THE AGD e-NEWS ON COPYRIGHT
Issue 29 - June 2003

The Copyright Law Branch has been responsible for leading negotiations on arrangements for determining Commonwealth liability for use of copyright.

After a long negotiation addressing a range of new and complex questions, the Commonwealth has now finalised an agreement with the Copyright Agency Limited (CAL) as provided for under Division 2 of Part VII of the Copyright Act 1968.

The agreement is in relation to copying and electronic communication of copyright materials.  It takes into account amendments in 1998 in relation to sampling and those made by the Copyright Amendment (Digital Agenda) Act 2000.

The agreement covers the obligations of the Commonwealth and thus it extends beyond Commonwealth Departments to a range of non-statutory and statutory bodies that are part of the Commonwealth administration.

Individual departments and agencies are currently in the process of subscribing to the agreement.

The agreement is constructed around three sets of liabilities:

•  photocopying and faxing of print material - excluding newspapers;
•  photocopying and faxing and digital copying and communication of newspapers; and
• digital copying and communication of journal and magazine articles made available internally on a database.

Liability in relation to photocopying of print material, excluding newspapers, is determined by sampling.

The liability in relation to photocopying of newspapers and digital copying and communication of newspapers will be dependent upon a mechanism for estimating individual agency usage.  Payment for photocopying and faxing will be dependent on a page rate payment.  For digital copying and communication of newspapers a scale has been established to provide for liability dependent on the number of users (or potential users in the case of Intranet access).  Some agencies already have commercial arrangements for accessing news that will stand outside of this aspect of the agreement.

Liability in relation to digital copying and communication of copyright material such as journals and magazine articles will consist of a fixed annual payment per employee while data is collected and negotiations pursued in relation to future terms for such use.

Further information is available from Angela Tsongas, email: angela.tsongasATag.gov.au or
tel:  02 6250 6758.

A review of the amendments to the Copyright Act 1968 (Cth) contained in the Copyright Amendment (Digital Agenda) Act 2000 (Digital Agenda Act) commenced on 1 April 2003. 

Background to the review

When introducing the Copyright Amendment (Digital Agenda) Bill 1999 into the House of Representatives on 2 September 1999 the Attorney-General, the Hon Daryl Williams, AM QC MP proposed that the operation of the legislation be reviewed within 3 years of commencement.

The Digital Agenda Bill received Royal Assent on 4 September 2000 and the amendments to the Copyright Act commenced on 4 March 2001.  The review of those amendments, as foreshadowed by the Attorney-General is being conducted by the Attorney-General's Department and is due to be completed in 2004. 

External consultant to conduct major part of review

The Government has announced that amendments to the Copyright Act 1968 (Cth) will be introduced into Parliament later this year to give Indigenous communities legal standing to safeguard the integrity of creative works embodying traditional community knowledge and wisdom. Under the proposals, Indigenous communities will be able to take legal action to protect against inappropriate, derogatory or culturally insensitive use of copyright material in regard to which an agreement exists between the creator and the community.

The legislation will implement the Government's commitment in its Arts for All policy at the 2001 election to provide moral rights that give Indigenous communities a means to prevent unauthorised and derogatory treatment of their works and comes amid growing international interest in Australia's rich heritage of Indigenous art and culture.

Development of these provisions also follows a call from Senator Aden Ridgeway, Indigenous Affairs spokesman from the Australian Democrats, for new protection for Indigenous communities.

The existing moral rights provisions of the Copyright Act give individual authors the right to be identified as the author or artist of their work and to take action to prevent false attribution of the author or derogatory treatment of these copyright works and films.  However, Indigenous communities as such do not currently have legal standing to bring moral rights court actions regarding the treatment of Indigenous material.

The legislation would introduce Indigenous communal moral rights in relation to a work (including an artistic work) or film based on an agreement between the author/artist and the Indigenous community. These rights could be independently exercised by the community and would mirror the nature and scope of authors' moral rights as far as possible.

These proposals are aimed at providing certainty and assisting users and purchasers of items to identify those works and films to which the rights attach, and will facilitate cooperation and respect between artists, authors, film-makers and Indigenous communities.

Drafting of the proposed amendments has commenced and the Government has announced that it will continue to consult in fine-tuning the new provisions.

CASE LAW UPDATE

On 11 April 2003 the High Court granted Network Ten leave to appeal against the decision of the Full Court of the Federal Court in TCN Channel Nine Pty Ltd v Network Ten Ltd [2002] FCAFC 146.  The High Court will hear arguments on the operation of ss 14, 25(4) and s 87 of the Copyright Act 1968 (Cth), in order to determine whether Network Ten infringed the copyright in Channel Nine broadcasts when re-broadcasting extracts of Channel Nine broadcasts in its programme 'The Panel'.

In this case, the applicants, three record companies, sought discovery and inspection of records stored on computer hard drives, CD ROMs and backup tapes.  The applicants claimed that websites hosted by three Australian Universities were used to reproduce and communicate MP3 files which infringed their copyright in musical works and sound recordings.  The applicants sought access to the records in order to determine who the persons doing the infringing conduct were, and to determine whether to make a claim for relief under the Copyright Act.  The Universities argued that the information sought went beyond the language of the Federal Court Rules (specifically Orders 15A rr 3 and 6), and initially opposed the orders based on privacy and confidentiality reasons.  They also offered to provide discovery on a more limited basis than that sought by the applicants.

The Court (Tamberlin J) held that the information sought was a "document" for the purposes of the Federal Court Rules, noting the definition in O 1 r 4 of the Federal Court Rules as amplified by the dictionary to the Evidence Act 1995 (Cth), and having determined there was power to make an order in relation to those items, exercised his discretion in favour of ordering discovery and inspection.  In so doing, Tamberlin J expressed the view that in applications of this kind some degree of "fishing" may be appropriate and that privacy concerns would generally be dealt with through express undertakings and rules related to the discovery process.  The Court outlined an appropriate discovery and inspection process broadly in line with that sought by the applicants but encompassing concerns related to confidentiality and privilege; however it abstained from making substantive orders.  The matter was stood over for 14 days to enable the parties to consider the Court's conclusions.

In this case a photographer, Mr Sullivan, was commissioned by FNH, the operator of a holiday resort, to take photographs of the resort for advertising purposes.  FNH believed the photographs were not of sufficient quality and did not make full payment to Mr Sullivan under the contract.  Nevertheless, FNH used the photographs in a number of its advertisements.  Mr Sullivan brought an action for copyright infringement.

The Federal Court held that FNH did not receive a licence to use the photographs until full payment was made under the contract.  Accordingly, FNH had infringed the copyright in Mr Sullivan's photographs.  Mr Sullivan was awarded damages, including additional damages under s 115(4) of the Copyright Act due to the flagrancy of FNH's infringement. Costs were awarded to Mr Sullivan on an indemnity basis as the Court held that it should have been apparent to FNH that it had no defence to the claim and that the infringement was flagrant (see Sullivan v FNH Investments Pty Ltd [2003] FCA 383).

In this case the Federal Court made an Anton Pillar order against the respondents based upon an alleged breach of s 135ANA of the Copyright Act.  The applicants claim that a decoding device known as a 'smart card' is being used at the respondents' premises, the Commercial Hotel in Hay, to view pay TV broadcasts for commercial purposes.  The Court held that a strong case had been made by the applicants and that it was a case where an Anton Pillar order was appropriate, especially given the nature of the 'smart card'.

On 22 March 2003 BBC World made an urgent application to the Federal Court seeking interlocutory orders to restrain SBS from rebroadcasting BBC's coverage of the war in Iraq.  BBC also claimed relief under ss 115 and 116 of the Copyright Act.

The case turned upon the existence and terms of a licence between BBC and SBS in relation to continuous coverage of breaking news footage.  The Court held that there was a serious question to be tried as to the nature and extent of the licence, although it noted that the BBC did not present a strong case.  The Court held that on the balance of convenience the application for interlocutory relief should be dismissed.  The Court ordered an expedited hearing of the full proceedings.

This case was initially brought before the Copyright Tribunal to consider a dispute between Powercom, a company supplying mobile phone ring tones, and two copyright collecting societies (APRA and AMCOS).  The dispute was in relation to a licensing scheme used to determine the amount payable for the use of the musical works underlying mobile phone ring tones.  Powercom's complaint was that payments required under licence by APRA (regarding its licence to communicate musical works) and AMCOS (regarding its licence to reproduce musical works) were unreasonable in the circumstances.  Powercom sought variation of the licences under s 155 of the Copyright Act. 

Justice Lindgren, President of the Copyright Tribunal, held that the Tribunal did not possess jurisdiction over the AMCOS licence and thus could not make orders under s 155 of the Act.  He held that the jurisdiction of the Copyright Tribunal under the Copyright Act does not extend to the licensing of reproduction of musical works as the definition of "licence" under s 136 of the Act does not include a licence to reproduce works.

Lindgren P also decided that it was unclear on the facts whether the APRA and AMCOS agreements were single agreements or operated in conjunction, but held that in any event the Tribunal had no jurisdiction as far as AMCOS was involved.  The initial proceedings were stood over for a further directions hearing in light of the Tribunal's decision.

In this case the Federal Court granted interlocutory orders restraining former employees of a company (TS & B) from dealing with, or adversely affecting, copyright material and from dealing with or disclosing confidential information claimed to be owned by TS & B.  The former employees had established a company in competition with TS & B and were ordered to deliver up copies of all data connected with the business of the company in their possession or control.  The case raises interesting issues as to licences and ownership of copyright in the context of employment.

On 21 March 2003 the Copyright Law Branch of the Attorney-General's Department hosted a round table seminar with Professor Bernt Hugenholtz of the Institute for Information Law of the University of Amsterdam, the Netherlands.

Professor Hugenholtz discussed the main features of the EU Copyright Directive and its implementation.  He noted, in particular, problems faced by European legislatures with implementation.  At this stage only two countries, Greece and Denmark, have met the implementation deadline of 22 December 2002.  Professor Hugenholtz also discussed the proposed EU Enforcement Directive and issues relating to the EU Database Directive.

The seminar was attended by representatives from the Attorney-General's Department, Canberra University and the Australian Libraries Copyright Committee.  It was an invaluable opportunity to learn about international legal developments.

On 29-30 April 2003 Chris Creswell, consultant to the Copyright Law Branch, was an invited speaker at a seminar in Seoul, jointly sponsored by WIPO and the Republic of Korea, on "The rights and obligations of users of copyright and related rights in the digital environment".  The focus of the seminar on users of copyright reflected what WIPO sees as a "growing debate in the field of copyright on the need for new limitations and exceptions to maintain the traditional balance between rights holders' interests, on the one hand, and the public and users' interests on the other".  The seminar included the themes of:  relevant recent international developments; the implementation of the "three-step test" in the Berne Convention, the TRIPs Agreement and the Internet Treaties; the experience with fair use/fair dealing in countries (including the USA and Australia) which have one or other of those exceptions; the position of Internet Service Providers (ISPs) and libraries; and the position of users under copyright licensing agreements.
 
The ad hoc meeting on the WIPO draft treaty on the protection of audiovisual performances that was due to take place on 18-20 June 2003 in Geneva has been postponed to a date to be fixed.  The 9th session of the Standing Committee on Copyright and Related Rights will still take place on 23-27 June 2003 as scheduled. 

The first session of the WIPO Advisory Committee on Enforcement  will take place in Geneva on 11-13 June 2003.

A. INTERNATIONAL AND PROJECTS, INCLUDING:

-Australian participation in World Intellectual Property Organisation (WIPO) activities
-Review of intellectual property legislation under the Competition Principles Agreement (Ergas Report)
-Collective administration of copyright
-Commonwealth copyright
-Moral rights (Authors' rights)
-Film directors' rights
-Performers' rights
-Photographs - term of protection
Contact: Chris Creswell, tel: (02) 6250 6312; e-mail: chris.creswellATag.gov.au

B. TRADE AND REGIONAL ISSUES, INCLUDING:

The Australia- US Free Trade Agreement
Contact: Stephen Fox, tel: (02) 6250 6313; e-mail: stephen.foxATag.gov.au

C. NEW TECHNOLOGIES ISSUES AND PROJECTS, INCLUDING:

-Implementation of Digital Agenda amendments and three year review
-E-commerce issues
-CLRC report into Simplification of the Copyright Act
-CLRC report into the Jurisdiction and Procedures of the Copyright Tribunal
-Circuit Layouts Act
-Copyright Tribunal appointments
-Parallel importation
-World Trade Organisation, bilateral and regional copyright and related matters including Asia-Pacific Economic Cooperation
-IP and protection of arts and cultural expression of Indigenous people
-Commonwealth copying - agreements with collecting societies
-Copyright and designs overlap issues
-Enforcement of copyright
-Innovation and non-copyright IP rights generally
-Government Response to CLRC Report on Copyright and Contract
Contact: Gabrielle Mackey, tel (02) 6250 6608, e-mail: gabrielle.mackeyATag.gov.au

D. COPYRIGHT LAW REVIEW COMMITTEE SECRETARIAT:

Contact: Fiona Phillips, tel (02) 6250 6658; e-mail: fiona.phillipsATag.gov.au

E. OTHER ISSUES:

If you wish to contact the Copyright Law Branch on another matter, please contact Joan Sheedy, the Assistant Secretary, Copyright Law Branch, (tel: (02) 6250 6313; fax: (02) 6250 5929; e-mail: joan.sheedyATag.gov.au)
Simon Cordina (tel: (02) 6277 7300) is the current Departmental Liaison Officer responsible for copyright matters in the office of the Attorney-General, Mr Daryl Williams AM QC MP.
For administrative matters, please contact: Michelle Tippett (tel: (02) 6250 6655; Fax: (02) 6250 5929; e mail: michelle.tippettATag.gov.au).