Intellectual Property
IP in the Digital Age
Holly Raiche
Session Outline
What is Intellectual Property
How Is Intellectual Property Protected
Copyright
•Components
•What is Protected
•What is Not Protected
Content in a Digital Age: What is/should be
protected
•User Generated content
•software
Who is Liable: The role of the ISP (from
Moorhouse to iiNET)
Intellectual Property
What is Intellectual Property
•Not ‘real’ property
•Gives the creator/owner
•Exclusive economic rights
•To exploit – do certain things –
•In relation to the (creative) work
•For a limited time
Intellectual Property
What is Intellectual Property – Categories
Designs
Visual appearance or design of manufactured
article (shape, pattern, ornamentation)
Designs Act 2003
Breach of confidence
Information must have quality of confidence,
imparted in circumstances importing an
obligation of confidence and unauthorised use of
the information to the detriment of the party
communicating it
Common law (contract) or equity
Intellectual Property
What is Intellectual Property – Categories
Patents
New invention as a ‘manner of manufacture’ that
is novel and inventive
Patents Act 1990
Trade Marks
A sign (letter, word, name, signature, brand,
label etc) used to distinguish goods or services
dealt with in the course of trade by a person from
goods or services so dealt with or provided by
any other person.
Trade Marks Act 1995
Part IV Competition and Consumer Act 2010
Tort of Passing Off
Intellectual Property
Domain Names and Trade Mark: The Issue
Trade Mark – relates to a specific
business/service – often at a specific
geographic location
Domain Name – is global
‘Cybersquatting’
BT, Virgin, Marks & Spenders et anor v
One in A Million [1998] EWCA Civ 1272 (23
July 1998)
CSR Ltd v Resource Capital Aust P/L [2003]
FCA 279
Intellectual Property
ICANN: Uniform Domain Name Dispute
Resolution
Available under all gTLD registrars
When
•a domain name is identical or confusingly similar to a trade
or service mark in which complainant has rights
•The holder has no legitimate rights in the domain name
•name registered in bad faith - acquired for primary purpose
of selling or otherwise transferring the name to the rights
holder or preventing the rights holder from obtaining the
name
Settlement processes set out including
arbitrators (including WIPO)
Intellectual Property
Domain Names and Hyper-linking:
hyper-linking vs ‘deep’ hyper-linking
Shetland Times – with Shetland News Web
– exclusively Internet service linked directly
to Shetland Times stories (deep hyperlinking)
Ticketmaster vs Microsoft – Microsoft deep
hyper-linked to Ticketmaster site Seattle
Sidewalk – bypassing home page
information/advertising
Intellectual Property
Copyright – History
Stationer’s company 1557
Company members (printers and booksellers)
could purchase a manuscript and, once
purchased, had a monopoly on printing,
publishing and selling the manuscript (and they
could trade the right)
Statute of Anne 1709
Gave the author of manuscripts the exclusive
right of reproduction (for existing works not
already purchased by a printer/bookseller – for
21 years and for new works – 14 years).
COPYRIGHT
Elements (Copyright Act 1968)
•Creative
•literary, dramatic, musical and artistic plus other
works (later, sound recordings, films, radio/TV
broadcasts etc)
•In a material form (not just an idea or
information)
•Original
COPYRIGHT
What is protected
Original works
• literary,
•dramatic,
•musical
• artistic
In subject matter other than works
•Sound recordings
•Cinematograph films
•Television/sound broadcasts
•Published editions of works
COPYRIGHT
Copyright Holder Rights
Economic
•Reproduce in material form
•Publish
•Perform/communicate to the public
•Make adaption
•Duration – generally 70 years of death of creator
or if not published in creator lifetime, 70 years
after made public
Moral
•Right of attribution
•Right against false attribution of authorship
•Right of integrity of authorship
•Duration – author’s lifetime
COPYRIGHT
Copyright as a balance between public access to
creative endeavour and reward to the creator for
their work
What is not protected: Public Right of Access
•material that is out of copyright
•Fair dealing •Research or study
•Criticism or review
•Parody or satire
•News reporting
•Professional advice
•10% rule – single copy of chapter/publication
•computer exceptions
•Library/educational institution/government
copying
COPYRIGHT
Fair use (US): As a doctrine – in legislation
– looks at:
•the purpose and character of the use,
including whether such use is of a
commercial nature or is for nonprofit
educational purposes;
•the nature of the copyrighted work;
•the amount and substantiality of the
portion used in relation to the
copyrighted work as a whole; and
•the effect of the use upon the potential
market for or value of the copyrighted
work.
COPYRIGHT
Digital Content: Computer Programs
The Apple Case: Is the software a literary work (can
be in readable form as source code) but their
purpose is to control the execution of a machine –
when converted into machine executable form
The Apple Case ((1968) 6 IPR 1 (HC judgment)
Of itself however, and regardless of how widely one
construes the phrase, the arrangement (or series) of
electrons or electrical charges in the silicon chip does not
constitute a "literary work". It is not written. It is not in a
comprehensible language. It cannot be read. It cannot
even be seen. Nor is it designed or produced to be read or
seen. It is, and was designed and produced to be, an
attribute of a functioning part of an operating machine.
COPYRIGHT
Computer Programs: Copyright Act 1968
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:
(a)a table, or compilation, expressed in words, figures or
symbols; and
(b)a computer program or compilation of computer
programs.
When is a computer program copied? – is it when it
is reverse engineered and elements of the program
used in the alleged copy?
Powerflex Services P/L v Data Access Corporation
COPYRIGHT
The Digital Agenda Act 2000
(context: US Digital Millennium Copyright Act 1998 and
WIPO Copyright Treaty)
Has the balance shifted from prohibition on unauthorised
copying to unauthorised access?
New right:
to communicate to the public - make available
online or electronically transmit (over a path or a
combination of paths, provided over a material
substance or otherwise) a work or other subject
matter
Make available online – public may access from a
place and time individually chosen by the individual
(could be one member of the public at a time –
Telstra v APRA)
COPYRIGHT
Digital Agenda Act 2000 (cont’d)
NB: Shift is to give copyright holders the decision on
what is put online (and terms of access on line) –
regardless of the purpose of individual access
Prohibition on circumvention service device/service
(to get around technological access control) except
for permitted purpose (fair dealing is not a permitted
purpose)
Exception – browsing and caching(??)
COPYRIGHT
Protection of Digital Content: Computer
Games
Galaxy Electronics v Sega [1997] FCA 403
Protection of computer generated moving
images/sounds constitute a cinematograph
film? (not a computer program)
Def cinematographic film – def includes
visual images/sounds – aggregated images
embodied in…
COPYRIGHT
User Generated content
•What is it?
•Who is the author? Who is the owner?
(noting it is estimated 70% of material on YouTube is
made up of unauthorised copyright material)
•Is it direct infringement – reproduction/publication or more
than a sample of content
•Was it fair use/fair dealing
•Was a substantial part of the work used
•For what purpose
Example: Mash-up presidential candidates repeating the
word ‘change’ with the David Bowie song Changes
COPYRIGHT - Authorisation
UNSW v Moorhouse [1975] HCA 26
Held that the University had ‘authorised’ (can mean
sanction, approve, countenance) through s. 36(1)- the
reproduction of copyright work- through provision of open
shelves of books, copying machines (even with notices)
Telstra v APRA (Music on Hold) 146 ALR
649 (1997)
Music played in 3 circumstances
•Music supplied by unknown person
•Music by Telecom service centre
•Music by special Telstra service
Was held to be a broadcast
Was held to be a broadcast to the copyright owner’s
public (even if each individual heard the music alone)
COPYRIGHT - Authorisation
Section 36 Infringement by doing acts comprised in the copyright
(1)Subject to this Act, the copyright in a literary, dramatic, musical or
artistic work is infringed by a person who, not being the owner of the
copyright, and without the licence of the owner of the copyright, does in
Australia, or authorizes the doing in Australia of, any act comprised in
the copyright.
(2)(1A) In determining, for the purposes of subsection (1), whether or
not a person has authorised the doing in Australia of any act comprised
in the copyright in a work, without the licence of the owner of the
copyright, the matters that must be taken into account include the
following:
(a) the extent (if any) of the person’s power to prevent the of the
act concerned
(b) the nature of any relationship existing between the person and
the person who did the act concerned;
(c) whether the person took any reasonable steps to prevent or
avoid the doing of the act, including whether the person
complied with any relevant industry codes of practice.
COPYRIGHT – US Safe Harbour
Online Copyright Infringement Liability Act – Safe Harbour
Provisions of 1998 Digital Millennium Copyright Act –
Who is Covered?
(A) As used in subsection (a), the term "service provider"
means an entity offering the transmission, routing, or
providing of connections for digital online
communications, between or among points specified by a
user, of material of the user’s choosing, without
modification to the content of the material as sent or
received.
(B) As used in this section, other than subsection (a), the
term "service provider" means a provider of online
services or network access, or the operator of facilities
therefore, and includes an entity described in
subparagraph (A).
COPYRIGHT –US Safe Harbour
US Safe Harbor Scheme (Extract)
Information Residing Systems or Networks at Discretion of Users
In general.—
A service provider shall not be liable for monetary relief, or, except
as provided in subsection (j), for injunctive or other equitable relief,
for infringement of copyright by reason of the storage at the direction
of a user of material that resides on a system or network controlled
or operated by or for the service provider, if the service provider—
• in the absence of such actual knowledge, is not aware of facts or
circumstances from which infringing activity is apparent; or
• upon obtaining such knowledge or awareness, acts expeditiously
to remove, or disable access to, the material;
•does not receive a financial benefit directly attributable to the
infringing activity, in a case in which the service provider has the
right and ability to control such activity; and
•upon notification of claimed infringement as described in
paragraph (3), responds expeditiously to remove, or disable access
to, the material that is claimed to be infringing or to be the subject
of infringing activity.
COPYRIGHT – US Safe Harbour
Viacom v YouTube (owned by Google)
YouTube obtained summary judgment.. Found
YouTube did not have actual knowledge of what video
clips were being downloaded, and when given a
HUGE take-down list of infringing sites, had done so.
•Was no direct infringement – users clicking on
hyperlinks means no act on Google’s part
•Was no pubic display when thumbnail of video shown
next to hyperlink
•No reproduction even though Google converts video
into Flash – again no purposeful act by Google…
•Real issue – who monitors and who polices?
COPYRIGHT – US Safe Harbour
Viacom v YouTube
Over the past decade, the emergence of broadband
networks, Internet protocol, and inexpensive wireless
network has revolutionized the way Americans inform and
entertain themselves. Millions have seized the opportunities
digital technology provides to obtain creative works and to
express themselves creatively. Entrepreneurs have made
fortunes providing the networks, the tools and the creative
works that have fueled this revolution. But these same
innovations have also been misused to fuel an explosion of
copyright infringement by exploiting the inexpensive
duplication and distribution made possible by digital
technology. Some entities, rather than taking the lawful path
of building businesses that respect intellectual property rights
on the Internet, have sought their fortunes by brazenly
exploiting the infringing potential of digital technology.
COPYRIGHT – Authorisation
S 101 Infringement by doing acts comprised in copyright
(1)Subject to this Act, a copyright subsisting by virtue of
this Part is infringed by a person who, not being the owner
of the copyright, and without the licence of the owner of the
copyright, does in Australia, or authorises the doing in
Australia of, any act comprised in the copyright
(1A) In determining, for the purposes of subsection
(1), whether or not a person has authorised the doing in
Australia of any act comprised in a copyright subsisting by
virtue of this Part without the licence of the owner of the
copyright, the matters that must be taken into account
include the following:
(a) of the owner of the copyright, the matters that
must be taken into account include the following:
(b) the nature of any relationship existing between
the person and the person who did the act concerned;
COPYRIGHT – Authorisation
(c) whether the person took any other reasonable
steps to prevent or avoid the doing of the act, including
whether the person complied with any relevant
industry codes of practice.;
(2) The next two succeeding sections do not affect the
generality of the last preceding subsection.
(3) Subsection (1) applies in relation to an act done in
relation to a sound recording whether the act is done
by directly or indirectly making use of a record
embodying the recording.
(4) Subsection (1) applies in relation to an act done in
relation to a television broadcast or a sound broadcast
whether the act is done by the reception of the
broadcast or by making use of any article or thing in
which the visual images and sounds comprised in the
broadcast have been embodied.
COPYRIGHT – Safe Harbour
s. 39B A person (including a carrier or carriage service
provider) who provides facilities for making, or facilitating
the making of, a communication is not taken to have
authorised any infringement of copyright in a work merely
because another person uses the facilities so provided to
do something the right to do which is included in the
copyright. (Also s. 1112E – applies to audio visual)
The Attorney-General’s Dept has proposed a wider definition of
Carriage Service Provider for the purposes of the Copyright Act
– safe harbour scheme: to go beyond providers of access to
public networks supplied to the public to include:
•Online search engine
•Bulletin boards
•ISPs providing P2P
•Providers of messaging services, chat etc
COPYRIGHT – Safe Harbour
Reliance on ‘mere facilities’ provider
Universal Music v Sharman [2005] FCA 1242
Defendants operated peer-to-peer (P2P) Kazaa file
sharing system
On authorisation – met tests in s. 101
On s. 112E facilities – broad definition of facilities but
Protection under s. 39B – met
Cooper v Universal Music [2006] FCAFC 187
Cooper as owner and provider of website ‘mp3s4free.net’
•On authorisation – met tests in s. 101
•Protection under s. 112E – met
COPYRIGHT – iiNET
Roadshow Films (AFACT) v iiNET: Facts:
•Technology used was P2P software – BitTorrent protocol
(Users with software in network are able to copy file
content fro others in the network and make copied file
available to others in the network)
•AUP allowed iiNET to cancel service for illegal or
unusual use
•AFACT employees subscribed to iiNET and joined
BitTorrent ‘swarm’ – and copied copyright material
•AFACT also used DTecNet software to collect evidence
•AFACT provided IP addresses to iiNET
•Accounts not terminated
COPYRIGHT – iiNET
Roadshow Films (AFACT) v iiNET [2010] FCA
•Justice Cowdrey
•Didn’t use ‘authorisation’ tests
•Instead, could be no authorisation unless iiNET
proovided the ‘means’ of infringement
•Broadband provided by iiNET merely a precondition to
the means - BitTorrent was the means
As obiter:
Power to prevent: could have passed on
notices/terminated service –ineffectual step not a power
to stop
Applicants could have pursued the infringers
Wasn’t financial benefit toiiNET
Even if is power and knowledge, is not ipso facto
authorisation
COPYRIGHT – Safe Harbour
AFACT v iiNET [2011] FCAFC 23
•On authorisation: All three rejected the ‘means
of infringement’ test and affirmed the
authorisation tests
•Power to prevent – with varying stress, all said
iiNET had contractual and technical power to
prevent infringement
•On relationship – was a contractual relationship
between iiNET and its customers, covered by
the AUP
•Reasonable approach to prevent: - different
approach by each of the judges
COPYRIGHT – Safe Harbour
AFACT v iiNET [2011] FCAFC 23 (cont’d)
Emmett: What would be reasonable:
iiNET informed in writing of particulars
iiNET has been requested to take specific steps
•Notify customers of infringement
•Invite customers whether service so used
•Invite customers to refute allegations or give
assurances of no repetition
•Warn customers if not response, service suspended
(then terminated)
•iiNET given unequivocal evidence
•iiNET reimbursed to reasonable costs
COPYRIGHT – Safe Harbour
AFACT v iiNET [2011] FCAFC 23 (cont’d)
Nicholas J and Jagot J concurred, but
Nicolas went further:
Notices sent by AFACT insufficient to
provide iNET with requisite knowledge
about specific acts of infringement – no
verification of accuracy or explanation of
collection methodology – and not up to
iiNET to seek out such information
COPYRIGHT – Safe Harbour
AFACT v iiNET – High Court
What relief is being sought/what do you expect
ISPs to stop doing
Damages from iiNET s relief?
Does inaction after warning notice(s) constitute
authorisation
Is not deletion of download a continuing
infringement
What was the element required in Moorhouse
Online Infringement, ISPs and the NBN
Memorandum of Understanding (USA)
Creation of a Centre for Copyright Infringement
Copyright owners and ISPs (Cost – 50% each)
CCI Roles
– Education
– Development of reliable, accurate and
verifiable methodologies (IP owners/ISPs)
– Maintain Technical expert(s)
– Collection of Data
– Notification
– Mitigation Measures
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Online Infringement, ISPs and the NBN
CCI – Continued
• Education
– development of ‘copyright alerts’
• Technical
– development and maintenance of ‘methodologies for
identifying online infringement and providing evidence
– development of methods to match IP addresses with
subscriber accounts, and retention of records to do so
– Notification by IP Owners to ISPs
•
•
•
•
The work is copyright
Basis on which ownership of IP asserted
Statement of accuracy of notice
Technical information to identity IP address
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Online Infringement, ISPs and the NBN
CCI – Continued
ISP AUPs
–
–
–
–
Infringing copyright infringes AUP
Continued receipt of copyright alerts will lead to action
List of mitigation measures
Eventual application of copyright legislation
ISP notification to subscriber
•
•
•
•
•
•
Education material
Copyright alert
Acknowledgement notice
Mitigation measures (shaping, direction to landing page
Review if elected by subscriber
Post mitigation
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Online Infringement, ISPs and the NBN
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