Category Archives: Australia

Australian Fed Court adopts originality standard from Feist in phone book dispute

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Shourin Sen - 5 April 2010 – 9:00 am
Filed under Australia, Originality

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 (8 February 2010)

There was a copyright order issued in the Federal Court of Australia that I have been meaning to write about for some time. Copyright infringement suits concerning phone directories provide a constant battle ground for the originality standard.This is true in many countries, and you can see a vibrant dialogue between courts that crosses national boundaries.

The Full Federal Court of Australia addressed the originality standard for factual compilations in a phone books case when it distinguished the U.S. and Australian Copyright Acts in Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112 (15 May 2002). The Court found that the word “original” in Section 32 of the Australian Copyright Act did not require the “intellectual effort or creative spark on which Feist insists.” The Full Court, instead, held that a phone directory “satisfie[d] the requirement of originality because of the labour and expense involved in the compilation.”

The Full Court revisited the originality standard from Desktop six years later in Nine Network Australia Pty Limited v IceTV Pty Limited [2008] FCAFC 71 (8 May 2008). In IceTV, the Full Court found that under the Australian Copyright Act originality “means that the creation (ie the production) of the work required some independent intellectual effort, but neither literary merit, nor novelty or inventiveness as required in patent law.” The Full Court, at the end of its decision, further noted that the originality standard from Desktop Marketing “may be” “out of line with the understanding of copyright law over many years” that there must be some creative spark or exercise of skill and judgment before a work is sufficiently original for the subsistence of copyright. The issue of originality was not directly litigated in IceTV so the tribunal ultimately was not forced to address whether Desktop was still controlling.

In early February, the Federal Court of Australia in Melbourne (Gordon, J.) directly addressed whether Desktop was still good law. Telestra, A publisher of yellow and white pages directories, brought suit against a rival publisher. (Telestra was also the plaintiff in Desktop.) Telestra alleged that the defendant had infringed its copyright in the compilation in its directories, including “the content, form and arrangement of information in individual listings, and the overall arrangement of individual listings,” and, in certain works, cross-references.

There were two questions at bar: whether Telestra had shown that it was the author of the directories; and more generally, whether the directories contained sufficient originality to merit copyright protection under the Australian Copyright Act of 1968.

Telestra had employed a large number of contractors, many of which it couldn’t identify, to assist in the preparation of the directories. There were “significant gaps” in the contractor agreements Telestra presented to the Court. Telestra argued that, even if it could not identify the contractors, and didn’t have agreements with the contractors, the directories were joint works. The Court rejected the argument:

[S]erious questions arise as to whether it is appropriate to refer to the gamut of individuals said to be authors of these Works as “joint authors”. The evidence demonstrated time and again that many of the staff perform their function separately from and often oblivious to the function of others . . . There is therefore a real question over whether there was the requisite level of collaboration between those workers to be considered joint authors: see s 10(1) of the Copyright Act. However, given the simple and undeniable fact that the Applicants have failed to prove the identity of the authors who contributed to the Works, it is unnecessary to consider this matter further.

The Court also made the broader finding that the directories at issue did not contain sufficient originality to merit copyright protection.

I accept that production of the directories is a large enterprise populated by many contributors (ignoring for the moment the determinative difficulties with authorship outlined above). . . . However, these facts are not relevant to the Applicants’ claim and, as explained at [20(6)] above, substantial labour and expense is not alone sufficient to establish originality. The evidence established that the “system” by which the directories are produced is designed to limit originality, not provide for it.
Where it can be automated, it has been. Where it cannot, Sensis workers are required to act consistently with the Rules and all work is subject to a multiplicity of checks to ensure that consistency. The weight of the evidence demonstrated that the tasks performed by individuals applying the Rules were mechanical in nature and often were able to be completed in large numbers swiftly. The Rules are followed and applied. Moreover, the Rules themselves are not complicated. It would be hard to conceive of how many of the Rules could be otherwise constructed given that the
purpose of the directories is to (a) enable someone to find a listing and (b) to allow customers to enhance their listing if so desired.

The decision included a plea to Parliament.

It is not open to me to ignore the express words of the Copyright Act to expand protection consistent with that set out in the Directive as summarised by the High Court. That is a matter for Parliament and, in my view, a matter which they should address without delay.

80′s hit “Down Under” infringes “Kookaburra,” Australian Fed Court

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Shourin Sen - 5 February 2010 – 9:00 am
Filed under Australia, Music

In early August, I mentioned a case Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited pending in the Federal Court of Australia in Sydney.  To briefly review, Larrikin, an Australian music publisher, alleged that the 1980s hit “Down Under” infringed it’s copyright in the round “Kookaburra Sits in the Old Gum Tree.” At the time, the Court found that Larrikin was the rightsholder of “Kookaburra,” and the original author had not assigned the song to the Victorian Girl Guides in 1932.

The Honourable Justice Jacobson found yesterday (Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29) that “Down Under” infringed “Kookaburra,” and that Larrikin was also entitled to recover damages for the infringment under the Fair Trading Act. The Court schedule proceedings on damages but noted that Larrikin’s claim to be entitled to 40-60% of the income of “Down Under” “grossly over-reache[d] a proper allocation of any such entitlement.”

Infringement

A plaintiff under the Australian Copyright Act must show that a defendant copied a “substantial part” of her work. The Court found that “Down Under” was infringing because a qualitatively important part of the song was appropriated and that, “although the question of quantity is secondary to that of quality, it is worthwhile noting that two of the four bars or phrases of “Kookaburra” have been reproduced in Down Under (or 50% of the song).” The Court noted that “Kookburra” was a simple work, but had sufficient originality to be granted copyright protection, and that the appropriation merited a finding of infringement.

Australian court finds plaintiff is owner of “Kookaburra”; case to proceed to issue of infringement

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Shourin Sen - 1 August 2009 – 1:00 am
Filed under Australia, Foreign, Music, Ownership

Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2009] FCA 799

It feels good to be blogging again, and I have a charming little decision to come back to.  On Friday, the Honourable Justice Jacobson of the Federal Court of Australia, New South Whales District, issued a decision in Larrikin Music Publishing’s infringement suit against EMI and the author’s of the ’80s hit “Down Under.” This suit has garnered a fair bit of publicity on the intertubes.  To briefly review, Larrikin, an Australian music publisher, alleged that “Down Under” infringed it’s copyright in the round “Kookaburra Sits in the Old Gum Tree.”

    Men at Work’s performance of “Down Under”

Justice Jacobson had requested briefing on the preliminary issue of whether Larrikin was the copyright owner of the musical composition. “Kookaburra” was penned in 1932 as an entry in a competition/fundraiser conducted by the Girl Guides Association of Victoria.  (The song won.)  One of the rules that accompanied the advertisement for entry stated that “[a]ll matter entered to become the property of the Guide Association.” Neither party could locate the entry materials. EMI argued that an assignment could be presumed from the circumstances, that the author of “Kookaburra” was aware of the printed contest rules and accepted the terms through her entry, and that by including her name in the entry — ah, the age of hand-written correspondence –  she wasn’t merely providing contact information, but executing a valid assignment.

    A Performance of “Kookaburra sits in the Old Gum Tree” by KaiLi kids

In the question at bar, the Court addressed whether, under the Australian Copyright Act of 1912, which was in effect in 1932, the clause in the rules of entry assigned the copyright in “Kookaburra” to the Victorian Girl Guides. Section 5(2) of the1912 Australian Copyright Act (which is derived from the 1911 British Copyright Act) provides that no “assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorized agent.”

Justice Jacobson found that, at least for purposes of the suit, Larrikin was the copyright owner of “Kookaburra.” The Court found that it was equally probable that the composer learned of the competition by word of mouth and was not aware of the rules; that the communications between the Girl Guides and the author of “Kookaburra” show that there was no assignment; that the inclusion of the author’s name in the entry was likely for identification purposes and not an assignation; and that the operative language, “all matter entered [in the competition] to become the property” of the Victorian Girl Guides, was “more apt” to have referred to the physical property than the copyright in the work.

Assignments and burden:

The Court appeared to toy with the idea that there should be a burden on the defendants to prove that the author of “Kookaburra” executed an assignment.  See, for example:

The test is that there must be shown to be more than “conflicting inferences of equal degrees of probability so that the choice between them is a mere matter of conjecture.” (117, citing Nominal Defendant v Owens (1978) 22 ALR 128 at 132.)

* * * * *

It is apparent that the admissibility of the evidence must be distinguished from its sufficiency to establish or support an affirmative conclusion in favour of the party who tenders it, when the burden of proof lies upon that party. (163, citing Lustre Hosiery Limited v York [1935] HCA 71; (1935) 54 CLR 134, 138–139 (Rich, Dixon, Evatt and McTiernan JJ) (emphasis added.)

If it was indeed the intent of the Court to assume a burden on behalf of the defendant, there are policy rationales for such a conclusion. William Patry argues that “the purpose of the writing requirement is not to effectuate the parties’ intent but principally to protect authors from those claiming, contrary to the author’s view of the facts, that he or she transferred rights in the work.  The purpose of the  writing requirement is thus to effectuate a congressional policy of protecting authors, even from themselves if need be.” Patry on Copyright at 5-218, citing Imperial Residential Design, Inc. v. Palms Development Group, Inc., 70 F.3d 96 (11th Cir. 1995) (“[T]he chief purpose of section 204(a), (like the Statute of Frauds), is to resolve disputes between copyright owners and transferees and to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses or copyright ownership.”) (emphasis added); Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (“Section 204 ensures that the creator of a work will not give away his copyright inadvertently and forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price.”)

Australian court finds that use of four bars of a musical composition on a wine label constitutes infringement

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Shourin Sen - 12 July 2009 – 6:00 pm
Filed under Australia, Damages, Right of Publicity

Rutter v Brookland Valley Estate Pty Limited [2009] FCA 702 (30 June 2009)

There are a number of new copyright decisions issued in Australia over the last couple of weeks that look worthy of a mention.  The plaintiff in Rutter v. Brookland was an internationally renowned flautist.  The defendant was a winery that launched a brand marketed around the flute-playing Greek God Pan. The winery asked the plaintiff flautist to compose an original piece of music that would be included on a promotional CD; perform a series of shows to market the wine; and provide the winery with manuscript of the original composition for reproduction on the wine series’ label. The flautist agreed to license her composition and name for promotional purposes for a twelve month period.

The winery continued to use twelve bars of the composition on its wine labels after the expiration of the licensing agreement. It later revised the wine label to include four bars of the composition. The Honourable Justice Buchanan found that the winery infringed the flautist’s copyright in her musical composition by continuing to produce and distribute labels that included the composition. The Court found that both the label that incorporated the twelve bar section and the label that included the four bar section were infringing.

The test for improper appropriation

In American copyright law, the concept of improper appropriation — that in addition to showing a unauthorized taking, a copyright owner must show that a defendant took too much of a work — isn’t explicitly incorporated into the Copyright Act. 17 U.S.C. 501(a) states that anyone who violates any of the exclusive rights of a copyright owner . . .  is an infringer . . .” Courts were left by Congress to formulate the standards for determining whether a particular use is potentially liable.

The concept that the appropriation of a small but qualitatively important portion of a preexisting work may constitute copyright infringement was incorporated into American law by Justice Story in his opinion in Folsom v. Marsh. 9 F.Cas. 349. No. 4901 (C.C.D. Mass. 1841) (Whether a use is infringing does “not necessarily depend on upon the quantity taken . . . “)

The standard for improper appropriation in Australian copyright law is partially set forth in Section 14(1) of the Copyright Act, which states that a person infringes a preexisting work when they use a “substantial part” of a “work or other subject-matter.”  The Court in Rutter interpreted the phrase “substantial part” as referring to a qualitative analysis instead of a quantitative analysis.   Citing Autodesk Inc v Dyason [No. 2] [1993] HCA 6; (1993) 176 CLR 300, 305 (Mason CJ):

It is clear that the phrase ‘substantial part’ refers to the quality of what is taken rather than the quantity … in determining whether the quality of what is taken makes it a ‘substantial part’ of the copyright work, it is important to inquire into the importance which the taken portion bears in relation to the work as a whole: is it an ‘essential’ or ‘material’ part of the work?

In Rutter, the Court found that both the twelve bar section of the flautist’s composition that was included on the original wine label, and the four bar section used on the revised label, were “immediately recognisable” excerpts that were “significant, essential and material part[s] of the composition.”

Statute of limitations

The Court applied a six year statute of limitations from the date of injury and limited the scope of the claim to infringement that occurred in the six years proceeding the filing of the complaint.  Section 134(1) of the Australian Copyright Act states that no infringement action may be “brought for infringement after the expiration of six years from the time when the infringement took place . . . ”

As a comparison, the United States Copyright Act provides that “[n]o civil action shall be maintained under the provisions of [the Copyright Act] unless it is commenced within three years after the claim accrued.” 17 U.S.C. 507(b).  The Act doesn’t explicitly define when a claim accrues.  A majority of U.S. Courts have interpreted the limitations period as a discovery rule, beginning to run when a plaintiff either discovered or with due diligence should have discovered the injury; although, some courts have considered the limitations period as beginning to run on the point of injury, similarly to the limitations provision of the Australian Copyright Act.

Damages

Section 115(2) and of the Australian Copyright Act provides that a court may grant a plaintiff in an infringement suit an injunction and either damages or accounting of profits. The flautist in Rutter elected actual damages, in lieu of an accounting of profits, so the Court used the original license between the parties to calculate an average royalty per bottle of wine sold, and then multiplied the rate by the number of bottles sold by the winery that used the label in the last six years.

The Court also awarded additional damages.  Section 115(4) of the Australian Copyright Act gives a Court discretion to award additional damages in circumstances when infringement is (i) flagrant, or (ia) there is a need for deterrence of similar infringement, or (ib) a defendant doesn’t respond with appropriate conduct after it is informed of the infringement,or (iii) the defendant benefited from the infringement.

Section 115(4) to a certain extent makes damages under the Australian Copyright Act similar to actual damages in the American Copyright Act, with the exception that the American Copyright Act doesn’t allow a Court to access additional damages for willful infringement unless a plaintiff elects statutory damages.  17 U.S.C. 504 grants a plaintiff the choice to elect actual damages and additional profits of the infringer. The Australian Copyright Act forces a defendant to elect either actual damages or additional profits, but a Court can in its discretion award additional damages if a plaintiff benefits from the infringement.

Moral rights and false endorsement

The plaintiff also claimed damages should be accessed for the defendant’s violation of her moral right to attribution.  The Court found that violation of moral rights did not increase the flautists losses, and that since there is no “double counting” of damages for violation of moral rights, it had already accessed the appropriate additional damages.

The plaintiff also argued that it should receive additional copyright damages for the flautist’s personal association with the musical composition used on the label.  The Court found that there was no inference of personal endorsement raised merely by the use of the musical composition on the wine labels and that it wasn’t appropriate or necessary to add additional damages.  The decision in Harolds Stores, Inc. v. Dillard Dept. Stores, Inc., 82 F.3d 1533 (10th Cir. 1996) aside, most American courts have found that a plaintiff will not be awarded damages for loss of goodwill or consumer confusion for a copyright claim.  Loss of goodwill or consumer confusion is traditionally the province of a state law claim based on a right of publicity or a trademark claim, if and when the claims aren’t preempted, and is not an appropriate basis for awarding damages for a claim brought under the Copyright Act, which targets unauthorized infringement, not unauthorized endorsement.