who was entitled to the proceeds: the beneficiaries claiming through the residue of Dickens’ estate (i.e. through his children), or those claiming through the will of the sister-in-law. The court distinguished between physical possession and property in the copy, and held that the bequest to the sister-in-law of the manuscript did not include the incorporeal right of Charles Dickens in the composition, that right passing under the gift of his will of his residuary estate.

 Note: while the result was that copyright in the work belonged to the residuary estate of Charles Dickens, publication was only possible by use of the physical manuscript. Therefore, the Court of Appeal determined that proceeds of sale of the copyright should be equally divided between the two claiming parties.

Copyright Act 1968 (Cth) 196 Assignments and licences in respect of copyright

(1) Copyright is personal property and, subject to this section, is transmissible by assignment, by will and by devolution by operation of law.

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 The case of Pacific Film Laboratories Pty Ltd v Federal Commissioner of Taxation confirms the view that property in the chattel and copyright are separate rights

o In this case, the taxpayer company received film from customers, developed the film and supplied the prints to customers for payment. The taxpayer company argued that because copyright in the print was held by the customer, the company was not selling goods to the customer and thus not liable to pay the tax in question. The court confirmed that the property in a chattel may be in one person and copyright in another. The court held that such an arrangement was an agreement for the sale of the print, and hence there was no property in the owner of the copyright in the print viewed as chattel at any time before the delivery of the print to the owner of the copyright, at which time property should pass. Therefore, the delivery of the prints by Pacific Film Laboratories was a sale, and hence rightly included in an assessment by the respondent Commissioner for taxation purposes.

Expression vs. Ideas

 Ideas and facts are free for all to use, and only the expression (fixed in some material form) is capable of receiving protection

 The idea/expression dichotomy is embodied in a number of treaty provisions, including Art 2 of the WIPO Copyright Treaty and Art 9 of the TRIPS Agreement, which both state that ‘[c]opyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such’

 The case of Hollinrake v Truswell represents an attempt to use copyright to protect a ‘procedure’ or ‘method of operation’, an attempt that was rejected by the court using the idea/expression dichotomy

o In this case, copyright protection was sought for a chart that was a cardboard device used by tailors to accurately cut and measure inner sleeves. The court held that the chart was not a literary product, but an apparatus for the use of which certain words and figures must necessarily be inscribed upon it. No copyright protection is afforded for words and figures inscribed on and necessarily forming part of an apparatus or tool. Copyright does not extend to ideas, or schemes, or systems; it is confined to their expression; and if their expression is not copied then the copied is not infringed. In this case, the defendant has not copied more than the plaintiff’s method of measuring, and this was an attempt to use the Copyright Act for a purpose to which it is not properly applicable.

 A significant modern Australian case touching on the distinction between facts and expression is IceTV Pty Ltd v Nine Network Australia Pty Ltd

o In this case, IceTV produced an electronic program guide (EPG) suitable for digital personal video recorders. Whereas Nine Network employees would generate a ‘Weekly Schedule’ from its internal database that showed in a table the time, title, assorted information and synopsis of programs, IceTV arranged from someone to watch TV for a period of time and record what programs were shown and when. IceTV employees using the published TV guide from Nine’s Weekly Schedule then updated this information. Nine alleged that the copying of time and title information to update the EPG

infringed copyright in Nine’s Weekly Schedule. The court held that copyright does not protect facts or information, just 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. Copyright does not confer a monopoly on facts or information because to do so would impeded 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. Although copyright does not protect facts however, it does protect work comprised of factual material, and where facts can be expressed in a multitude of ways, it will be infringement to copy a writer’s particular choice of

expression.

 Another Federal Court case in which the idea/expression dichotomy is evoked is the case of Victoria v Pacific Technologies (Australia) Pty Ltd (No 2)

o In this case, Pacific Technologies claimed to be the owner of copyright in a phrase (‘Help Words’) to be displayed on the outside of a taxi when a driver duress alarm was activated by the driver. Victoria made regulations requiring taxi-owners/licence holders to fit duress alarms using the phrase. Pacific Technologies sought equitable remuneration for use of the phrase, and the issue was whether copyright subsisted in the phrase. The court rejected the claim, in part on the basis that the phrase was too ‘insubstantial’ to constitute a copyright work, but also invoking the idea/expression dichotomy.

The court reinforced the notion that copyright is concerned with the protection of the expression of ideas and not with the protection of ideas, where there has been 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. The Help Words do not form a literary expression;

they do no more than state an idea. The expression is inseparable from the fundamental idea that is being conveyed by the words, and where 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.

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Topic 3 – When Does Copyright Exist?

 There are two kinds of copyright subject matter:

o Part III “works”: literary, dramatic, musical and artistic works

o Part IV “other subject matter”: cinematograph films, sound recordings, broadcasts and published editions

 The rights granted, the rules relating to initial ownership, and rule relating to infringement are different for Part IV subject matters

 The key criteria for subsistence of copyright are summarised in the below table

 For Part III works:

o A work must be original to be protected

o The author must be a qualified person at the time the work was made/published o The work is in material form, i.e. it is physically embodied in some way

o Copyright rights have not expired due to time since the author’s death or publication 3.1 Originality

 Originality is critical in copyright, playing three major roles in copyright law:

o It is a threshold requirement for subsistence of copyright in Part III works

o It is relevant to determination of who is an author, which in turn determines ownership o It is relevant to analysing infringement

 When a work has not been exactly copied, the court will have to decide whether a ‘substantial part’ of the work has been taken, taking into account the originality of the part copied

 However, what does it mean to say a work is original? Is it creativity, or effort, or some other feature of a work that makes something original?

 There is no definition of originality in the Act, and hence a definition has developed through case law

 Originality is not referring to creativity, i.e. creativity is not the standard for originality; the work just needs to originate from the author, and that is enough: University of London Press Ltd v University of Tutorial Press Ltd

o In this case, a university copied a series of maths problems and their worked solutions. The court held that the Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in the case of ‘literary work’, with the expression of thought in print or writing. The originality that is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work – that it should originate from the author.

Copyright Act 1968 (Cth) 32 Original works in which copyright subsists

(1) Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished…

(2) Subject to this Act, where an original literary, dramatic, musical or artistic work has been published:

(a) copyright subsists in the work;…

LAWS3480 - IP: Copyright and Designs