Therese Catanzariti
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Works – section 32
 literary works
 dramatic works
 musical works
 artistic works

Part IV other subject matter
Sound recordings – s 85
Cinematographic films – s 86
Television broadcasts and sound broadcasts – s 87
Published editions of works - s 88
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Subject matter may include works
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◦ film includes script, costume designs, song
◦ sound recording include music and lyrics
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sometimes stretched
Computer program – literary work
Computer game – cinematograph film
Electronic poker machine game – cinematograph
film??
Fireworks display schedule – dramatic work??
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contrast
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◦ France (fashion designs)
◦ US (boat hull)
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May be short
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“literary work” includes:
Japanese haiku 5/ 7 / 5
Mohammed Ali – “Me / We”
(a) a table, or compilation, expressed in words, figures or
symbols; and
(b) a computer program or compilation of computer
programs
don’t need literary merit
bills of sale, exam papers, computer compression table,
betting coupon, weight watcher’s program, railway
timetables, compatibility table printers and toners
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Hollinrake v Truswell – cut-out of woman’s arm
◦ “literary work is intended to afford either information and instruction, or pleasure, in
the form of literary enjoyment”.
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Exxon Corporation – one word “Exxon”
◦ needs to be “original literary work”
◦ not just original and literary (in writing)
◦ Convey no meaning and suggest nothing in itself

Elwood v Cotton On – words / numbers suggesting US college teams
◦ Such semiotic meaning as the words and numbers convey (they do
convey such meaning to some extent, being well recognised symbols
that "stand for" something else) is so insubstantial and vague that
they do not constitute literary works.
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Fairfax v Reed – newspaper headlines
◦ too slight, insubstantial and too short to qualify as literary works
◦ May represent only facts and ideas
◦ Metawork of information about work, not work itself
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Computer Edge v Apple – literary work included
computer program
Digital Agenda reforms (2000) expressly include
computer program
Computer program:
◦ set of statements or instructions to be used in a computer
to bring about a certain result, ie, the language not the
application is protected.
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NOT include data / content in program – AVRA v
Warners
NOT include functions / language – Data Access
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includes choreographic or “other dumb show”,
and a scenario or script for a film (s.10(1))
choreagraphic work – Laban notation
Intended to be performed or presented
(Ricketson)
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Jesus Christ Superstar – originally no stage show
The Kings Speech – first performance was a readthrough
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Norowzian v Ark Ltd
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Aristocrat Leisure Industries Pty Ltd v Pacific
Gaming Pty Ltd
◦ Jump cut edited tv commercial can’t be performed
◦ written specifications of digital poker machine not dramatic work
◦ Lack element of performance
◦
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Australian Olympic Committee Inc v Big Fights Inc
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Nine v ABC (Year 2000 fireworks) (1999)
◦ action must be staged, contrived or directed
◦ not simply recorded, so no copyright in sporting events
◦ schedule how fireworks would be performed
◦ interlocutory so bal of convenience
◦ dramatic work “not strong” as may be discrepancy between
what planned and what happen - performance may not
comply with script
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Endemol – Big Brother
 BBC Worldwide – The Office
 Shine – Masterchef, Biggest Loser (sold to News US $690M)
format rights – combination copyright /confidential information
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Green v Broadcast Corp of NZ (1989)
“clapometer” “make up your mind time
a dramatic work must have sufficient unity to be
capable of performance and that the features
claimed as constituting the ‘format’ of a television
show, being unrelated to each other except as
accessories to be used in presentation of some
other dramatic or musical performance, lack that
essential characteristic
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distinct from
◦ lyrics – literary work
◦ sound recording – other subject matter “sound recording”
◦ performance – performer’s rights
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can include adaptations, arrangements, samples if
sufficient originality
CBS Records Australia Ltd v Guy Gross
◦ Colette, demo of “Ring My Bell”
◦ arrangement not sufficiently original to be new
original work
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paintings, sculptures, drawings, engravings,
photographs;
buildings and models of buildings.
works of artistic craftsmanship;
not circuit layouts
no need for ‘artistic quality’
unless work of artistic craftsmanship.
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Millar and Lange Ltd v Polak
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Roland Corporation v Lorenzo
◦ Logo
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Elwood v Cotton On
◦ Stylised representation of a single letter on a
Christmas card
◦
Lott v JBW & Friends- “Opera In The Outback”
◦ Four words as part of a graphic
◦ Where words and numerals used for visual look
and feel not semiotic reasons
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Cotton
On
Elwood
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NZ Ct Appeal: Lincoln Industries case (plastic frisbee)
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Greenfield Products v Rover-Scott Bonnar
(moulds for pulleys and clutch plates for ride on mower)
Copyright Act not distinguish between industrial and aesthetic works
but limited protection for registerable designs
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Sculpture as haphazard collection of items
Tracy Emin – “My Bed” (shortlisted Turner Prize)
Arte povera– 1960’s radical artists using found objects
Joseph Beuys – Tate Modern, Kunstmusem Liechtenstein
Creation Records v Newsgroup Newspapers – Oasis cover
scene itself not copyright and merely assembly of ‘objets trouvés.
Photograph not copy of official photograph, but merely shot of same
scene
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arts and crafts movement / anti-industrial
John Ruskin, William Morris, Tiffany – V&A
Needs artistic quality
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exception to copyright – design overlap
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George Hensher v Restawhile – chicken wire
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Coogi v Hysport- commercial fabric
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Burge v Swarbrick –plugs and mouldings
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prototype
◦ doesn’t need to be handmade
◦ whether artistic expression unconstrained by
functional concerns
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“wall of sound” Phil Spector
Stock Aitken Waterman – record music using
synthesisers, drum machines, sequencers and vocal
track
sound recording - aggregate of the sounds embodied
in a record – s10
record – disc, tape, paper, electronic file or other
device in which the sounds are embodied – s10
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mobile phone ringtones
◦ monophonic instrumental
◦ polyphonic instrumental
◦ truetones
Sound recording associated with a film is deemed
not to be a sound recording
but forms part of the cinematographic film - s 23(1)
 PPCA v FACTS –exists and entitled to copyright
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Aggregate of visual images embodied in an article
capable of being shown as a moving picture
Galaxy Electronics Pty Ltd v Sega Enterprises
◦ Computer game held to be cinematograph film
◦ even though order of play could change with each game
◦ because limitations in the range of outcomes preconceived by
the authors
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Aristocrat v Pacific Gaming
◦ Pacific Gaming conceded that poker machine game was film
◦ may not be because need real progression
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France - film is “work” not “other subject matter“
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Published editions of works – includes newspapers,
magazines and books
 Presentation, layout, typographical arrangement
 Not defined in Copyright Act
 Nationwide News Ltd v Copyright Agency Ltd
“protects the presentation embodied in the edition”
 US – West Publishing – page numbers of legal
reports
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A communication to the public delivered by a
broadcasting service
free to air / cable, subscription/ non-subscription
Protects act of communication NOT the work
Protects the broadcast signal
Network Ten Pty Ltd v TCN Channel Nine Pty Ltd
◦ “The Panel” re-broadcast extract from Alan Border Medal
Dinner
◦ Trial judge held every minute was a broadcast
but if broadcast 24/7 no start or end
◦ HC held that the broadcast was each program not every signal
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Generally works – life + 70 years
Printed editions of works - 25 years
Films – 70 years
Sound recordings - 70 years
TV & sound broadcasts – 50 years
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Used to be life + 50 / 50 years
 European law harmonised up to maximum (Germany
was 70 years)
 US Sonny Bono Act
(catalyst Steamboat Willie expiring??)
 Australia signed US/Australia Free Trade Agreement
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Is this appropriate for computer programs? Information
sheets? Industrial drawings?
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Owner – author lit, dram, musical or artistic– s35
photo – person who took the photograph – s10
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author has to be an individual
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Telstra v Phone Directories Company
no human author of white and yellow pages
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contrast s178 Copyright Designs Patents Act (Eng)
Computer generated work – work generated by
computer in circumstances no human author of
work
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“work of joint authorship – work produced by the
collaboration of two or more authors where contribution
of each not separate from contribution of other authors
 joint author’s contribution not distinct from other
author/s - all authors write each chapter
not each author write separate chapters
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Primary Health Care v Commissioner of Taxation
“consultation notes and history of a patient where entries
made by more than one doctor, could be seen as forming a
continuous narrative with the patient as its subject, but the
individual entries are separate and distinct and not the result
of collaboration between the doctors”
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song publicly performed / communicated
◦ recording royalty for recording paid to PPCA
(split performers/band and record company
◦ publishing royalty for musical work / literary work to APRA
(split composer/lyricist and music publisher)
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Composer / lyricist royalties for cover versions
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Composer / lyricist one or two people
original performers no royalties for cover versions
band four or five people
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Fisher v Brooker – organist on “A Whiter Shade of Pale” joint author
of musical work
Hadley v Kemp – Spandau Ballet drummer joint author of “Glow” but
saxophonist not joint author of “True” (saxophone solo 9% of song)
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Employees in course of employment – s35(6)
Commission artistic work – s35(5)
◦ agreement for valuable consideration
 take photograph (private or domestic)
 paint or draw a portrait
 make engraving
◦ commissioner is owner of copyright
◦ if commission for particular purpose, author can restrain use for any other
purpose unless otherwise agree
Newspapers – s35(4)
◦ under terms of employment by the proprietor of a newspaper, magazine
or similar periodical
◦ For purpose of including in newspaper, magazine or similar periodical
◦ Author is owner for reproduction in book or hard copy
◦ Newspaper is owner for other purposes unless otherwise agree
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Hinkley wrote a class library “App Warrior”
 Using work computer and work computer tools
 At odd hours (but he used to work at RedRock during
odd hours of the day and night)
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Hinkley used AppWarrior so he could finish his
Redrock work within 2 hours – and spent the rest
of his time mucking around on discussion boards
Hinkley joined Hotline Communications, got
venture capital and assigned AppWarrior
Redrock claimed AppWarrior
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‘There is other evidence which satisfies me that
Mr. Hinkley was employed under a contract of
service. He was on a fixed salary, from which
group tax was deducted. He signed an Australian
Taxation Office Employee Declaration on 3
November 1995. He was entitled to annual leave,
to sick leave and to long service leave.
Superannuation contributions were made by
Redrock on his behalf…’
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‘Redrock provided [him] with necessary equipment and
with programs…all specially purchased to assist him in
writing software for the company, together with access
to the Internet to download manuals, information or
software as needed… in his written submissions Mr.
Hinkley states on the issue of the use of an external
hard disk owned by him that it would be "unbelievable
to suggest that I was expected to use my equipment for
Redrock's work". All the indicia put forward in the
evidence are consistent with the conclusion that Adam
Hinkley became an employee of Redrock’
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School Organisational Health Questionnaire
57 questions in 12 modules
Measure teacher morale and school
organisational climate
ACER/Independent Schools Victoria
reproduce 25 questions in Building
Educational Effectiveness project
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Dr Hart, psychologist was the author
Dr Hart employed by Victorian Dept Education on
teacher stress project
based on research data collected from 1,520
Victorian teachers from 18 primary and 26 secondary
schools
making survey not part of his employment, not
required to produce it
even tho not made outside working hours
 agreement between Dept and Hart that Dept could
use questionaire and he could use Dept data mean
that questionaire not part of employment
 Not Crown copyright because not directed to make it
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Maker is person who owns the record on which
recording is made (and the performer if a live
performance) – s22(3) and (3A)
Person who paid if recording made pursuant to
agreement for valuable consideration
Employer if performer of live performance is
employee
Crown if made under Crown’s direction – s178
International organisation if made under its
direction – s188
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Maker including director
Maker doing the things necessary for the production of the
first copy of film – s 22(4)
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Person who paid if recording made pursuant to agreement for
valuable consideration
Employer if director directed film pursuant to employment
contract is employee
Crown if made under Crown’s direction – s178
International organisation if made under its direction – s188
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contrast France – L113.7 – authorship of audiovisual work
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belongs to natural persons who have carried out intellectual
creation of work
rebuttable presumption - author of screenplay, author of
adaptation, author of dialogue, composer of music created
for the film, director, author of underlying work (novel)
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broadcast of NRL football game
record broadcast on mobile phone to watch later
Who was the maker of the copy of the broadcast
TJ – the subscriber
Full FC – Optus and subscriber
Full FC – “It equally is not apparent to us why a
person who designs and operates a wholly automated
copying system ought as of course not be treated as
a “maker” of an infringing copy where the system
itself is configured designedly so as to respond to a
third party command to make that copy”
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76 - The subscriber, by selecting the programme to be copied
and by confirming that it is to be copied, can properly be said to
be the person who instigates the copying. Yet it is Optus which
effects it. Without the concerted actions of both there would be
no copy made of a football match for the subscriber. Without the
subscriber’s involvement, nothing would be created; without
Optus’ involvement nothing would be copied. They have needed
to act in concert to produce – they each have contributed to – a
commonly desired outcome. The subscriber’s contributing acts
were envisaged by the contractual terms and conditions. How
they were to be done were indicated by the prompts given on the
Optus TV Now TV guide page. The common design – the
production of the selected programme for transmission to the
subscriber – informed the solicitation and the taking of a
subscription by the subscriber; it was immanent in the service to
be provided.
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infringement if exercise copyright
without owner’s licence
do or authorise the doing of an act
comprised in copyright
 In Australia
 without being the owner or having the
owner’s licence
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Works - s.31(1)
Sound recordings - s.85(1)
Cinematographic film - s.86(1)
Television and sound broadcasts - s.87(1)
Printed editions - s.88(1)
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to reproduce the work in a material form;
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to publish the work;
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to perform the work in public;
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to communicate the work to the public;
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to make an adaptation of the work
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to enter into a commercial rental
arrangement in respect of the work
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to make a copy
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to cause it to be performed in public
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to communicate to the public
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to enter into a commercial rental arrangement in
respect of sound recording
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to make a film or sound recording of a broadcast
(sound recording/ film / published edition)
(film/sound recording);
(film/sound recording / broadcast);
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Works = > reproduced
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Other subject matter => make a copy
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Reproduction broader making a copy
CBS Records Australia v Telmak Teleproducts
- must take actual sounds
– not making a copy sound recording if create
something that sounds like sound recording
 not
cover sound alike recordings
muzak, polyphonic ringtones
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May not look the same
May be in different dimension
Reproduce work if make a film or sound
recording of work – s21(1)
 Reproduce paper script by creating film
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Reproduce artistic work if make 3D version of
it – s21(3)
 King Features v Kleeman (Popeye case) – make a
doll of the cartoon drawing
 Lend Lease v Warrigal Homes - build building
based on architecture plans
 LB Plastics v Swish – reproduce drawer design
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Translation of a literary work
Dramatic version of a non-dramatic literary
work
Non-dramatic version of a dramatic literary
work
Picture version of a literary work
In relation to computer programs, a version
of the work not being a reproduction of the
work
In relation to musical works, an
arrangement or transcription.
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A work is deemed to have been published if
reproductions of the work or edition have been
supplied (whether by sale or otherwise) to the
public – s29
definition only applies for determining if work is
published or unpublished to fix subsistence
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Avel Pty Ltd v Multicoin Amusements Pty Ltd
“to publish” as an exclusive right is to make
public that which has not previously been made
public in the copyright territory
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doesn’t need to be in Martin Place
copyright owner’s public
analyse audience: were the persons bound together by
◦ domestic or private tie (ie family reunion), or
◦ aspect of their public life (ie employment)
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APRA v Tolbush – chain of automative equipment shops
used car radio in car showroom to show how car works /
radio fixed
APRA v Canterbury Bankstown Leagues Club – perform music
in bar
APRA v Commonwealth Bank – bank played short video to its
employees including 25 seconds of soundtrack
contrast US homestyle exception
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any mode of visual or aural presentation, whether
or not by operation of a device
doesn’t need to be live performance involving
living performers before an audience
Includes show a movie or play CD in public
deems the occupier of a premises to be performing
the work (or causing SR/CF to be seen/heard in
public) where equipment for the performance is
provided by or with the consent of the occupier
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Introduced in 2000 Digital Agenda reforms
Intended technology neutral replacing broadcast to public / transmit cable
Key difference is geography:
Performances to geographically proximate audience (people gathered one
place)
Communications to geographically disparate audiences (people not
gathered).
Telstra Corporation Ltd v APRA (broadcast to the public)
 Telstra provide music on hold to callers including mobile phone users.
Was this a broadcast ‘to the public’?
 Music on hold is an ‘adjunct to a commercial activity’, used to
‘entertain, placate or distract customers ... in a way hoped to be
congenial to them’
 A telephone conversation may be private. However, when callers are
placed on hold they hear music because it is intended that any member
of the public who calls the engaged number will hear the music
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"communicate" means make available online or
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made by the person responsible for determining the
content of the communication – s22(6)
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Cooper v Universal Music Australia
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electronically transmit
‘making available’ – if making file available via peer to
peer filesharing
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are you making available
If you disconnect and then reconnect is that two infringements
or one?
Roadshow v iinet
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Is one computer or cluster of computers making available
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transmit ownership – s197
◦ assignment
◦ Will
◦ Devolution by operation of law
future copyright - vests when it comes into existence – s197
assignment must be in writing signed by copyright owner
Insight IRC v ACER – agreement can’t refer to earlier oral
agreement because can only assign in writing
divisible / partial assignments or licences
◦ certain classes of rights;
◦ for a specified time; or
◦ for a specified geographical area
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permission or consent to do something
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sometimes implied when no written assignment
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may be revocable and subject to
◦ regular payments
◦ satisfying performance criteria
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does not create proprietary interest
may not survive insolvency / bankruptcy
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Therese (licensor) grants Ian (licensee)
the exclusive right (type of rights)
in and to the work “Finland Stories” published
by Federation Press in 2005 (work)
to communicate the work to the public
(rights)
In Australia (area)
for 10 years (term)
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in writing signed by owner/prospective owner – s10
authorised to do act of copyright to exclusion of all
other persons (including copyright owner)
may commence proceedings for infringement,
conversion and detinue – s119
difference with assignment
◦ tax reasons (may not constitute a “disposal” for CGT
◦ may still be revocable
◦ may be subject to satisfying performance criteria
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Reasonable and equitable, obvious, and necessary for
business efficacy
BP Refinery v Hastings Shire Council, Codelfa v State Rail
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necessary to imply term for reasonable or effective operation
of contract – Byrnes v Australian Airlines
If engage someone to produce material then implied
permission to use material in the manner and for the purpose
in which and for which it was contemplated between the
parties that it would be used at the time of the engagement -
Beck v Montana Constructions Pty Ltd
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CAL v NSW
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Survey plans
Licence only implied if necessary to do so – not
necessary because statutory licence available
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Apotex v Sanofi Aventis
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long-standing and widespread practice to copy the
originator’s PID when produce generic drug
Infringer had onus to show a proper foundation for the
implied licence
 TGA could accept different PID – TGA did not require
 evidence of practice equivocal
 Lack of objection is not enough for an implied licence
 May imply terms through custom and usage
but only between industry counterparties not competing
traders
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collecting societies
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CAL – Copyright Agency Limited (literary works)
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APRA – Australian Performing Right Association
(musical works / lyrics)
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PPCA – Phonographic Performance Company of
Australia (sound recordings )
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Screenrights – audiovisual copyright society (films)
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Viscopy – Visual Arts Copyright Collecting Society
(especially aboriginal art)
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authors weak bargaining position
small marginal revenue
= > little incentive for individual authors to
enforce rights
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spread cost of enforcement over large number of
authors
BUT sampling system not reflect actual use
BUT no right to refuse licence
BUT overhead costs
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don’t need to search out owner of each
copyright work
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standard terms
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bundled fee
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BUT monopoly – no room to negotiate
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Causal connection
Objective similarity
S. W. Hart v Edwards Hot Water Systems per Gibb CJ
“In order for there to be a “reproduction” within the law
of copyright, there must be an objective similarity
between the two works and a causal connection between
the plaintiff’s work and that of the defendant.
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actual derivation: only if copy the original work
Copyright does not grant a monopoly
No liability if independent creation
Conscious or subconscious
Francis Day Hunter v Bron – subconsious
copying popular song “In A Little Spanish
Town”
EMI v Larrikin – flautist (Hams) no evidence
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catch red-handed?
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presumption – access + striking similarity
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can you can prove access?
can prove indirect access through access to
copy
– King Features v Kleeman [1941] AC 417
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Copied directly from original work
presumed if evidence of access + similarity
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access
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◦ gave them a numbered copy of work
◦ visits from their IP address to yr website
◦ visitors book + visited yr gallery / workshop /
showroom / display home
striking similarity that precludes possibility
of independent creation –Clarendon v Henley
Arch
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reproduction through intermediate work
Uncontentious when protected work,
intermediate material and infringing work
similar in kind (painting → photograph →
painting)
Contentious when intermediate material is
different king of work such as written
description
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King Features v Kleeman
 Created dolls and brooches based on
cartoons
 Never saw original Popeye drawings that
the cartoons were based on

Frank Winstone v Plix Products
 never saw Plix kiwi pockets
 Created kiwi pockets based on description
of Plix kiwi pockets in legislation
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Copyright protects reproducing or making a
copy of the original expression
So the new work needs to reproduce or be a
copy
No infringement if use ideas to create a work
that is different
Is there an overall resemblance between the 2 works?
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“Kookaburra sits in the old gumtree” is a short musical
consisting of four bars in a major key
Two bars are reproduced in a flute riff in the the pop song
“Down Under” which is in a major key
Melody is the same even though the harmony and the “feel”
of the works are different, and pop song added extra notes
Objective similarity is not determined by note for note
comparison, but determined by ear and eye.
The more simple the work, greater degree of taking required
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The ‘basic hook’
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doing act in relation to a “work or other
subject-matter”
includes doing of act in relation to
a substantial part of the work or other
subject-matter
don’t avoid copyright infringement by
leaving out inessential parts
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Assessed by quality not quantity of what taken
Ladbroke v William Hill
is the part taken “novel or striking, or merely a commonplace arrangement
of ordinary words or well-known data
‘Whether a part is substantial must be decided by its quality rather than its
quantity. The reproduction of a part which by itself has no originality will
not normally be a substantial part of the copyright and therefore will not be
protected.
Quality assessed by originality
Data Access v. Powerflex
consider “the originality of the part taken” to determine
Reproduction of data irrelevant to structure, choice of commands, and
combination of commands is unlikely to reproduce a substantial part
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Hawkes and Son (London) Ltd v. Paramount Film Service Ltd
– Colonol Bogey’s March
20 sec of a 4 min musical work
“would be recognised by any person”, is a “vital and an
essential part”, contains the “principle air”.
EMI Music v Larrikin - Kookaburra
the first two bars are “the signature” of that work
First thing you hear, so melody sticks in your head
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The ‘basic hook’
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French / Crennan / Kiefel JJ
 “That facts are not protected is a crucial part of the balancing of competing policy
considerations in copyright legislation. The information/expression dichotomy, in
copyright law, is rooted in considerations of social utility. Copyright, being an
exception to the law's general abhorrence of monopolies, does not confer a
monopoly on facts or information because to do so would impede the reading
public's access to and use of facts and information. Copyright is not given to
reward work distinct from the production of a particular form of expression” (para
28)

“the expression of the time and title information, in respect of each programme, is
not a form of expression which requires particular mental effort or exertion. The
way in which the information can be conveyed is very limited. Expressing a title of
a programme to be broadcast merely requires knowledge of the title, generally
bestowed by the producer of the programme rather than by a broadcaster of it.
Expressing the time at which a programme is broadcast, for public consumption,
can only practically be done in words or figures relating to a 12 or 24-hour time
cycle for a day. The authors of the Weekly Schedule (or the Nine Database) had
little, if any, choice in the particular form of expression adopted, as that
expression was essentially dictated by the nature of the information. That
expression lacks the requisite originality (in the sense explained) for the part to
constitute a substantial part. “ (para 42)
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Gummow, Hayne, Heydon JJ
substantiality depend on quality than quantity of what taken
detailed and lengthy preparatory work was directed to business of
Nine and irrelevant, and work done in creating guides involved
extremely modest skill and labour
don’t look at what copied to determine if this was original, but look
to whole work to determine if what copied was substantial part of
the whole work
“in assessing the quality of the time and title information, as
components of the Weekly Schedule, baldly stated matters of fact or
intention are inseparable from and co-extensive with their
expression. It is difficult to discern the expression of thought in
statements of which programmes will be broadcast and when this
will occur. If the facts be divorced from the other elements
constituting the compilation in suit, as is the case with the use by
IceTV of the time and title information, then it is difficult to treat the
IceGuide as the reproduction of a substantial part of the Weekly
Schedule in the qualitative sense required by the case law (para 170)
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Horizontal – literal copying
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Take part of the whole
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Vertical – non-literal copying
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Don’t copy word for word
Take structure / hierachy
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Idea / expression dichotomy

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Trial Judge (Gordon J)
◦ The relevant original expression in the Elwood
artistic work was in the ‘precise selection or
arrangement of the various design elements’ and
Cotton On had not reproduced a substantial part

FCAFC
◦ Overturns – relevant original expression of the
Elwood artistic work was in the overall ‘look and
feel’ of the layout which had been substantially
reproduced by Cotton On
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Cotton
On
Elwood
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Ladakh v Quick Fashion [2012] FCA 389
Ladakh owned butterfly pattern – Ladakh
sent pattern to China, material and dresses
made in China, dresses sent back to Ladakh
Quick sold garments that reproduced the
butterfly pattern – sourced from China
BUT no evidence that Quick reproduced or
authorised the reproduction in Australia

China source said saw material in China

possible leakage of artwork in China
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Knowledge not required for primary infringement
Knowledge required for
◦ secondary infringement
◦ remedies
 s115(3)- additional damages for flagrant infringement
of copyright
 S116(2) - conversion and detinue
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IceTV (Gummow, Hayne and Heydon JJ)
may consider animus furandi
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Roadshow v iinet
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Bit-torrent – cluster communicate film
one user only communicated a few files,
though each file was critical
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NRL v Singtel Optus
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Optus maker or joint maker of copy of
broadcast, even though subscriber click start
Optus role pervasive, even though automated
system – Optus created system to work in
this way
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Importing, selling or otherwise dealing with
◦ articles that would infringe copyright if made in
Australia - s 37+38
◦ Pt IV subject-matter - s. 102 + 103
even tho may be genuine and not infringe
copyright in place where they are made
permitting infringing performance in place of
public entertainment - s. 39
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• can create territorial trade barriers because of the territorial
divisibility of copyright
– Parallel importation or the grey market
– Interstate Parcel Express v Time-Life
– Bailey (R & A) & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR
701 (Bailey’s Irish Cream label)
• If these are genuine why should the copyright owner control
their further exploitation – exhaustion of rights??
• Why might a copyright owner want to price or product
discriminate in different territories?
• Does DRM protect copyright or market segmentation?
• Sony v Stevens – ACCC as amicus curiae
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authorise doing of any acts of copyright
deep pockets
easier to sue one than many
Extent of power to prevent
Nature of relationship btw person and person
who did the act
Whether person took reasonable steps
including comply with industry code of
conduct
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UNSW v Moorehouse
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Combination of library, computers, students
Sanction, countenance or approve
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Roadshow v iinet
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need more than countenance
no power to prevent infringement - power to
terminate contract was too indirect
reluctant to impose burden of checking whether
infringing
notices not clear
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NRL v Singtel
Subscriber was time-shifting – no
infringement to record broadcast – s111
If Optus authorising subscriber, then no
infringement because subscriber not
infringing
NRL needed Optus to be joint maker
not just authorising subscriber
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not copy whole or a substantial part
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defences to infringement
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Private copying
Fair dealing
Digital exceptions
Other exceptions
parallel imports
no copyright protection registerable designs
compulsory licence schemes
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time-shifting - s10(10), 111, 248A(1)(aaa)
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space-shifting - s. 109A
◦ recording broadcasts
◦ for replay at more convenient times - private &
domestic use
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copying sound recordings
for private & domestic use
format shifting – s43C, 47J, 110AA
◦ Copying of other works etc from one format to another
◦ for private & domestic use
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◦ “copyright law must be seen as credible. If the use of
popular and widely owned technology is illegal, but
everyone does it anyway, respect for the law is diluted…
brings the law more into line with reasonable consumer
behaviour… ordinary consumers should not be treated like
copyright pirates” - Attorney General P Ruddock 16/2/2007
◦ 109A - This section applies if the owner of a copy makes
another copy of a sound recording from the earlier copy for
the sole purpose of the owner’s private and domestic use
◦ NOT ripping a friend’s CD, downloading from the internet
◦ => most people are still pirates
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1
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specific categories
◦
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◦
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research or study – s40
criticism or review – s41
parody or satire – s41A
reporting news – s42
professional advice by lawyer, patent or TM
attorney – s43(2)
onus on defendant to establish
◦ fall within category – work and purpose
◦ use is fair in all circumstances
◦ conditions have been satisfied (eg attribution)
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2
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detailed consideration of factors
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Number / extent of quotations/extracts;
The use of those quotations/extracts;
Relative proportion - long extracts /short comments;
Overall impression.
◦ Lord Denning in Hubbard v Vosper
(approved by Beaumont J in De Garis case)
◦ May be a significant amount of the work
Time Warner v Channel Four (Clockwork Orange)
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excerpts from 20 programs from Nine
8 seconds to – 42 seconds
inaugural Allan Border Medal Dinner.
Prime Minister singing “Happy Birthday” (Midday)
rugby league player performing
cartwheel after grand final victory (Wide World of
Sports)
re-enactment of stabbing (Australia’s Most Wanted)
child yawning (Today Show)
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s.41 (works), s.103A(audio-visual items)
relevant purpose is taker not ultimate users
◦ De Garis v Neville Jeffress Pidler Pty Ltd - commercial
news clipping service
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some judgment or evaluation
doesn’t have to criticise or review the work itself
◦ Pro Sieben Media v Carlton UK – criticise cheque book
journalism and show 30 second extract of paid interview
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taking need not be solely for the relevant
purpose Ten v Nine (the Panel case)
need acknowledgement of source
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s.40 (works), s.103C(audio-visual items)
not mere gathering of information / facts –
De Garis
relevant purpose is taker not ultimate users
Librarians
◦ special provisions
◦ generally dealing with copyright material on behalf
another person who will use that material for
research and study - ss49-51, 110A
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Factors to take into account –
s40(2),103C(2)
◦ purpose & character of dealing,
◦ nature of work/audio-visual item & its,
availability,
◦ market effect of dealing,
◦ Amount / substantiality of part copied
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reasonable proportion: s.10(2)-(2C)
reasonable portion s. 40 (3) – (8): 10% or
single chapter
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reporting of news
◦ by newspaper, magazine or similar periodical:s.42(1)(a)
& s.103B(1)(a) (sufficient acknowledgment required); or
◦ By means of communication or cinematographic film:
s.42(1)(b) & s. 103B(1)(b)
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sufficient acknowledgement required
broader than current events
more than making reports available to others –
De Garis
news not entertainment – The Panel case
(even tho more Americans get their news from Jon
Stewart’s Daily Show than network news)
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introduced after The Panel case
Australian Copyright Council Information Sheet:
Making something funny is not enough – need to
make some form of commentary (which may be
implied) on the work you are using or on
characteristics or actions such as vice or folly

must still be fair
author may still have a claim in moral rights

Campbell v Acuff-Rose – 2 Live Crew rap version of

Roy Orbison Pretty Woman
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9
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Pretty Woman, walking down the street,
Pretty Woman, girl, girl you look so sweet,
Pretty Woman, you, you bring me down to that knee,
Pretty Woman, you make me wanna beg please,
Oh, Pretty Woman.
Verse 2: [Fresh Kid Ice]
Big hairy woman, you need to shave that stuff,
Big hairy woman, you know I bet it's tough.
Big hairy woman, all that hair ain't legit,
'Cause you look like Cousin It.
Big hairy woman
Verse 3: [Brother Marquis]
Bald headed woman, girl your hair won't grow,
Bald headed woman, you got a teeny weeny afro.
Bald headed woman, you know your hair could look nice,
Bald headed woman, first you got to roll it with rice.
Bald headed woman, here let me get this uncle bens for ya,
Ya know what I'm saying, its' better than Rice a Roni
Oh, Bald headed woman
Bridge: [Mr. Mixx]
Big hairy woman, come on in,
[Brother Marquis]
And don't forget your bald headed friend
[Luke]
Hey Pretty Woman, let the boys jump in.
Verse 4: [Mr. Mixx]
Two timin' woman, girl you know you ain't right,
Two timin' woman, you's out with my boy last night
Two timin' woman, that takes a load off my mind,
Two timin' woman, now I know the baby ain't mine
Oh, Two timin' woman
[All]
Oh, Pretty Woman.
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0
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Part of communication– s43A / s111A
◦ Temporary copies
◦ Made as part of technical process of making or
receiving a communication

Part of using a copy – s43B
◦ Temporary copies
◦ Made as part of technical process of using copy
◦ (because of expanded definition of material form)

Part of running program– s47B
◦ Made as part of technical process of running copy of
program for purpose for which it was designed

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Back up copy – s47C
Reproduction to make interoperable
products – s47D
Reproduction to correct errors – s47E
Reproduction for security testing – s47F

agreement cannot exclude or limit rights
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painting, drawing, engraving or photograph
◦ artistic work situated other than temporarily in public place
◦ artistic work situated other than temporarily in premises
open to public – s65
◦ building or model of a building – s 66

including in film or television broadcast
◦ artistic work situated other than temporarily in public place
◦ artistic work situated other than temporarily in premises
open to public – s65
◦ building or model of a building – s 66
◦ artistic work if inclusion only incidental to the principal
matters represented in film or broadcast – s67
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3

educational instruction – s200AB(3)

person with disability – s200AB(4)

library or archive – s200AB(2)
◦ purpose giving educational instruction
◦ by body administering educational institution
◦ Not made partly for commercial advantage or profit
◦ Use for person with disability (reading, seeing or
hearing work)
◦ reproduction in form or with feature that reduces
difficulty
◦ Use for purpose of maintaining or operating library
or archive
◦ by body administering archive
◦ Not made partly for commercial advantage or profit

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parallel importation exceptions
• books
• legally made off-shore
• not available in Australia within 90 days of placing order - s
44A, 112A (added in 1991)
• accessory goods’ labels or packaging (an ‘accessory’ )
• goods labels or packaging – (added in 1998)
• AND any copyright subject matter (other than a ‘feature film’ >
20mins) that is included with a computer program or an
electronic literary or music item (added in 2003)
• legally made off-shore
• when imported or distributed with the goods - ss 44C, 112C
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5
• sound recordings
• legally made off-shore - ss 44D, 112C (added in
1998)
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computer programs
◦ lawfully made off-shore - s 44E (added in 2003)
‘electronic literary or music item’ (e-books, e-mags,
sheet music in electronic form)
◦ lawfully made off-shore - ss 44F, 112DA (added in
2003)
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
Baileys Irish Cream case
restrict parallel imports because of copyright in the label
on a bottle of Bailey’s Irish cream
 section 44C copyright in non-infringing labels not
infringed by importing article
 can’t use copyright to restrict
parallel imports

• Polo/Lauren (2008
FCAFC)
– Logo was an “accessory”
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7

use by educational institutions & other
◦ Copy and communicate broadcasts – Part VA
◦ Copy and communicate works – Part VB



certain uses in music industry
◦ cover songs (recording of published musical works
and any associated lyrics) - s54- s64
◦ causing sound recording to be heard in public –
s108
◦ Broadcast sound recordings – s109, s152
use by the Crown – s183, s183A
retransmission of broadcasts – Part VC
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8

injunction

Damages

Conversion / detinue
account of profits
but need to take account of overheads / their contribution Dart v
Décor (1993) 179 CLR 101


additional
- section 115(3) Copyright Act
Allam v Aristocrat – no proven, $450k additional
Elwood v Cotton On - $120k lost profits, $150k additional
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9
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0

compensate not punish – Elwood v Cotton On [2009] FCA
633

damage to IP as chose in action
◦ loss of reputation/exclusivity – Review v New Cover (2008) 79 IPR
236
◦ lost sales
but discount because unlikely to purchase original because different
target market / sales channels
Review v Redberry [2008] FCA 1588 (90% discount)
Digga v Norm (50% discount)
Elwood v Cotton On (66% discount)
◦ lost licence fee
but competitor unlikely to license – Digga v Norm [2008] FCAFC 33
12
1
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Allam v Aristocrat
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Flagrant infringement for commercial gain
deterrance and element of penalty
need to mark court’s disapproval
no requirement for proportionality between compensatory
damages and additional damages
$450,000 (but infringement not proven)

Insight IP Holdings v ACER
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ACER commercialised questionaire for govt schools
Knew that not permissible to use another’s work for commercial
purposes without consent
Dr Hart had meetings and told them couldn’t use it
Flagrant breach of copyright
Didn’t make profit but enhanced reputation and contacts
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3
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Right of attribution
Right not to have authorship falsely attributed
Meskenas v ACP Publishing
Painting of Dr Victor Chang in Womens Day
nominal damages - $9,100
Right of integrity
Right not to have work subjected to derogatory
treatment
Perez v Fernandez
DJ Suave used Pitbull’s rap/hiphop and inserted audio
drop of Pitbull endorsing DJ Suave
Nominal damages - $9,100
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

alleged infringer take action against threats
made by way of “circulars, advertisements or
otherwise” (eg letters of demand)
alleged infringer can obtain
◦ declaration threats unjustifiable
◦ injunction against continuing threats
◦ damages
unless satisfy court constitute copyright infringement


Bell v Steele (No 2) FCA 62 – groundless
Bell v Steele (No 3) FCA 246
◦ Damages $147,000
◦ Costs $22,224
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
Only applies to acts in Australia
Indictable - up to 550 penalty units (5x if corporate) / 5 years
Summary - up to 120 penalty units / 2 years
Strict liability - up to 60 penalty units

Commercial scale infringement – s132AC (USFTA)



◦ Commercial scale infringement
◦ substantial prejudicial impact on copyright owner – s132AC

Infringing copies
◦ Making (132AD), selling or hiring (s132AE), offering for sale
(132AF), exhibiting in public commercial (132AG), importing
commercial (132AH), distributing (132AI), possessing for
commerce (132AJ)
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Circumvention devices – s132APA – 132 APE
provision of, commercial dealing in, manufacturing
and importation of circumvention devices and
broadcast decoding devices
Electronic rights management information s 132AQ
– s132AT
Removal / alteration of ERMI
Dealing with articles where ERMI removed / altered
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