Issue 30 - September 2003
AGD e-News on Copyright
Welcome to the copyright newsletter of the Copyright Law Branch of the Attorney-General's Department.
We would like to ensure that the newsletter is accessible for all readers and for this reason we attach a word document version of the newsletter for mail-outs.
You may (and please do) forward this newsletter to friends and colleagues. When quoting from this newsletter, please provide an acknowledgment of source. Information on how to subscribe or unsubscribe is included at the end of the newsletter.
e-News editor: Lani Gibbins, Legal Officer, lani.gibbinsATag.gov.au
**************
WHAT'S IN THIS ISSUE?
POLICY UPDATE
1. Update: Review of Digital Agenda reforms
2. Free Trade Agreement negotiations
3. Government response to Copycats report
CASE LAW UPDATE
4. High Court hears arguments in the Panel Case
5. High Court refuses leave to appeal in Telstra v Desktop Marketing
6. Kabushiki Kaisha Sony Computer Entertainment v Stevens
7. Universal Music Australia Pty Ltd v ACCC
8. Links to other recent cases
WIPO NEWS
9. Update: IGC on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore
10. Other meetings
STAFF UPDATE
11. Staff changes within the Copyright Law Branch
Go to the end of the e-News for answers to the following questions:
- Who do I contact in the Copyright Law Branch?
- Where can I get more information about copyright?
- How can I subscribe to this newsletter?
**************
POLICY UPDATE
1. Update: Review of Digital Agenda reforms - Written submissions must be made by 30 September 2003
A review of the amendments to the Copyright Act 1968 (Cth) contained in the Copyright Amendment (Digital Agenda) Act 2000 (Digital Agenda Act) commenced on 1 April 2003.
Background to the review
When introducing the Copyright Amendment (Digital Agenda) Bill 1999 into the House of Representatives on 2 September 1999 the Attorney-General, the Hon Daryl Williams, AM QC MP proposed that the operation of the legislation be reviewed within 3 years of commencement.
The Digital Agenda Bill received Royal Assent on 4 September 2000 and the amendments to the Copyright Act commenced on 4 March 2001. The review of those amendments, as foreshadowed by the Attorney-General is being conducted by the Attorney-General's Department and is due to be completed in 2004.
External consultant to conduct major part of review
On 1 April 2003 the Attorney-General announced that law firm Phillips Fox had been selected to conduct a major part of the Government's broader review of the digital agenda reforms. The Attorney-General's News Release (including the Terms of Reference for the review) is available at:
http://www.ag.gov.au/agd/www/Attorneygeneralhome.nsf/Page/
524AF754E86BEF6BCA256CFB001A13D2?OpenDocument
Phillips Fox will analyse key aspects of the reforms from legal, economic and technical points of view. The Phillips Fox Digital Agenda Review webpage is available at: http://www.phillipsfox.com/whats_on/Australia/DigitalAgenda/DigitalAgenda.asp
Phillips Fox can be contacted about their part of the review by email: digital.review@phillipsfox.com.
Consultation
Wide public consultation is an important component of the research and analysis being undertaken by Phillips Fox.
Issues papers were released at the beginning of August 2003. The issues papers are available in electronic form from the Phillips Fox website. If you would like to be sent a hard copy of the issues papers please make a request to digitalagendareview@ag.gov.au or telephone (02) 6250 6313.
Public forums
Public forums were held in Melbourne and Sydney to facilitate discussion on the issues raised in the issues papers. An online forum was also hosted by Phillips Fox to provide an opportunity for people who were unable to attend either the Melbourne or Sydney forums.
Written submissions and deadline
Interested parties are encouraged to make submissions on the various issues raised in the papers. Submissions must be made by 30 September 2003. Guidelines regarding submission format can be found on the Phillips Fox website.
Some have queried whether there will be an opportunity after 30 September to make a supplementary submission responding to matters raised in submissions by others. This possibility is not precluded but at the same time is not encouraged. It should not be taken as an opportunity to delay lodging a submission after the due date. Nor should it be taken as an opportunity to restate what is already in their submission. After 30 September Phillips Fox will be considering submissions and formulating their report to the Government which is due to be lodged by the end of the year. Clearly, any submission lodged after the deadline has less chance of being considered.
If you have a concern in relation to the Digital Agenda or the Computer Programs amendments to the Copyright Act that are not covered in the issues papers please make a submission on that matter directly to the Attorney-General's Department (attention of Copyright Law Branch, Robert Garran Offices, National Circuit Barton ACT 2600). Such concerns will be considered by the Government as part of its broader review of the reforms.
Relevant link
For the latest information on the Review of the Copyright Digital Agenda reforms please go to:
http://www.ag.gov.au/DAReviewNews
2. Free Trade Agreement negotiations
Steve Fox and Kirsti Haipola attended the third round of the Australia-United States Free Trade Agreement negotiations from 21 to 25 July 2003. Negotiations in Honolulu across the full range of working groups were again constructive. While progress on framework text varied from chapter to chapter, the negotiating teams were able by the end of the week to put together a composite text capturing the views of both parties on nearly all chapters.
In order to continue this process and meet the year end deadline, the IP chapter negotiators will meet in Washington from 29 September to 1 October 2003 to continue this process for the IP chapter. An IP composite text will enable both parties to engage even more intensively at the next full round, to be held in Canberra in late October.
Further consultations on intellectual property aspects of the free trade negotiations are likely to be held in mid October. If you wish to be involved in these consultations, please contact Geoff Binns, International Intellectual Property Section, Office of Trade Negotiations, Department of Foreign Affairs and Trade, (Tel: +61 2 6261-3788 or e-mail: geoff.binsATdfat.gov.au)
3. Government response to Copycats report
On 26 June 2003 the Government tabled its response to the House of Representatives Standing Committee on Legal and Constitutional Affairs report, Cracking Down on Copycats: the Enforcement of Copyright in Australia.
The Government response to the report included amendments to existing legislation as well as administrative measures focussed on effective practical assistance to copyright owners- balanced with the rights and interests of those accused of copyright infringement. The legislative elements of the Government's response have already been enacted as part of the Copyright Amendment (Parallel Importation) Act 2003. The amendments in that Act came into force on 13 May 2003. The enforcement amendments included the following measures:
- easing the burden of proof of the existence and ownership of copyright;
- a requirement that judges consider deterrence when assessing additional damages in civil cases; and
- the introduction of criminal sanctions for advertising the supply of infringing copies of any copyright protected material; and
- the grant of jurisdiction to the Federal Magistrates Service in civil copyright infringement matters.
The formation of an Intellectual Property Enforcement Consultative Group was also an outcome of the report. Led by the Australian Federal Police, this body has provided a practical forum for consultation between Commonwealth law enforcement agencies and IP owners in relation to criminal IP enforcement issues.
The first copyright case following the grant of jurisdiction to the Federal Magistrates Service was Universal Music & Ors v Hendy Petroleum & Ors [2003] FMCA 373 which is noted in the review of cases below.
A copy of the government's response can be found on the Attorney-General's Department website: http://www.law.gov.au/agd/www/Securitylawhome.nsf/Page/
282F2FE3DCC90C63CA256D520006A9F6.
CASE LAW UPDATE
Access to Federal Court cases is available from the Federal Court website at:
http://www.fedcourt.gov.au/judgments/judgmts.html.
4. High Court hears arguments in the Panel Case
On 11 April 2003 the High Court granted Network Ten leave to appeal against the decision of the Full Court of the Federal Court in TCN Channel Nine Pty Ltd v Network Ten Ltd [2002] FCAFC 146. On 5 September 2003 the High Court heard arguments on the operation of ss 14, 25(4) and s 87 of the Copyright Act 1968 (Cth), in order to determine whether Network Ten infringed the copyright in Channel Nine broadcasts when re-broadcasting extracts of Channel Nine broadcasts in its programme 'The Panel'. The Court has reserved its judgment in this matter.
A transcript of the proceedings is available at:
http://www.austlii.edu.au/au/other/HCATrans/2003/338.html
5. High Court refuses leave to appeal in Telstra v Desktop Marketing
On 20 June 2003 the High Court refused an application by Desktop Marketing Pty Ltd for special leave to appeal against the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112. In that case, the Full Court of the Federal Court held that copyright subsisted in Telstra's telephone directories. Therefore, as the law stands in Australia, copyright subsists in compilations which are original in the sense that 'the work was not copied, but originated from the putative author' and where 'the compiler has undertaken substantial labour or incurred substantial expense in collecting the information'.
A transcript of the proceedings is available at:
http://www.austlii.edu.au/au/other/hca/transcripts/2002/M85/1.html.
6. Kabushiki Kaisha Sony Computer Entertainment v Stevens [2003] FCAFC 157
On 31 July 2003 the Full Court of the Federal Court (French, Lindgren and Finkelstein JJ) handed down its decision in the appeal against the decision of Sackville J in Kabushiki Kaisha Sony Computer Entertainment v Stevens [2002] FCA 906. Sony's appeal was against Sackville J's findings in relation to
s 116A of the Copyright Act.
Sony argued that 'mod chips' sold by the respondent, Mr Stevens, and inserted into PlayStation consoles constituted circumvention devices. The mod chips enabled copies of games, including illegitimate copies of games and copies legitimately purchased from other regions, to be played on the PlayStation consoles by overriding Sony's regional access codes and PlayStation Boot ROM's (the code readers).
The appeal turned on the definition of a 'technological protection measure' and whether Sony's access codes and code reader, or a combination of both, constituted a technological protection measure within the meaning of s 10(1) of the Act.
At first instance, Sackville J held that the measures employed by Sony did not constitute a 'technological protection measure' within the meaning of the Act as they were not designed to prevent or inhibit post-access infringement of copyright; they merely 'deterred' copyright infringement.
The Full Court overturned Sackville J's decision, holding that it was sufficient that Sony's devices inhibited infringement by making it impossible to use the unauthorised copies. Justice Lindgren held that the legislative history demonstrates that s 116A was meant to offer broad protection. His Honour placed considerable emphasis on the many references in the legislative history to copyright owners' rights to prevent unauthorised access to, or use of, their works. In his view Sony's devices in the Playstation do have the effect of preventing access to copyright works and are the sort of device Parliament intended to cover. On this point Finkelstein J agreed.
Justice French considered the ordinary and grammatical meaning of the phrase 'technological protection measure'. His Honour found that the term 'infringement' extended beyond the unauthorised reproduction of copyright material to the sale and distribution of infringing copies. In his view if the access codes and code reader had the practical effect of preventing or inhibiting the sale of infringing copies this satisfied the definition of technological protection measures in the Act.
As such, the Full Court held that the measures employed by Sony were technological protection measures, and therefore that the mod chips were circumvention devices in contravention of s 116A of the Copyright Act.
The Court also considered two further issues on appeal in which it upheld (by majority) the judgment of Sackville J at first instance, namely, that when a game is played in a console:
- there is not a reproduction of the computer programs in the Random Access Memory (RAM) of the PlayStation console; and
- there is not a copy of the game, regarded as a 'cinematograph film', made in the RAM.
Mr Stevens has been ordered to stop selling the mod chips and to pay Sony's costs. Sony's claim for damages and additional damages were remitted to Sackville J for determination.
The decision can be found at:
http://www.austlii.edu.au/au/cases/cth/FCAFC/2003/157.html
7. Universal Music Australia Pty Ltd v ACCC [2003] FCAFC 193
On 22 August 2003 the Full Federal Court handed down its decision in the appeal by Universal Music and Warner and their executives, against Hill J's decision in Australian Competition & Consumer Commission v Universal Music Australia Pty Limited [2001] FCA 1800. In that case Hill J found that the record companies breached ss 46 and 47 of the Trade Practices Act 1974 (Cth) when they ceased supplying particular retailers who were importing CD's from other countries and made it known that they may do the same to other retailers. Hill J imposed penalties of $450 000 on each record company, $45 000 each on three of the company executives and $50 000 on the fourth company executive.
The Full Court overturned Hill J's finding that the record companies had abused their market power in breach of s 46 of the Trade Practices Act. It held that neither Universal Music nor Warner held a 'substantial' degree of power in the market for wholesale recorded music in Australia.
However, the Full Court upheld Hill J's finding that the record companies engaged in exclusive dealing, in breach of s 47 of the Trade Practices Act. The contraventions consisted of refusing to supply particular retailers, and imposing conditions on supply to other retailers. The purpose of the contraventions was to discourage other retailers from selling imported CD's, which, if it had been achieved, would have had a substantial effect on the market. The fact that it was not achieved is no defence. The Court held that the four record company executives were accessories to these contraventions.
Despite a finding that the record companies had not breached s 46 of the Trade Practices Act, the Court increased the penalties imposed on the companies to $1 Million each. The Court also reduced the penalty imposed upon the fourth company executive to $45 000 to correct a factual error relating to the extent of the fourth executive's involvement.
The record companies and the four executives were ordered to pay one half of the ACCC's costs of the trial and of the appeals.
The decision can be found at:
http://www.austlii.edu.au/au/cases/cth/FCAFC/2003/193.html
8. Links to other recent cases
Australian Chinese Newspapers Pty Ltd v Melbourne Chinese Press Pty Ltd & Anor [2003] FCA 878
This case dealt with both copyright and trade marks in the logos of two competing Chinese language newspapers. The Court held that the applicant's logo was an artistic work, in which the respondent had infringed the copyright. The Court also held that the respondent infringed the applicant's trade mark.
The decision can be found at:
http://www.austlii.edu.au/au/cases/cth/federal_ct/2003/878.html
Telstra Corporation Ltd v Royal & Sun Alliance Insurance Australia Ltd [2003] FCA 786
This case deals with Telstra's Yellow Pages Goggomobil advertising campaign. The Court held that an advertisement using the same type of car (the Goggomobil) and the same actor as Telstra's advertisement was not an infringement of copyright, but did breach ss 52 and 53(d) of the Trade Practices Act.
The decision can be found at:
http://www.austlii.edu.au/au/cases/cth/federal_ct/2003/786.html
Chen v NSW Police Service [2003] FCA 589
This case was an appeal against the severity of a criminal sentence imposed for eight infringements under ss 132(1)(b) and 132(2A)(a) of the Copyright Act. The sentence was a five year good behaviour bond and a pecuniary penalty of $8000. The Court held that the sentence imposed was proper in light of the commercial nature of the offences, the range of penalties available, the financial means of the applicant and taking into account deterrence. The application was dismissed.
The decision can be found at:
http://www.austlii.edu.au/au/cases/cth/federal_ct/2003/589.html
Universal Music Australia Pty Ltd v Miyamoto [2003] FCA 812
This case deals with infringement of copyright in sound recordings and breaches of the Trade Practices Act where the respondents were DJ's remixing sound recordings, and retailers selling these remixed CD's.
The decision can be found at:
http://www.austlii.edu.au/au/cases/cth/federal_ct/2003/812.html
Universal Music & Ors v Hendy Petroleum & Ors [2003] FMCA 373
This case was a successful action for damages and punitive damages against a service station selling infringing CD's. It is the first case to have been brought under the amendments to the Copyright Act inserted by the Copyright Amendment (Parallel Importation) Act 2003 (Cth).
The decision can be found at:
http://www.austlii.edu.au/au/cases/cth/FMCA/2003/373.html
WIPO NEWS
9. Update: IGC on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore
The 5th session of the WIPO Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore took place in July in Geneva. Since the WIPO General Assembly meeting in September 2003 would need to consider and renew the IGC's mandate, the IGC's 5th session saw extensive debate about future directions for its work, including moving beyond the initial mandate of serving as a forum for discussion, and a range of proposals on how to build on the substantial foundations it has laid.
There was strong support for the idea that the IGC should move towards concrete outcomes within the next two years, and should focus on the international aspects of protection of TK and expressions of folklore or 'traditional cultural expressions' (TCEs). But countries differed in their ideas on how to achieve these outcomes as some wanted to move directly to negotiating a treaty while others wanted to keep progressing the work that the IGC has been doing in assessing current laws & identified gaps in those .
As there was no consensus at the IGC, the WIPO General Assembly in September is now considering the matter.
For a WIPO Press Update, see: http://www.wipo.int/pressroom/en/index.html.
The working documents for the 5th session are available in English, French and Spanish at
http://www.wipo.int/globalissues/igc/documents/index.html#5.
10. Other meetings
The next SCCRR session is to be held on 3-5 November 2003. The main item on the agenda is the protection of broadcasting organizations. The ad hoc meeting on the WIPO draft treaty on the protection of audiovisual performances is to be held immediately following the SCCRR session, on 6-7 November 2003.
STAFF UPDATE
11. Staff changes within the Copyright Law Branch
On 13 October Ms Helen Daniels will replace Ms Joan Sheedy as Assistant Secretary of the Copyright Law Branch.
**************
WHO DO I CONTACT IN THE COPYRIGHT LAW BRANCH?
A. INTERNATIONAL AND PROJECTS, INCLUDING:
- Australian participation in World Intellectual Property Organisation (WIPO) activities
- Review of intellectual property legislation under the Competition Principles Agreement (Ergas Report)
- Collective administration of copyright
- Crown copyright
- Moral rights (Authors' rights)
- Film directors' rights
- Performers' rights
- Photographs - term of protection
Contact: Chris Creswell, tel: (02) 6250 6312; e-mail: chris.creswellATag.gov.au
B. TRADE AND REGIONAL ISSUES, INCLUDING:
- The Australia- US Free Trade Agreement
Contact: Stephen Fox, tel: (02) 6250 6313; e-mail: stephen.foxATag.gov.au
C. NEW TECHNOLOGIES ISSUES AND PROJECTS, INCLUDING:
- Implementation of Digital Agenda amendments and three year review
- E-commerce issues
- CLRC report into Simplification of the Copyright Act
- CLRC report into the Jurisdiction and Procedures of the Copyright Tribunal
- Circuit Layouts Act
- Copyright Tribunal appointments
- Parallel importation
- World Trade Organisation, bilateral and regional copyright and related matters including Asia-Pacific Economic Cooperation
- IP and protection of arts and cultural expression of Indigenous people
- Government copying - agreements with collecting societies
- Copyright and designs overlap issues
- Enforcement of copyright
- Innovation and non-copyright IP rights generally
- Government Response to CLRC Report on Copyright and Contract
Contact: Gabrielle Mackey, tel (02) 6250 6608, e-mail: gabrielle.mackeyATag.gov.au
D. COPYRIGHT LAW REVIEW COMMITTEE SECRETARIAT:
Contact: Fiona Phillips, tel (02) 6250 6658, e-mail: fiona.phillipsATag.gov.au
E. OTHER ISSUES:
If you wish to contact the Copyright Law Branch on another matter, please contact Joan Sheedy, Assistant Secretary, Copyright Law Branch (tel: (02) 6250 6313; fax: (02) 6250 5929; e-mail: joan.sheedyATag.gov.au). Please note, Helen Daniels will be the Assistant Secretary for the Copyright Law Branch as of 13 October 2003, e-mail: helen.danielsATag.gov.au.
If you wish to speak to the current Departmental Liaison Officer responsible for copyright matters in the office of the Attorney-General, Mr Daryl Williams AM QC MP, phone: (02) 6277 7300.
For administrative matters, please contact: Michelle Tippett (tel: (02) 6250 6655; Fax: (02) 6250 5929; e-mail: michelle.tippettATag.gov.au).
**************
WHERE CAN I GET MORE INFORMATION ABOUT COPYRIGHT?
The Copyright Law Branch website is at: http://www.ag.gov.au/copyright
The Copyright Law Branch produces a booklet entitled Copyright Law in Australia: A Short Guide. It has published an updated addendum to this guide to reflect recent legislative amendments. To obtain copies of the guide and addendum please phone (02) 6250 6655. The updated version is available on-line at:
http://www.ag.gov.au/agd/www/Securitylawhome.nsf/Page/
DDE9E530E5D5ADD6CA256B8900079356?OpenDocument.
Past publications including discussion papers and fact sheets on a variety of issues, are also available on-line at: http://www.ag.gov.au/agd/www/Securitylawhome.nsf/Page/
107D174167C51D4FCA256B89000A7F7C?OpenDocument.
The Copyright Law Branch does not give legal advice to members of the public. The Copyright Law Branch can provide federal Government departments and agencies with legal advice on copyright law matters.
Individual creators with a specific copyright inquiry may be able to obtain advice from the Australian Copyright Council tel: 02 9318 1788. See also the Copyright Council website at: http://www.copyright.org.au/.
For information on patents, trade marks and designs contact IP Australia on tel: 1300 651 010 or access information on-line at: http://www.ipaustralia.gov.au/.
Information on the Copyright Law Review Committee, including copies of past reports, is available at http://www.ag.gov.au/clrc.
**************
HOW CAN I SUBSCRIBE TO/ UNSUBSCRIBE FROM THIS NEWSLETTER?
Subscribe:
You may subscribe to the e-News by using the form at:
http://152.91.15.15/publications/copyright_enews/EnewsEmail/Enewsemail.html
You may also subscribe by sending an e-mail to lyris@lstsver1.ag.gov.au. Leave the 'subject line' of your e-mail blank and include in the body [ie, the text part] of your message:
subscribe enews
Please note that e-mail addresses will only be used for the purpose of subscribing to e-news and will not be added to any other mailing lists unless you specifically request that this be done.
Unsubscribe:
You may unsubscribe by using the form at: http://152.91.15.15/publications/copyright_enews/EnewsEmail/Enewsemail.html or by sending an email to lyris@lstsver1.ag.gov.au, leaving the 'subject line' blank and including in the body of your message:
unsubscribe enews
The above form can also be accessed by clicking 'subscribe' on the following page: http://www.law.gov.au/enews.
We would also like to hear from you if you have any feedback or comments on this newsletter. Send an e-mail to copyrightlawbranch@ag.gov.au.