Exam Prep

Question 1

Desktop Marketing Systems Pty Ltd v Telstra Corp. Ltd (2002) 119 FCR 491

Answer 1

• Can get CR over compilation of raw data, provided that the compiling involves a ‘hard work’ (industrious collection).
• Telstra published telephone directories (White and Yellow).
• Desktop produced searchable CD telephone databases using T’s directories of fact as the primary source.
• Desktop had used a team of workers in the
Philippines to type up the data.
• Holding: that creativity not required; rather sufficient work or expense in gathering facts was enough to
give the compilation the originality required.

Question 2

Why is originality critical?

Answer 2

1. The threshold for subsistence for works (see s 32)
2. Relevant to determination of who is an author
3. Relevant to infringement (assessing whether defendant has copied a ‘substantial part’)

Question 3

What are the key principles of originality?

Answer 3

1. A work will not be original if it is copied from another work.
   – Need to distinguish between ideas and expression in a work
   – ‘Mere conduit’ or anamnesis?
2. The work can only be said to have originated from the author if it is a product of the author’s skill, labour, expertise or experience.

Question 4

IceTV (HCA 2009)

Answer 4

• CR does not protect facts or information, only particular form of expression employed, including the selection and arrangement of the information (all judges).
• The relevant skill and labour to be assessed is that which was directed to the particular form of expression of time and title information, not the skill and labour made to make the programming decisions upon which the table was based.
• HC characterized the programming decisions conveyed in the table as ‘facts’ or ‘ideas’, which aren’t protected.

Question 5

Who can be an author?

Answer 5

Author must be a person!
Copyright Act 1968 (Cth) s10(1)
“author”, in relation to a photograph, means the person who took the photograph.

Question 6

What is the requirement of material form and when does it apply?

Answer 6

• Applies to literary, dramatic, musical, artistic (Part III Subject Matter) works only
Definition in s 10(1): material form, in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation, (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced - this part was added to include RAM)

Question 7

Who can be protected and how must they be connected to Australia?

Answer 7

• s 32 [for works] /s 84 [for SMOTWs] limit copyright protection for works made or first published in Australia to persons who are qualified at the time when the work was made.
• Qualified person is Australian citizen or person resident in Australia (for SMOTWs: this, plus companies incorporated or resident in Australia)
– Note: special rules for buildings (if situated in Australia); works made by/under direction of Crown
• Works created in other countries protected in Australia if created under international treaty arrangements.
• Berne Convention, Universal Copyright Convention and the World Trade Organization

Question 8

What is the duration of copyright?

Answer 8

• Basic duration:
– 70 years post mortem auctoris [after the death of the author] (Pt III: s 33) or
– 70 years from publication (Pt IV: ss 93-96)
– Copyright in published and unpublished computer programs expires 50 years after the expiration of the calendar year in which the author died
– Copyright in SMOTW generally 70 years from date of first publication/broadcast/recording (s 93 for sound recordings; 94 for films)
– 50 years for television/sound broadcasts (s 95).
– 25 years for published editions (s 96).
– term calculated from death of last author living (s 80)

Question 9

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44

Answer 9

• 91 people identified as responsible for putting data together, but none of them were ‘authors’, because their contribution were dictated by computer systems and Rules
• Even if ‘authors’ could be identified, no exercise of ‘independent intellectual effort’, because process heavily automated.
• Desktop’s emphasis on labour and expense seems to be of lesser importance in light of the above authorities

Question 10

Cummins v Bond [1927] 1 Ch 167

Answer 10

• P was a psychic – practiced automatic writing while in a trance state.
• Over course of series of séances produces material entitled ‘The Chronicles of Cleophas’, dictated by a spirit.
• Eve J: The communications ‘could not have reached us in the form without the active co-operation of some agent competent to translate them from the language in which they were communicated to her [i.e. Aramaic] into something more intelligible to persons of the present day[ie archaic English]’.
• She was, therefore, more than just a mere ‘conduit pipe’.

Question 11

Which section of Copyright Act has definition of terms?

Answer 11

Section 10

Question 12

Exxon Corp. v Exxon Insurance Corp.

International [1982] Ch 119

Answer 12

• Cited with approval in the Exxon case (per Oliver LJ and Stephenson LJ at 144) Davey J in Hollinrake v Truswell [1894] Ch 420 at 428: ‘a literary work is intended to afford either information and instruction, or pleasure, in the form of literary enjoyment’.
• Here, word was new and original but ‘has no meaning and suggests nothing in itself. To give it substance and meaning, it must be accompanied by other words or used in a particular context or juxtaposition’.

Question 13

Headlines as literary works?

Answer 13

1. They’re titles, and titles are never copyright works
2. They’re not substantial or long enough to be works
3. Some, at least, of the headlines, are prosaic, and represent no more than a statement of facts.
4. They’re not proven by Fairfax to be original in the sense required by copyright law: because Fairfax failed to identify the authors or the work which they did.

Question 14

Tate v Thomas [1921] 1 Ch 503

Answer 14

• ‘I had the opportunity of seeing Mr. Peterman in the witness box and I can well understand that he is speaking the truth when he states that he was frequently making suggestions to the authors and indicating to them how they were to do the work they had undertaken. He is a gentleman of a fertile imagination and possessed of a fluency and powers well qualifying him for communicating his views to the authors. The plaintiffs do not deny
that their work embodies some ideas and a few catch lines or words for which Mr. Peterman may claim credit, but they dispute altogether his claim to a share in the authorship of the work and contend (and in my opinion rightly contend) that the sum total of his contribution does not amount to anything entitled to protection under the Act. His assistance, such as it was, was confined to accessorial matters such as scenic effects, or stage “business” notthe subject matter of copyright’.
– Per Eve J at 509-10

Question 15

Merchandising Corp. of America v

Harpbond [1983] FSR 32

Answer 15

• P sued for copyright infringement, alleging
infringement of his painting (makeup on face).
• Held: painting is not an idea, it is an object, and paint without a surface in permanent form is not a painting. ‘If the marks are taken off the face there cannot be a painting’. (per Lawson LJ)
• Plus held to be not substantial enough (i.e. two straight lines and another line in between them in a different colour).

Question 16

Greenfield Products Pty Ltd v Rover Scott
Bonnar Ltd (1990) 17 IPR 417

Answer 16

• Held that there was no CR in the drive mechanisms, moulds, or machine parts as sculptures.
• Emphasised ordinary meanings of sculpture and engravings
• They were not sculptures in the ‘ordinary sense…It is true…that some modern sculptures consist of or include parts of machines, but that does not warrant
the conclusion that all machines and parts thereof are properly called sculptures, and similar reasoning applies to moulds’.
• ‘A machine is not a sculpture’.

Question 17

Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154

Answer 17

• Before Coogi, it was thought that artistic input and craft skill had to come from same person.
• But Drummond J held that the first run of a mass-produced item (bolt of thickly textured multi-coloured fabric) can be a work of artistic craftsmanship, even if didn’t have manual craft skill.
• That it was produced on a computer was irrelevant.

Question 18

Burge v Swarbrick (2007) 232 CLR 336

Answer 18

• Court said yacht not WOAC.
• Held: question of whether a work was a
WOAC is not determined by assessing the
beauty or aesthetic appeal of the work, but
rather the extent to which the particular
work’s artistic expression, in its form, is
unconstrained by functional considerations.

Question 19

Copyright act sections relating to broadcasts.

Answer 19

s 91 substinence
s 10
s87
s25(4)

Question 20

TCN Channel Nine v Network Ten (2002) 190 ALR 468 (“The panel case”)

Answer 20

• If a ‘television broadcast’ is the signal
broadcast
–when does it begin or end?
– 24 hr broadcast period?
– It doesn’t
– any copying of any part of the signal is
an infringement (subject to exceptions)
HC: program is something ‘put out to the public, the object of the activity of broadcasting, as discrete periods of
broadcasting identified and promoted by a title.’
• Extend the quality-focused approach in Data Access to Part IV Subject Matters:
– Subject Matter Other Than Works (SMOTW) don’t need to be original
– so how to assess ‘quality’?
– ‘Questions of quality … as well as quantity arise in respect of [SMOTW] and… copyrights in original works’; here assessment of the ‘potency’ of taking relative to the broadcast as a whole
– FFC on remit: ‘Has essentially the heart been taken?’ or ‘What is the relative significance of the taking?

Question 21

Sections in Copyright act on Ownership?

Answer 21

ss 35 (default rules), 196 (assignment) and 10

Question 22

Joint authorship requires:

Answer 22

• 3 requirements:
– Collaboration
– Contributions are not distinct
– Contribution of any purported joint author must involve authorship: Each joint author must contribute significant part of the skill and labour protected by copyright - ie the ‘right kind’ of skill/labour

Question 23

Performer is defined in which section of Copyright act?

Answer 23

Section 22

Question 24

Owner of recording of live performance?

Answer 24

Generally: owned half/half by:
• Liveperformers; and
• Owner of first record embodying the recording

Question 25

Owner of copyright in film?

Answer 25

maker/owner is ‘person by whom the arrangements necessary for the making of the film were undertaken’ (s22(4))

Question 26

Elements of Infringement analysis?

Answer 26

To prove direct infringement of a Pt III work, you must:

1. Identify the part taken (copied) from the work in suit, which involves:
   a. Proving the alleged infringement is derived from, or causally connected to, the work in suit
   b. Showing that the alleged infringement is objectively similar to the work in suit
2. Prove that the part taken constitutes a substantial part of the work in suit

• Note: for Pt IV subject matter, taking must involve actual images/sounds. Once that’s proven, causal connection/objective similarity are also proved. You still have to think about substantial part.

Question 27

What is to perform a work in public?

Answer 27

Right is “to perform the work in public”, attached to Pt III works, except artistic works: s 31(1)(a)(iii)
• Performance under s 27(1) includes both live and ‘mechanical’ performance
• Does not include a communication to the public: s 27(2)
• Key difference between ‘performance’ and ‘communication’ (s27(2)) is geography: is your audience geographically proximate?
(communication involves wired or wireless transmission)
• s 27(3): broadcast = communication; playing reception equipment =performance

Question 28

APRA v. Commonwealth

Answer 28

• Is the audience part of the “copyright owner’s public”?
• if a performance before an audience occurs as an adjunct to a commercial activity, the performance is likely to be regarded as public, indeed … ‘almost certainly so’
• As a check upon that, look at the nature of the audience: were the persons bound together by domestic or private tie (ie family reunion), or by an aspect of their public life (ie employment)?

Question 29

Telstra Corp Ltd v APRA

Answer 29

• HC held:
– Size of the audience was irrelevant.
– The commercial context in which the performance takes place was highly relevant.
– The relevant “public” is the group which the copyright owner would otherwise contemplate as its paying public for the performance of its work.
– It is in a commercial setting that unauthorised performance will ordinarily be to the financial disadvantage of the owner’s copyright in a work: it is in such a setting that the owner is entitled to expect payment for the work’s authorised performance.

Question 30

University of New South Wales v Moorhouse (1975) 133 CLR 1

Answer 30

UNSW Library installs photocopiers. Photocopiers have notices about copyright (but not actually correct). Photocopiers are not otherwise policed.
• To set up a test case, a David Brennan goes in to the library, and photocopies an entire book (Frank Moorhouse’s The Americans, Baby)
• Question: by providing the photocopiers, and failing to police their use, has UNSW authorised this infringement? YES

Question 31

Analysis for authorization is outlined where in the Copyright act?

Answer 31

Subsections 36(1A) and 101(1A)

Question 32

Universal Music v Sharman Licence Holdings (2005) 65 IPR 289

Answer 32

• it ha[d] been in Sharman’s financial interest for there to be ever‐increasing file‐sharing
• Sharman always knew infringement was likely
• Sharman encouraged infringement: it
– promoted Kazaa as a file‐sharing facility
– exhorted users to use Kazaa and share their files
– promoted the ‘Join the Revolution’ movement, which was based on file‐sharing, especially of music, and which scorned the attitude of record and movie companies
• Sharman had the power to prevent infringement through software updates and ‘gold file flooding’ (inserting spoof files into search results)

Question 33

Exceptions are:

Answer 33

1. Criticism or review (s 40 for works/103A for
   audiovisual items)
2. Research and study (s 40 for works/103C for audiovisual items)
3. Reporting the news (s 42 for works/103B for audiovisual items)
4. Professional advice and legal proceedings (s 43(2))
5. Parody or satire (s 41A for works/103AA for
   audiovisual items)

Question 34

De Garis v Neville Jeffress Pidler (1990) 37 FCR 99.

Answer 34

1. Whose purpose is the relevant purpose?
   Held: the relevant purpose was the purpose of the taker, not the ultimate user.
   – Here, the eventual or ultimate use might have been ‘research’, but the purpose of the taker was to run a business. (it is clear from the panel case that a commercial purpose will not preclude finding of fair dealing, provided that the taking also had a purpose that could be fair dealing).
2. What was fair in the circumstances of this case?
   • The media monitoring service took whole
   articles – not just extracts. This was a factor in his conclusion that the dealing was not ‘fair’.

Question 35

Time Warner v Channel 4

‘The Clockwork Orange Case’

Answer 35

• D had produced a documentary ‘Without
walls’
• Was a critique (arguably a celebration) of Kubrick’s Clockwork Orange

‘… is the program incorporating the infringing
material a genuine piece of criticism or review, or is it something else, such as an attempt to dress up the infringement of another’s copyright in the
guise of criticism, and so profit unfairly from
another’s work? As Lord Denning said in
Hubbard v Vosper [1972] 2 QB 84 at 93, “it is not fair dealing for a rival in the trade to take
copyright material and use it for its own
benefit”’.

• Held: The material taken does not need to be representative of the work, nor need it be ‘fair to the work’.

Question 36

The Panel Appeal (2002) 118 FCR 417

Answer 36

• Scene of Days of Our Lives – Marlene levitating after being possessed by the devil.
– FFC held that this was criticism and review because it passed judgement on the TV show, its writers and plot. This was sufficient, even though there was also a measure of satire/humour injected.

Question 37

Exception of time shifting listed under which section of Copyright Act?

Answer 37

Section 111

Question 38

Artistic works exceptions are listed under which sections?

Answer 38

65 The copyright in a [sculpture or work of artistic craftsmanship] that is situated, otherwise than temporarily, in a public place, or in premises open to the public, is not infringed by the making of a painting, drawing, engraving or photograph of the work or by the inclusion of the work in a cinematograph film or in a television broadcast.
66 The copyright in a building or a model of a building is not infringed by the making of a painting, drawing, engraving or photograph of the building or model or by the inclusion of the building or model in a cinematograph film or in a television broadcast
67 The copyright in an artistic work is not infringed by the inclusion of the work in a cinematograph film or in a television broadcast if its inclusion in the film or broadcast is only incidental to the principal
matters represented in the film or broadcast
72 The copyright in an artistic work is not infringed by the making of a later artistic work by the same author if, in making the later work, the author does not repeat or imitate the main design of the earlier work

Question 39

Cth v Fairfax (1980)

Answer 39

Public interest exception limited in scope:

It has been acknowledged that the defence applies to disclosures of things done in breach of national security, in breach of the law (including fraud) and to disclosure of matters which involve danger to the public

Question 40

Meskenas

Answer 40

Moral Rights Example
• P claimed only right to attribution, not false
attribution.
• Judge held that the failure to attribute was not reasonable.
• There was nothing in the nature of the work etc that made attribution difficult, nor would it have been costly to have made the attribution.
• Held also that the right to not be falsely attributed had been breached.
• Got only minimal damages, increased because of delay and carelessness in publishing apology (9k).

Question 41

Snow v Eaton Shopping Centre 70 CPR (2d) 105

Answer 41

Moral rights example
• P argued that his ‘naturistic’ composition was made to look ridiculous by the addition of ribbons and suggests it is not unlike dangling earrings from the Venus de Milo.
• P’s view was disputed, but was held by some other artists and knowledgeable people in his field.
• Held to be an infringement of right to integrity because ‘the ribbons do distort or modify the P’s work and the P’s concern this will be prejudicial to his honour or reputation is reasonable under the circumstances’.

Question 42

Schott Musik

Answer 42

Moral Rights Example

“Debase” is a strong term. It requires much more than an opinion, even an expert opinion, that the adaptation is musically inferior. For the term to be applicable, the adaptation must be so lacking in integrity or quality that it can properly be said to have degraded the original work. It is difficult
to think an adaptation that has its own integrity could be so characterised, even if it is musically inferior and however radical or distasteful (to some) it may be.

Question 43

Reasonableness defence is outlined where in the Copyright act?

Answer 43

Section 195

Question 44

What are moral rights for performers?

Answer 44

Performers get their own moral rights similar to the moral rights for the creators of works:
1. The right of attribution of performership (s
195AB(1)).
2. The right not to have performership falsely
attributed (s 195AHA(1))
3. The right of integrity of performership (s
195ALA(1)).

Question 45

Design Law Elements

Answer 45

Our system of registered designs grants to a designer (or their employer/assignee) exclusive rights for a limited term (up to 10 years), in the visual features (shape,
configuration, pattern, or ornamentation) of a product, if the designer submits a valid application to IP Australia.
Designs protect the way the product looks, not how it functions (we haveanother IP system that protects how products work).
To gain protection, a design must be new and distinctive when compared to the prior art of existing products/designs.
The monopoly applies to the (type of) goods for which the design is registered and applies even if an alleged infringer
independently came up with the same design.

Question 46

Infringement for designs is under which section of the Copyright Act?

Answer 46

Section 71

Question 47

Defences for Infringement for designs is under which section of the Copyright Act?

Answer 47

Section 72 and 74

Question 48

What are the steps to the copyright/design overlap analysis?

Answer 48

1. Identify each artistic work
2. If any identified artistic work is a WOAC/building, copyright/design overlap provisions will not apply to that work (s77(1)(a)).
3. Is the shape excluded from registration s77(3).
4. Has a corresponding design been:
   (a) registered under Designs Act (s 75 and 77A)
   (b) embodied in a product (s 77(1), s 77(2) and s 77(A) for incidental copies) or
   (c) disclosed in a patent or design application (s 77(1A), s 77(2) and s 77(A) for incidental copies)?
5. Section 77(A)(1) and Section 77(A)(2)

Question 49

What is the analysis for copyright protection?

Answer 49

1. Identify work in question
2. Is it a work where copyright is capable of subsisting?
3. Have the conditions for subsistence been meet?
4. Has copyright expired?
   Copyright subsists in the work
5. Does the claimant own the copyright?
6. Are there any limitations which effect exercise of the copyright?
   Infringement
7. Any defences?
   Remedies