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Brief Counsel

Copyright cases from across the ditch

02 March 2010

If you use a phone directory, down-load songs and movies or write music, you might be interested in three recent copyright cases from Australia which may be influential in our courts.

This Brief Counsel discusses the Australian Federal Court decisions.

No copyright in directories: Telstra v Phone Directories

Another missile has been fired from Australia into the directory business.  What was hinted at in the Australian High Court case of IceTV v Nine Network has now come to pass.  A Federal Court judge in Australia has held that there is no copyright in the White Pages or Yellow Pages produced by Telstra in Australia.  This was because not all of the “authors” of the directories could be identified and because, anyway, those that were identified (essential for a copyright claim) did not exercise enough independent intellectual effort to warrant a decision that the directories were sufficiently “original” to be protected by copyright law. 

This decision has ramifications in New Zealand.  However, the New Zealand Copyright Act 1994 is different in significant ways from the law in Australia under which this case was decided.  Here we have:

  • a definition of “compilations” which includes works which consist of a “compilation of data”, and

  • recognition that copyright can subsist even when something is computer generated, in which case the “author” is the person or organisation standing behind the production.

Nevertheless New Zealand copyright law (just as in Australia) requires there to be some independent time, effort and skill ("originality") in producing the work.  For a compilation work this might be in the selection and arrangement.  But applying this requirement to a completely automated computer generated directory might face real problems of proof. 

In the Australian case it was pointed out that Australia did not have any special law to protect databases.  There is such a law in Europe.  Whether there needs to be a law in New Zealand was given passing consideration at the time our Copyright Act was passed in 1994.  No clear decision was reached, but the definition of “compilations” to cover “multi-media” works – a buzz word at the time – arguably extends to databases.  No doubt someone will bring a test case in New Zealand. 

Is an ISP “authorising” copyright infringement? : Roadshow Films v iiNet Limited

In this important and long awaited Federal Court decision, a judge has held that an ISP (Internet service provider) is not “authorising” internet users to infringe copyright by downloading copies of movies through a P2P system simply by offering those users access to the Internet. 

It was apparently the first trial of its kind in the world involving an ISP sued for copyright infringement due to alleged authorisation.  The 34 applicants who brought the claim in Australia represented the major motion picture studios, both in Australia and the United States.  The particular ISP is the third largest in Australia. 

 P2P is a form of direct computer to computer file sharing on the Internet without a specific, intermediate server.  Previous actions brought by copyright owners in Australia and elsewhere have successfully stopped particular website operators who have been held to “authorise” infringement by providing users file sharing software – such as “Kazaa”. 

But there is no central website operator under the P2P system.  The most advanced form of this is the BitTorrent protocol which is a blueprint for a very efficient and effective means to distribute large quantities of data.  It can be used for many purposes including the downloading of movies illegally from the Internet.

The first step in this case was to determine whether or not customers of the defendant ISP had infringed copyright.  This is called “primary infringement” and the judge decided that some ISP individual users had infringed by “making available online” and copying works such as movies (similar infringements are found in the New Zealand Copyright Act). 

 But the core of the judgment concerned whether or not the ISP, simply by providing an online service, was “authorising” users to infringe film copyright. 

Although the Australian copyright law, through particular amendments made in 2000 (Copyright Amendment (Digital Amendment) Act, section 101) had embellished the meaning of “authorisation” by listing some factors to be taken into account, the key to the answer was found in a 1976 case, Moorhouse v University of New South Wales.  The University was liable for “authorising” by providing photocopying machines in its library, operated by tokens or coins, without any supervision or control over what was photocopied.

In the Roadshow Film case, the judge analysed the Moorhouse decision and, in particular, decided that there was a two-step process to find infringement by authorisation.  First, it was necessary for the alleged authoriser to provide the true “means” of infringement.  The mere provision of facilities, he said, by which an infringement can occur, will not necessarily amount to “authorizing”. 

In Moorhouse it was crucial that the University provided a photocopier in a library.  The judge said that simply to provide a photocopier in the abstract would not have been enough.  Once this point is satisfied the second step is to decide whether the alleged authoriser had the power to prevent infringement and approved of that or, at least, was so indifferent that permission might be inferred. 

In the case before him the movie company claimants could not get past first base because the judge held that the ISP was not giving users the means of infringement.  The Internet provision was a necessary precondition, but it was the BitTorrent system which enabled users to infringe copyright.  In so saying, the judge pointed out that the BitTorrent system was not illegal in itself. 

The judge went on to discuss the various factors added into the Australian Act by the “digital amendments” in 2000.  He also examined the so-called “safe harbour” provisions in the Australian Copyright Act which protects ISPs from liability for copyright infringement if they comply with certain conditions.  The equivalent provisions in the New Zealand Copyright Act are found in section 92.  There are differences in detail. 

The interpretation of “authorisation” in the Roadshow Film case is likely to be influential here and comes at an interesting time for ISPs in New Zealand. 

Late last year Cabinet released a new section 92A defining the role ISPs will play in the context of copyright infringement on the Internet using the P2P system, and early this year the Copyright (Infringing File Sharing) Amendment Bill was introduced to Parliament. 

Copying a tune: Larrakin v EMI

This case (also decided in 2010) concerned a song composed in Australia in 1934 called “Kookaburra”.  The composer was a Miss Marion Sinclair who entered it in a competition conducted by the Girl Guide’s Association of Victoria.  It is an iconic Australian round.  It consists of only four bars. 

The owner of the copyright, Larrakin, alleged that two of those bars were reproduced in the 1981 recording of another iconic Australian song called “Down Under” performed and recorded by the group, Men At Work.  Also an iconic piece of Australiana which shot to prominence during the heady days of Australia’s America’s Cup victory off Freemantle in 1983.  In any event, the resemblance between the two songs was not noticed until 2007.

To prove infringement copyright (whether in Australia or New Zealand) the second work must have been taken or derived from the copyright work.  This generally means that there must be sufficient objective similarity and some evidence from which one can infer that there had been actual copying.  A completely independent work such as a song, even if it is identical to an earlier song, would not amount to a copyright infringement. 

It is not necessary to infringe the whole of a copyright work, only a “substantial part”.  But substantiality depends more on quality than quantity.  If what is taken is the most distinctive part of the earlier work, then this might amount to an infringement even though it forms only a small portion of the copyright work.  This sort of test gets tough when the copyright work itself is only four bars. 

The Australian Federal Court judge heard from expert musicologists.  It was not disputed that something from the “Kookaburra” song had found its way into “Down Under”. The key issues were objective similarity and whether what was taken was “substantial” enough. The judge said that the clearest illustration of objective similarity was in the fact that a witness frankly admitted a causal connection between the two melodies and that he had sung the relevant bars of “Kookaburra” when performing “Down Under” at a number of concerts from about 2002. The judge then turned to substantiality and based on the ‘quality not quantity’ test found enough had been taken.

The end result, therefore, was that the 1979 and 1981 recordings of “Down Under” infringed Larrakin’s copyright in “Kookaburra” as both recordings reproduced a substantial part of the 1934 song.  Decisions about costs and damages are to be decided at a later date.  

All three cases are first instance and may be appealed.

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