Da Vinci Code Copyright Fight

With classes at university starting this week, I'm a little 'head down' at the moment worrying about trade mark law.

But I simply cannot let this one pass: there's a fight going on this week over the Da Vinci Code. The Guardian has the story:

'The author of The Da Vinci Code "lifted the central theme" of the bestselling novel from a non-fiction book about Jesus and the Catholic Church, the high court was told today.
Writers Michael Baigent and Richard Leigh are claiming that the American novelist Dan Brown appropriated themes and ideas they explored in their 1982 book The Holy Blood and the Holy Grail'

Now, I've only read one of the books - Da Vinci Code (mea culpa, mea culpa - my excuse is I teach IP, I have to get with the cultural vibe...)? But I'd be pretty surprised if a non-fiction book of historical research could be said to be 'infringed' by a pulp airport fiction novel. Should be fun seeing how they argue their way around the idea-expression dichotomy here.

Oh, and by the way, here's a public service announcement: see Capote. It's an amazing film: intelligent, beautifully paced, psychologically interesting, with simply stunning performances most obviously by Philip Seymour Hoffman (breathtaking), but also by everyone else. See this film.

 
Counterfeiting is a serious problem.

Let me say that again, counterfeiting is a serious problem. The OECD think so, the Australian government think so - plenty of people think so. I think so. Counterfeiting, at least as it occurs within Australia, has no social value that I'm aware of, and has costs including (a) losses to the trade mark owner (lost sales), (b) the costs entailed by the deception of consumers, (c) indirect losses to the trade mark owner (for example, loss of reputation for quality, loss of ‘prestige’ value), (d) the costs of enforcement incurred by trade mark owners and governments alike, and (e) the ‘social losses’ – lost jobs, lost tax revenue, and lost investment in research and development that may arise as a result of the lost revenue.

I have a great deal of sympathy for trade mark owners who reach levels of desperation, and use hardball tactics, against counterfeiters, particularly 'repeat offenders'. It must be incredibly frustrating dealing with a party that has little or no respect for the law or the orders of the court. It is clear, from various judgments by the Federal Court judges, that they too have little sympathy, in general, with counterfeiters and importers/sellers of counterfeit goods.

In this context, however, this judgment is a timely reminder to lawyers that they cannot play too hardball in dealing with counterfeiters, particularly counterfeiters who are unrepresented by lawyers themselves - even where the counterfeiter has displayed contempt of court orders. The letter that was sent to the counterfeits importer in this case was described in the following terms by the judge:

[The] letter ... is indefensible. It plainly failed to meet the [legal] requirements discussed earlier in that its demands went far beyond any demands [the trade mark owner] had a legal right to make. Indeed, it made demands far beyond any remedy known to law. ...

A further disturbing aspect of the letter is that its demands were unreasonable. In order to avoid the threatened proceedings, [the respondent] was required to undertake in writing that the information provided by her will lead to [seizure of infringing goods or delivery up of infringing goods, or information leading to damages of ]a value of $250 000. There was no basis for [the applicant's lawyers] to expect that [the respondent] had the capacity to achieve any of those outcomes. Further, but more importantly, the demands were for remedies not known to the law. While that may not be unconscionable in a commercial bargain between equals, a quite different situation arises when such a demand is made in the context of a threat to prosecute an unrepresented litigant for contempt.

In my view, the conduct of [the applicant and its lawyers] outlined above is a serious misuse of the entitlement of [the trade mark owner] to threaten and bring contempt proceedings in respect of the respondents’ conduct in breach of the consent orders. That conduct does not in any way excuse the respondents’ contempt of court, which I have found has been established. It is also not relevant to the penalties I regard as appropriate in respect of that contempt. However, it is appropriate that the Court express its disapproval of the conduct by refusing to make orders for the payment by the respondents of [the applicant's] costs of its contempt proceeding.'

Lawyers beware!

 
Things I learned at the ACIPA Conference

As noted in the previous post, last Friday I was in BrizVegas for the ACIPA Copyright Conference.

Naturally, I learned much. But here are two things I really didn't know, that I should note.

First, this year, the Attorney-General's Department is planning to do a review of the 'orphan works' issue. Orphan works are ‘copyrighted works whose owners are difficult or even impossible to identify or locate’. A work may become ‘orphaned’ for various reasons, including because the owner is dead, or the company which owned copyright has ceased to exist. There is plenty of evidence that orphan works do represent a real problem for cultural institutions and libraries, at least, and probably others. And, of course, we have just had the US Copyright Office hand down a report, noting this is a problem and proposing amendments to the US Copyright Act.

So, from a 'don't forget to do your homework' perspective, it is worth starting to think about your submissions now. I think a key in the US was the accumulation of evidence that there was a real issue. Real life examples, if they exist!

The other thing I learned at ACIPA was that everyone's favourite 'copyright liability for linking' case, Cooper (discussed in the last post) is on appeal to the Full Federal Court. I had kind of assumed it wasn't, but I woz wrong. Final orders were only made in December.

Now, I've managed to get my hot little hands on a copy of the Notice of Appeal (nothing wrong with that, it's a public document). It ain't that interesting. The E-Talk notice raises, well, everything under the sun, the Cooper notice is remarkably brief. Either way, it might be heard later this year.

 
Perfect 10 gets injunction against Google's use of thumbnail images

So on Friday, I'm at the ACIPA Annual Copyright Extravaganza in BrizVegas, and Matt Rimmer is talking about Google and all the court cases against it. And one of the cases is that brought by Perfect 10, suing over the existence of its (nudie wimmin) images in Google's thumbnail images as displayed in Google's Image Search function. And I have a bit of a laugh to myself, muttering phrases to myself like 'total try-on', and 'haven't you read Kelly v Arriba-Soft?' Then this morning, I get an email from a reader, with the title 'Girlie Photos Land Google in Legal Trouble', with a link to this SMH story. So I'm figuring, try on. Indeed, I shoot back a response - without reading said story - saying 'looks like a try-on to me'. Finally, this arvo I read the story. And, it transpires, there is an injunction. My reaction: what? Or, as Marty Schwimmer - says, 'wow'.

Now I've read the case. In essence, a preliminary injunction will be ordered against Google (terms yet to be determined) against its copying, and displaying , of thumbnail images of Perfect 10's nudie wimmin pictures.

The judgment has some amusing footnotes: footnote 4 is amusing, when it notes that Perfect 10 complained 'thumbnail' is a misnomer when the image may be 8 x the size of an actual human thumbnail. Oh, puh-lease. Amusement aside, however, the case is interesting - even for us Australians. I reckon most of the discussion in the blogosphere is likely to go to the 'fair use' issue: ie, is Google's creation, and display, of thumbnail pictures 'fair use'. The court said no - something I thought was pretty interesting.

But actually, from an Australian perspective, perhaps even more interesting are some of the parallels with Cooper, on liability for linking to stuff.


The extent of direct liability for linking to infringing material.

In this case against Google, the US court considers when Google can be liable for linking to material.

The first issue is whether Google infringing when it 'in-line links' to images on other people's websites. If you have used Google Image Search, you will know that when you click on a thumbnail, you get a split screen. The top half comes from Google's servers. The bottom half comes from the third party website. The bottom half is what you might call an 'in-line' link. The URL at the top will be the Google URL, but the bottom half is clearly coming from outside.

Is this an infringement? The relevant copyright right in US law is the right 'to display the copyrighted work publicly'. And the issue here is whether, in the 'in line link' bit, it is Google that is 'publicly displaying' the work, or whether it is the third party. As the court notes,

'From a technological perspective, one could define 'display' as the act of serving content over the web - ie, physically sending ones and zeroes over the internet to the user's browser'

On this theory (which the court calls the 'server theory') it is the third party doing the displaying. Alternatively, on the 'incorporation theory':

'one could define 'display' as the mere act of incorporating content into a webpage that is then pulled up by the browser.'

The court adopts the server theory, for a number of reasons:

'...the most appropriate test is also the most straightforward: the website on which content is stored and by which it is served directly to a user, not the website that in-line links to it, is the website that 'displays' the content. Thus, the Court adopts the server test, for several reasons.

First, this test is based on what happens at teh technological-level as users browse the web, and thus reflects the reality of how content actually travels over the internet...

Second, adoption of the server test neither invites copyright infringing activity by a search engine such as Google nor flatly precludes liability for such activity...

Third, website operators can readily understand the server test and courts can apply it relatively easily....

Finally, the server test maintains, however uneasily, the delicate balance for which copyright law strives - ie, between encouraging teh creation fo creative works and encouraging the dissemination of information. Merely to index the web so that users can more readily find the information they seek should not constitute direct infringement, but to host and serve infringing content may directly violate the rights of copyright holders.'

Does this debate sound familiar to anyone, oh my Australian readers? Where the US talks about 'publicly displaying' a work, we talk about 'communicating it to the public'. 'Communicate' is defined in the Act (s 10), to mean:

"to make available on-line or electronically transmit ... a work or other subject matter."

In Cooper, Tamberlin J was faced with a case where Cooper was managing a website that had many links to infringing mp3 files. Some were 'active links' that caused immediate download Despite contrary arguments from the copyright owners, Tamberlin J, too, applied what you might call a 'server' theory of communication, focusing on the technical realities behind the websites, rather than how things appeared to the user. Tamberlin J thus found that, while the Cooper website did facilitate the location and selection of files:

• Cooper had not 'made available' the sound recordings - it was the remote website that did that.
• similarly, it was the remote sites that 'electronically transmitted' the material to the user.

So note - despite the different wording of the US and Australian Acts, it would seem, on this point at least, there is some harmony.

Secondary (authorisation) liability for linking?

The second argument was that the search engine should be secondarily liable for the infringements of others. So the argument goes something like this:

• third parties infringe P10's material, the websites by reproducing their nudie pictures on third party websites without authorisation, and the users by downloading the infringing images
• Google is responsible for those infringements, either through contributory infringement (Google knew of the infringing activity, and induced, caused or materially contributed to it), or vicariously (Google received direct financial benefit form infringement, and failed to exercise a right to supervise/control the infringements).

The US court rejected the theories of secondary liability. While this is notable, I'm inclined to think an Australian court - despite the broader concept of authorisation we have in Australian law - would reach the same result. In Cooper, Tamberlin J found that Cooper had authorised infringement, but Cooper's site was a systematic index of copyright-infringing mp3s, on the findings of Tamberlin. Authorisation is at least more arguable there.

One interesting thing to note about this finding by the US court, however, is in footnote 17. There, the Court rejects the idea that when a user browses to a copyright infringing webpage, the user infringes through the temporary copy in the user's computer.

I reckon it's worth noting that in Australia, we might not reach the same result. Since the AUSFTA (and arguably before), we have had a definition of 'material form' that at least arguably ensures that all those temporary copies in the computer memory are reproductions withi the copyright owner's exclusive rights.* In order to ensure that browsing wouldn't be an infringement, the government inserted s 43A, which provides that

'The copyright in a work, or an adaptation of a work, is not infringed by making a temporary reproduction of the work or adaptation as part of the technical process of making or receiving a communication'

So far, so good, right? Our user who views something infringing online is not themselves infringing. But here's the kicker - subsection 2:

Subsection (1) does not apply in relation to the making of a temporary reproduction of a work, or an adaptation of a work, as part of the technical process of making a communication if the making of the communication is an infringement of copyright'

Yet here we have a US court saying that the user's 'caching' in RAM is fair use - even where the source material is infringing.

On one view, who cares, right? No user is going to be sued for this. Well, this Google case frankly shows why it is important. More often than not, this kind of infringement is used as the 'hook' in making an authorisation argument. Same thing happened in AVRA v Warner. The overbroad scope of primary infringement does matter because it affects what things third party technology providers are allowed to facilitate.

Oh, Attorney-General? Australian law should not be more restrictive than US law? Hello?

[*I should note that the effect of the new definition of material form is unclear; it is by no means a forgone conclusion that all temporary copies will in fact be covered]

And the fair use argument

The final thing that the case talks about is whether Google's creation, and display from its servers of thumbnail sketches was fair use. On this score, the case is interesting just for its treatment of US law. There seem to be a couple of things that really told against Google here:

• the sites Google linked to, that hosted infringing thumbnails, had Google-managed advertising on them. This increased the 'commerciality' of Google's use.
• More importantly, p10 were selling these little images - for mobiles. so there was market interference.

I reckon I'll leave discussion of that point to the real experts. This post is already too long.

[update: I knew I could count on the experts: here is the US commentary on the case:

• William Patry comment 1 (with comments about implied license and particularly fair use) and comment 2;
• Siva Vaidhyanathan (with comments about the implications for the Google Book Project)
• Marty Schwimmer of the Trademark Blog
• TechLawAdvisor (with links to pictures, apparently not nude)]
• Fred Von Lohmann at Electronic Frontiers Foundation (the news isn't so very bad...)

More news coverage at CNet here.

 
There are ways, and then there are ways, to apply for an adjournment of a directions hearing.

This (in the intriguingly named Jeremy Jones and on behalf of the Executive Council of Australian Jewry v The Bible Believers* Church ) is one of the more unusual. Note in particular the letter attached to the reasons of Justice Conti.

 
I should have noted...

That the Kazaa case is back in court today - and all this week - on appeal before the Full Federal Court of Australia. I wish the judges well in their endeavour to navigate the complicated issues in the case.

I hope they've all read this rather good piece by Graeme Austin on the case and on Grokster.

 
The OTSOG principle

So I am as guilty as just about anyone of crediting Isaac Newton with the comment that 'If I have seen further it is by standing on the shoulders of Giants".

Patry corrects me. My only question now is - how do I credit it? As a quotation of somewhat uncertain origin originating in the 12th Century? That's just so much wordier...

 
New Journal Copyright

A colleague just pointed out this new journal, Copyright, to me. Here's the blurb from the website:

'Copyright, a new open-access, peer-reviewed journal led by a renowned editorial team, seeks papers on all aspects of copyright in the Internet age. The journal features a rapid review and publication time while maintaining rigorous standards regarding the quality of the work. Copyright focuses on detailed research and case studies vetted by peer-review; opinion pieces and shorter communications are also invited and will be accepted at the editors' discretion. Because the journal is open-access, the author retains the copyright to his or her works.

Copyright is structured to be a new type of journal, not just a place to publish ideas but a locus to generate them--vital in an area of academic interest largely composed of subdisciplines of other fields. For instance, while the majority of articles will still be published in the traditional fashion, a novel, collaborative approach has been implemented as well. Potential authors can simply begin contributing to such an article while the system tracks the individuals' contributions. The article is then submitted through the normal review process and, if accepted, authorship is assigned based on the tracked contributions as the last step of the review process.'

The journal has a seriously good set of editors on its board, including: Rosemary Coombe, Michael Geist, William Landes, Lawrence Lessig, Stan Liebowitz, and William Patry (among others). Key things to note here - (a) potentially quick turn around time, being an online publication, (b) open access - meaning people can find your stuff (c) interesting ideas to expand beyond traditional straightforward publication and (d) a list of editors that makes it look like they are serious about their interdisciplinary credentials - these are not just lawyers, and in fact include some of the more important cross-disciplinary writers in the field. The editorial board is also notably international. It looks like it might be a bit like First Monday, but with a more legal/copyright focus. Definitely worth keeping an eye on, and worth sending something to them.

 
RIAA Changing Tune on Copying to your iPod? [updated! and updated again!]

The blogosphere is alive over the last few days with reports that the RIAA are saying that format shifting copying, like copying music from a legitimately-purchased CD onto your iPod, is not fair use. This appears to be inconsistent with:

• the position on their website (and still on their website) that 'If you choose to take your own CDs and make copies for yourself on your computer or portable music player, that's great. It's your music and we want you to enjoy it at home, at work, in the car and on the jogging trail'
• the position taken in the Grokster hearings, where the RIAA lawyer said that 'The record companies, my clients, have said, for some time now, and it's been on their website for some time now, that it's perfectly lawful to take a CD that you've purchased, upload it onto your computer, put it onto your iPod'

The shift can be found in a filing in the current DMCA Rule-Making (on creating exceptions to the DMCA ban on circumvention of access controls), where they have said this:

"Nor does the fact that permission to make a copy in particular circumstances is often or even routinely granted, necessarily establish that the copying is a fair use when the copyright owner withholds that authorization. In this regard, the statement attributed to counsel for copyright owners in the MGM v. Grokster case is simply a statement about authorization, not about fair use."

Some might say this isn't actually a shift in position. The statements above both say that ripping to your MP3 player is lawful, not that it is fair use. It could be that their position was that such uses were impliedly licensed - not that they were fair.

But let's unpack that a little. Think about the implications of not calling this licensed use and not fair use. In the Grokster case, Verelli was answering a question as to whether the copyright owners' argument would make the iPod illegal. Ripping CDs to the iPod was cited as the non-infringing use that took the iPod out of danger territory. But if ripping CDs is licensed use, and the 'license' can be 'revoked', then whether the iPod has a significant non-infringing use - and hence whether it is legal or skirts the borders of what is allowed - depends on the whim of the copyright owners. That would be a strange result indeed. Necessarily, I think you have to conclude, the RIAA are being inconsistent.

As usual, my question is - is this at all significant for Australia? Well, on one level, the timing couldn't be worse. The Fair Use Inquiry is still ongoing - the Attorney-General has not yet announced what, if any new exceptions will be created for private copying. But the Attorney-General has been out there saying that copyright law should not be more restrictive on users in Australia than in the US. It therefore matters what the law is, or is perceived to be, in the US. In the past, I've commented on the difference between the (apparent) RIAA view, and the ARIA view, on what is allowed, as being reason to change Australian law to allow format-shifting. Some might see this RIAA view as undercutting an argument that format-shifting should be allowed in Australia.

In my view, that would not be the right conclusion to draw. Most obviously, regardless of what the US say or do, the law is still an ass in this area in Australia (see also my paper on this). Something does need to be done or the law will continue to be the subject of disrespect and disbelief - which is not a good thing if you believe in copyright.

Second, I'm not at all convinced that the RIAA would be right about this not being fair use. The use is, after all, non-commercial. It may not be transformative. But most importantly, I'm not convinced that it interferes with the copyright owner's market. When a user buys a CD, the fact that they can rip it to an MP3 player, and listen to it even when they can't carry the CD around, increases the value of that CD to the user - and increase the price they are willing to pay for the CD (as well as increasing the likelihood they will buy CDs). So presumably the record company gets some value from the space shifting. Surely you cannot assume that copyright owners have a right to get paid twice for the same work?

Third, and this is particularly important from an Australian perspective, the RIAA shift - whether this is an actual shift, or whether they are trying to qualify the 'license' they give for this activity - underlines the need for an actual exception to be inserted into the statute legitimising format-shifting. Over time, the RIAA line, and the wide availability of iPods, have created a pretty strong expectation on the part of users that they will be able to format shift. It has also encouraged a growth in devices that can be used to make music portable. I'm not sure that it's legit to suddenly 'revoke' that, on a whim. Certainty is important - both to users, who invest in equipment and digital media, and the makers of digital equipment.

Update: I should also have noted that the same filing also had this to say: "Similarly, creating a back-up copy of a music CD is not a non-infringing use....". Bah, humbug.

update 2: Techdirt put the story even better: in a post entitled "RIAA Says It's Granting You A Favor In Letting You Use Your iPod", they note that:

The latest move [by the RIAA] is to suggest that the fact you can transfer (some) songs from CDs (that don't have copy protection) to your iPod has nothing to do with fair use (which they like to pretend doesn't exist) and is simply a gracious favor that the recording industry offers everyone by choice"

 
The Government's (IP) Legislative Agenda [updated]

Rothnie very usefully notes that the Cth has released its draft legislative agenda for the Autumn sittings. On the IP front, it includes a few pieces that I had predicted back when I was crystal ball-gazing in January, plus some other stuff of general interest.

It's worth noting that none of the IP legislation is marked for introduction and passage in the Autumn sittings (ie, none are 'starred bills' on this list). Though, these things can always change...

Copyright Amendment (Exceptions, Enforcement and Other Measures) Bill
- implement outcomes from government copyright law reviews during 2005
- introduce reforms in relation to the jurisdiction and procedures of the Copyright Tribunal and make minor miscellaneous drafting amendments.

I'm assuming that the main 'reviews' that this would be talking about are the Copyright Exceptions Inquiry (the 'iPod inquiry' or 'Fair Use Inquiry'), and possibly, the Review of the scope of exemptions for internet service providers. It also looks like the AG is planning to make good on his proposal, from his speech in November, to bundle dealing with exceptions to the beefing up of enforcement provisions against the genuine 'pirates'. I wait with baited breath.

Copyright Amendment (Indigenous Communal Moral Rights) Bill
- provide moral rights to Indigenous communities in certain copyright works and films

Ah, yes, that old chestnut. How very, well, 1990s. But since it has been promised as a 'coming development' for, oh, several years now I guess it does need to be got off the agenda. It is, however, beyond my area of expertise, and I've not been privy to the drafts that have in the past been passed around so I've no comments on its substance. yet.

Jurisdiction of the Federal Magistrates Court Legislation Amendment Bill
- give the Federal Magistrates Court jurisdiction in certain matters

This Bill is already before the Parliament. The Bill, EM, and 2nd reading speech can be found at BillsNet here. A Parliamentary Library Research Paper can be found here. Warwick Rothnie has previously explained the relevance of this to IP matters. While the Bill will not give jurisdiction in relation to trade mark or patent, as ACIP had proposed in its report, it would allow the Federal Court generally to refer matters down, and would increase the jurisdiction in relation to trade practices matters. [Update: it is worth perhaps noting that the FMC has already considered at least two cases, one that is a trade mark infringement case (Nickhun Pty Ltd v Grifkam Pty Ltd [2004] FMCA 994), and the other than looks like one (Melbourne's Cheapest Cars v Melbourne Street Cars [2004] FMCA 606)]

Intellectual Property Laws Amendment Bill
- amend the Patents Act 1990, the Trade Marks Act 1995, the Designs Act 2003 and the Plant Breeder’s Rights Act 1994 to give effect to the outstanding aspects of the government’s response to the Intellectual Property and Competition Review report and the Advisory Council on Industrial Property report on patent enforcement and to make other minor amendments

This one's hard to understand. I've tried reading the Government's response to the IPCRC Report (or, at least, I read it and tried to keep a straight face) - much of the response has either already been done, or looks rather farcical post-FTA (you know, proposals like 'don't extend copyright term without full analysis of costs/benefits', or 'undertake amendments on databases only after cost/benefit analysis', 'welcome Committee's view that anti-circumvention regime strikes an appropriate balance'). The problem is identifying what is outstanding. It could be:

• recommendations that the ACCC issue guidelines on what matters it considers to be relevant to the determination of reasonable remuneration and other conditions of licenses that currently can or will be able to be the subject of determination by the Copyright Tribunal under Part VI of the Copyright Act
• or maybe it's something to do with s 51(3) TPA and the issue of IP licensing guidelines by the ACCC.

If anyone can enlighten me here, I'd be most pleased! As for the Government's Response to the ACIP Report on Enforcement of IP rights, this could mean the government is planning to:

• remove the jurisdiction of state and territory supreme courts to revoke a patent
• introduce exemplary damages for patent infringement
• implementing a process to enable seizure of imported goods that infringe patent rights.

Trade Marks Amendment Bill

- amend the Trade Marks Act 1995 to implement a number of changes subsequent to a review of the Act. The changes will clarify uncertainties in the operation of the Act, implement policy changes that have occurred in the last decade since the Act was reviewed and make a number of minor corrections Nothing too spectacular here, I don't think. IP Australia has been conducting a Review of Trade Marks Legislation; that discussion has focused on fairly technical matters. But it could be a good chance to clean up some of the trade marks legislation.

Notice anything missing? According to this schedule, we won't be seeing the legislation, in this sitting, on the amendments to Australia's anti-circumvention regime. This is not surprising: the LACA is not due to report until the end of February on exceptions to the anti-circumvention laws, and presumably the government will require some time to digest, and consult on, anything coming out of that committee. We could, of course, still see draft legislation, although the government's present approach to consultation appears to be to speak to targeted stakeholders on detail (as is occurring in relation to the copyright exceptions review, according to the Attorney-General), rather than making consultations public or transparent.

 
More commentary on orphan works

US copyright expert William Patry (Former copyright counsel to the U.S. House of Representatives, Committee on the Judiciary; Policy Planning Advisor to the Register of Copyrights) has commented on the US Copyright Office's orphan works proposal, which I commented on briefly last week. Prof. Patry has also written, with Justice Posner, on orphan works (get the article here). Worth noting this paragraph from Patry's commentary:

'As with all such recommendations, there will be those who are disappointed that their recommendations were not adopted and some who are relieved more sweeping changes were not suggested. The report is, however, principally a discussion document, one for Congress to evaluate to determine first if it believes a legislative inititative is warranted, and if so, what its initial form should take. If legislation is proposed, there will be plenty of opportunity for all to have their say and attempt to shape the final product. The proper way to view the report, therefore, is as an excellent vehicle with which to advance the debate.'

 
Interesting little patent judgment handed down Friday on joint patentees

The question in Conor Medsystems Inc v The University of British Columbia (No.2) [2006] FCA 32 (Finkelstein J) was this:

• if you have two joint patentees
• one of those joint patentees is a University which claims title through two people claiming to be inventors,
• but it turns out that those people were not in fact inventors,
• is the patent liable to revocation, on the grounds that it was not granted to the actual inventors or those claiming under them - even though the other patentee is not affected by the problem?

Finkelstein held yes: the patent is liable to revocation in these circumstances, because it was not granted to the 'actual inventors' or those claiming title through the actual inventors. Although Finkelstein noted that there are several questions still open:

• if this ground ends up being made out, is the making o fa revocation order discretionary, and if so, should the discretion be exercised?
• can the other patentee seek a declaration that it is an eligible person in relation to the claimed inventions, so that it can take steps to obtain the grant of patents for itself, and
• is the power of rectifiaction available in lieu of revocation?

 
Advertising is dead? Not yet.

I've always been a little skeptical of the view that says in a PVR and TV-on-demand world, the advertising paradigm is dead. But seriously? this Schlesinger post over at Huffington Post kind of takes the cake, in noting that:

• people TiVo the superbowl, not to watch the football, but to watch the advertisements;
• New York Times has a listing of which ads are going to be on in what quarter

This is advertising as event, as entertainment medium in its own right. Now, of course, I've always thought that the football itself was practically unwatchable (and I thought this even when I was living in the states), but really. I guess the ad-fest and dissection is the way that the part of the population like me (ie, not interested in American Football) get to join in the event.

 
Great moments in Quality of Teaching Surveys

Not mine (this comes via Division of Labour), but I've seen similar:

Question:

What did you dislike and/or value least about this course and why?
Student's answer: I did not like how there wasn't a whole lot of reviewing material. We were sometimes expected to know the information.Sigh. Nuff said.

 
Worth noting...

There's a story in the Australian Financial Review today (sorry, not available online) which notes some comments by the Attorney-General appearing to favour harmony on copyright exceptions, and noting that it seems 'intrinsically unfair' if material that would be able to be used under fair use in the US is not so freely useable here in Australia.

 
Recent Anti-Tobacco Advertisements.

Has anyone noticed the recent anti-smoking advertisements showing on television in Australia - you know, the ones that talk about how no matter what colour the pack, and no matter whether called 'mild', or 'light', or 'low tar', cigarettes are still toxic? Probably you have - they've been around quite a lot lately.

So here's the question: how many people, do you think, realise that this is corrective advertising, required as a result of some undertakings given to the ACCC by some of the leading cigarette manufacturers in Australia? And why isn't that part of the advertisement?

Last year, the ACCC conducted an investigation of cigarette brand-naming and packaging activities. They concluded that British American Tobacco Australia Limited, Philip Morris Limited and Imperial Tobacco Australia Limited had represented that low yield cigarettes marketed and packaged as 'light', 'mild', 'medium', 'ultra-light', 'micro' etc and/or brands bearing numbers such as '1', '2', '4' '6', '12', referring to average levels of machine tested tar, nicotine and/or carbon monoxide emitted from cigarettes had certain health benefits in comparison to those marketed as regular or higher yield cigarettes. This, according to the ACCC, was misleading and likely to breach section 52 of the Trade Practices Act 1974 in that low yield cigarettes are not necessarily less harmful to the health of a smoker.

So I'm randomly wondering a couple of things:

1. Wouldn't corrective advertising be more effective if it said it was corrective? I'm guessing that part of the reason there is no comment along those lines might be that the undertakings were given without any admitting by the cigarette companies that they were indeed liable under the TPA. But there's no doubt that the advertising is pretty tame compared to most of the anti-smoking stuff, and I don't think it actually says that the 'light' or 'mild' cigarettes are as harmful as ordinary ones - just that they are harmful.


2. Does this suggest that any trade mark registrations for 'light' or 'mild' cigarrettes should be removed from the Trade Marks register as being contrary to law to use?


3. Do any countries actually ban such forms of advertising naming and branding practices (calling cigarettes mild/light, or putting them in light-coloured packaging)? Because what we have in Australia is quite a long way from a ban, even though it is a court-enforceable undertaking binding certain companies.

Just some thoughts.

 
Headline of the day:

"Pigeons to blog pollution" (on Slashdot).

The mind boggles. "Coo, coo, cough cough, coo coo".

 
More other news - on the Blackberry dispute

I commented the other day about the Blackberry patent dispute between RIM, makers of the Blackberry device, and NTP. My comments were basically on the court processes, but there are ongoing issues happening in the Patent Office. The new development? I'll just quote TechDirt:

The US Patent Office today issued yet another non-final rejection of an NTP patent, meaning all five at the center of its legal battle with Research In Motion have been given non-final rejections. ... It's been said before, but bears repeating: to rule in the case before the Patent Office acts seems awfully premature.

 
And in other news...

...the OECD has just held a major conference on the Future of the Digital Economy. Michael Geist, who attended, has a summary of the 'big themes: the battle over DRM, and network neutrality.

 
US Copyright Office Recommendation on Orphan Works Released (updated and updated again!)

(via Joe Gratz) The US Copyright Office has recently conducted an inquiry into the impact of copyright on use of, and access to orphan works - in essence, works where the owner of copyright cannot be identified. The very long time copyright lasts tends to lead to lots of these orphan works - where copyright owners die, or go out of business. It has often been noted that copyright term extension gave protection that might be useful for a very small proportion of works, but also closed off the possibilities for using, or making available the massive body of these little orphans. The 'orphan works' issue has garnered a fair bit of attention, recently, because it is an area where the copyright law demonstrably does not serve its basic purposes:

a productive and beneficial use of the work is forestalled – not because the copyright owner has asserted his exclusive rights in the work, or because the user and owner cannot agree on the terms of a license – but merely because the user cannot locate the owner. Many users of copyrighted works have indicated that the risk of liability for copyright infringement, however remote, is enough to prompt them not to make use of the work. Such an outcome is not in the public interest, particularly where the copyright owner is not locatable because he no longer exists or otherwise does not care to restrain the use of his work.

Anyway, the US Copyright Office has now produced a very large report (pdf here), and (to cut to the chase) a recommendation for the following addition to the US Copyright Act:

SECTION 514: LIMITATIONS ON REMEDIES: ORPHAN WORKS
(a) Notwithstanding sections 502 through 505, where the infringer:
(1) prior to the commencement of the infringement, performed a good faith, reasonably diligent search to locate the owner of the infringed copyright and the infringer did not locate that owner, and
(2) throughout the course of the infringement, provided attribution to the author and copyright owner of the work, if possible and as appropriate under the circumstances,
the remedies for the infringement shall be limited as set forth in subsection (b).
(b) LIMITATIONS ON REMEDIES
(1) MONETARY RELIEF
(A) no award for monetary damages (including actual damages, statutory damages, costs or attorney’s fees) shall be made other than an order requiring the infringer to pay reasonable compensation for the use of the infringed work; provided, however, that where the infringement is performed without any purpose of direct or indirect commercial advantage, such as through the sale of copies or phonorecords of the infringed work, and the infringer ceases the infringement expeditiously after receiving notice of the claim for infringement, no award of monetary relief shall be made.
(2) INJUNCTIVE RELIEF
(A) in the case where the infringer has prepared or commenced preparation of a derivative work that recasts, transforms or adapts the infringed work with a significant amount of the infringer’s expression, any injunctive or equitable relief granted by the court shall not restrain the infringer’s continued preparation and use of the derivative work, provided that the infringer makes payment of reasonable compensation to the copyright owner for such preparation and ongoing use and provides attribution to the author and copyright owner in a manner determined by the court as reasonable under thecircumstances; and
(B) in all other cases, the court may impose injunctive relief to prevent or restrain the infringement in its entirety, but the relief shall to the extent practicable account for any harm that the relief would cause the infringer due to the infringer’s reliance on this section in making the infringing use.
(c) Nothing in this section shall affect rights, limitations or defenses to copyright infringement, including fair use, under this title.
(d) This section shall not apply to any infringement occurring after the date that is ten years from date of enactment of this Act.

So, to summarise this rather wordy piece of proposed legislation, what you have to do is:

• before doing the infringing thing with the work, you do a good faith, reasonably diligent search to locate the owner of the infringed copyright and the infringer did not locate that owner
• if possible/appropriate, you give attribution to the owner while doing the act.

If you do these things, then:

• there can be no award of damages, only an order for reasonable compensation (and not even that if your use was non-commercial and you stop once receiving a notice of the claim of ownership);
• no injunction will be issued that prevents the infringer from using their derivative work that recasts, transforms or adapts the infringed work with a significant amount of the infringer’s expression;
• if there is no such transformation etc, an injunction can issue but the infringer must be compensated for the harm they suffer from relying on the section.

A couple of things to note about this proposal.

First, a key advantage of this system, it seems to me, is that it does not require the 'infringer' to get permission from someone beforehand - they can act without going through some bureaucracy. This would have significant advantages in terms of reduced transaction costs. Compare this to the Australian Copyright Council's proposal for dealing with orphan works, which would require a prospective user to seek permission from some body like the Copyright Tribunal or Federal Magistrates' Court, and payment of a license fee, or the Canadian System which also requires permission beforehand.

I have always thought that replacing the transaction costs involved in the need to find the copyright owner, with new and different transaction costs involved in seeking prior permission, would lead to a situation of no change, and would not solve the orphan works problem. (For more evidence on the orphan works issue in Australia, and discussion of the issue, see my submission with Emily Hudson to the Fair Use Inquiry here in Australia).

Another thing to note about the proposal is the comment made by Joe Gratz:

'The proposed statute bucks the trend in copyright law to micromanage individual cases through statutory drafting. (See, e.g., 17 U.S.C. § 114.) It allows the courts to consider the most important equitable issues on a case-by-case basis — which is what courts do best.

I've complained elsewhere about the same tendency in Australian law, and the tendency to overcomplicate things with amazingly detailed provisions. I agree with Gratz - the language is pretty open-textured and that may well be quite a good thing.

This proposal is a wake-up call, I think, for Australia as it contemplates its own moves in relation to copyright exceptions. Many, many submissions in the Fair Use Inquiry raised the issues of orphan works. There was plenty of evidence there is an issue. And, indeed, copyright owning interests also acknowledged that there was an issue and that something should be done about it. The concern I had about the solutions proposed was that they were "Australian solutions" that proposed extra layers of bureaucracy which would, I think, offer little advantage. Part of the reason for this, I think, is illustrated in the Copyright Council's reasons for its proposal:

We think that any mechanism allowing the use of “orphaned” works should require the payment of a licence fee, or there is a risk that users will choose to use “orphaned” works instead of works available for licence, and adversely affect the market for those works. The licence fee may vary depending on the type of use; a commercial use would likely require a higher use than a non-commercial one.

This is a completely understandable reaction, although I'm not sure that it is realistic. After all,

• the easier solution for users wanting to avoid copyright license fees is to use material clearly out of copyright (Shakespeare!); and
• most copyright material, while in some sense 'substitutable', in other respects is not. A Beatles song is not completely and clearly replaceable with a Black Sabbath song, or even a song by Blur, similar as some of them sound.

My hope would be that:

• something along the lines of what the US is proposing might be adopted there, and
• something similar might happen here.

We need this to happen so that we don't end up with a whole lot of bureaucratic procedures, required in each country where there is a copyright law. The US moving in that direction would be a big step towards a harmonised solution, avoiding the problems that Geller foresaw:

‘The problem of orphan works is best solved globally. Such a solution should facilitate making orphan works accessible to members of the public worldwide. The solution should also spare users the trouble of having to start procedures with national copyright or like offices one after another.’

But as I submitted at the time of the Fair Use Inquiry, we could have more consultations directly on that issue. With more time to think about this proposal, no doubt there will be details that need working through.

True confessions? I've not read the report yet, just the recommendation. Look forward to reading it! And PS - for a collection of my previous posts relating to orphan works issues, click here.

Update 1: Public Knowledge have issued a press release on the recommendation. Here are some of their comments:

'The concern with the Copyright Office’s recommendation is that “reasonable compensation” based on what a willing buyer and reasonable willing seller would have agreed to at the time of use, “based predominantly by reference to evidence of comparable marketplace transactions,” does not adequately address the issue of orphan works. The whole problem is that there is no “comparable marketplace transaction” for an orphan works situation because there was no reasonable willing seller in the first place. To allow a court to decide what would have been reasonable retroactively, we think, creates too high of a hurdle for potential users of an orphan work, and will ensure that the orphans stay locked away in the orphanage.

That’s why we proposed a cap [PDF] on the amount that a user of an orphaned work would have to pay to the owner. This gives the user of the work a tangible amount of certainty of what he or she would have to pay if the owner surfaced. Without this kind of cap, we don’t believe any one would use an orphan work—it’s just too risky.

Update 2: Eric Goldman has some comments here, noting that:

'My initial reaction is that there is a lot to commend this proposal. It addresses one of the big problems of copyright law--the across-the-board strict liability standard--by providing a more robust defense for those trying to do the right thing. (The current defense of "innocent infringement" offers little comfort to secondary users--there's still a lot of money on the table in an infringement claim).
The proposal also helps protect the investment that secondary users make into derivative works from being subject to an injunction-driven hold-up game. In a sense, this proposal contemplates a court-determined licensing fee where the parties couldn't identify themselves to negotiate a fee directly.'

 
Proof positive that politicos can be childish.

Here.

(if proof were required). Sigh.

 
Multicultural Arts Law Week in Fitzroy, Melbourne - next week 6 - 10 February 2006

Next week, the Arts Law Centre is providing a week of FREE seminars, workshops and advice clinics on legal issues relevant to the multicultural communities in Melbourne. They're running in Fitzroy. The event is a partnership between the Arts Law Centre of Australia, Multicultural Arts Victoria, the Victorian Multicultural Commission and the City of Yarra. The seminars cover things like:

• employment rights and contract
• copyright and moral rights
• licensing IP
• dealing with galleries and publishers
• incorporation, financial matters, insurance
• running festivals
• more!

They are also providing free face to face legal advice. Wow! I'm not sure where bookings are at, but you need to book by calling Multicultural Arts Victoria on on 03 9417 6777, or or email office@multiculturalarts.com.au. You can get the pdf brochure here, or visit Multicultural Arts Victoria website here.

 
Privacy Act referred to the ALRC (yay!)

The Attorney-General announced yesterday that the Australian Law Reform Commission will review the Privacy Act 1988 (Cth). The ALRC press release is here. As AG's media release notes:

'Two recent reports by the Privacy Commissioner and the Senate Legal and Constitutional Committee into the effectiveness of the Privacy Act have both recommended that a comprehensive review of the Privacy Act be undertaken.
“It is timely to respond to these recommendations and review the overall effectiveness of the Privacy Act to see where improvements can be made,” Mr Ruddock said.

The review will examine existing Commonwealth, State and Territory laws and practices and will consider the needs of individuals for privacy protection in light of evolving technology.

“This is an important area given the rapid technological advances in information and communication storage and surveillance,” Mr Ruddock said.The ALRC will also examine current and emerging international law in the privacy area and consider community perceptions of privacy and the extent to which it should be protected by legislation.'

The two reviews the AG refers to can be found here:

• Senate Legal and Constitutional Affairs Committee, The Real Big Brother (final report June 2005)
• Australian Privacy Commissioner, Getting in on the Act: The Review of the Private Sector Provisions of the Privacy Act 1988 (Final Report May 2005).

According to the terms of reference, the ALRC will consider:

1. relevant existing and proposed Commonwealth, State and Territory laws and practices
2. other recent reviews of the Privacy Act 1988
3. current and emerging international law and obligations in this area
4. privacy regimes, developments and trends in other jurisdictions
5. any relevant constitutional issue
6. need of individuals for privacy protection in an evolving technological environment
7. the desirability of minimising the regulatory burden on business in this area, and
8. any other related matter.

The review will be led by ALRC Commissioner, Associate Professor Les McCrimmon - a former colleague of mine from Sydney University.

This reference is good news, I think. For one thing, the terms of reference are pretty broad. And the good thing about the ALRC is that they do a more 'active' review than other bodies like Parliamentary Committees (ie, they don't just wait for submissions).

While we might well ask why we need another review, given the two recent ones - those reviews only highlighted the need for a more wide-ranging, considered inquiry into the issues of privacy and the adequacy of Australian law. And no one can deny (what with ongoing developments in this so-called 'war on terror', and the developments in surveillance that are ongoing and ever-changing) the need for an ongoing debate. Don't hold your breath though - this is a long term thing, with the report due in March 2008.

 
Kazaa-Watch

Yesterday I asked whether anyone knew what was going on in the Kazaa case (you know, the one where the Music Industry is suing Sharman (Kazaa) for providing P2P software and authorising infringement of copyright. In particular, I was asking whether the contempt hearing previously scheduled for Monday 30 Jan went ahead.

My query has been answered! David tells me that the question of contempt has been reserved for the Full Court hearing in the case: an order has been made (available in the ESearch facility of the Federal Court's database, CaseTrack), to this effect:

'Pursuant to s 25(6) of the Federal Court of Australia Act (Cth) 1976, reserves, for the consideration of the Full Court constituted to hear pending appeals in this matter, the question whether, having regard to the nature and terms of order 4 made on 5 September 2005, a determination of contempt of court may be made in respect of the contraventions of that order alleged in the statement of charge.'

So this adds to the long list of things that Branson, Lindgren, and Finkelstein JJ will be pondering in the week commencing 20 February 2006 (soon!).

Ta David!