In Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 Justice Gordon of the Federal Court decided that, applying the principles of the High Court decision in IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, Telstra does not have copyright in the White Pages and Yellow Pages directories as they are not original literary works.

Justice Gordon decided that:

1. None of the directories is an original literary work: there were many contributors to each Work, but Telstra could not identify who provided the necessary authorial contribution to each Work.
2. Even if the human or humans who “contributed” to each Work were capable of being identified (and they are not), much of the contribution to each Work:
2.1 was not “independent intellectual effort” and further or alternatively, “sufficient effort of a literary nature” for those who made a contribution to be considered an author of the Work within the meaning of the Copyright Act;
2.2 occurred before the Work first taking its “material form” ;
2.3 was not the result of human authorship but was computer generated.

Whilst copyright can be held in compilations they must satisfy the originality test. In this case, Telstra could not prove the identity of the authors. The judge found that the directories were primarily created by a computer software program with little human discretion or invention.

After Larrikin Music proved last year that it owned the copyright in the song “Kookaburra Sits in the Old Gum Tree” (see decision here), its claim that two Men At Work recordings of the song “Down Under” infringe Larrikin’s copyright in Kookaburra because both of those recordings reproduce a substantial part of Kookaburra (in a flute riff) has succeeded: Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29.

After hearing evidence about the history of the Men At Work recordings and expert evidence on the musical notes in both songs, Judge Jacobson concluded that Down Under reproduced a substantial part of Kookaburra.

However the judge also commented that “I would emphasise that the findings I have made do not amount to a finding that the flute riff is a substantial part of Down Under or that it is the “hook” of that song.”

Damages are to be assessed.

The case also considered whether two Qantas advertisements which contain an orchestral version of a part of Down Under breached Kookaburra’s copyright: the judge concluded they did not.

UPDATE 27 February: EMI to appeal

A group of 34 applicants representing the major motion picture studios both in Australia and the United States have failed in their action against iiNet claiming that it committed an offence as an internet service provider by authorising the infringement of copyright of its users or subscribers when they downloaded cinematograph films in a manner which infringes copyright.

In Roadshow Films Pty Ltd v iiNet Limited (No. 3) [2010] FCA 24 Judge Cowdroy decided that :

1. certain iiNet users infringed copyright on a major scale

2. while iiNet had knowledge of infringements occurring, and did not act to stop them, iiNet did not authorise the infringements of copyright of the iiNet users. He reached that conclusion because iiNet’s granting internet access was not the same as giving the means of infringement by its users.

The evidence established that iiNet has done no more than to provide an internet service to its users. The judge contrasted this with the respondents in the Cooper and Kazaa proceedings, in which the respondents intended copyright infringements to occur, and in circumstances where the website and software respectively were deliberately structured to achieve this result.

He found that iiNet did have a repeat infringer policy which was reasonably implemented and that iiNet would therefore have been entitled to take advantage of the safe harbour provisions in Division 2AA of Part V of the Copyright Act if it needed to do so.

In summary the judge decided iiNet did not authorise copyright infringement ”first because the copyright infringements occurred directly as a result of the use of the BitTorrent system, not the use of the internet, and the respondent did not create and does not control the BitTorrent system; second because the respondent did not have a relevant power to prevent those infringements occurring; and third because the respondent did not sanction, approve or countenance copyright infringement. ”

UPDATE 25 February 2010: Australian Federation Against Copyright Theft says it has lodged an appeal.

In Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174 the Federal Court of Australia Full Court rejected claims by the manufacturer of Maltesers against the manufacturers of malt balls that were sold in jars in supermarkets and discount stores that it represented to consumers and traders that its product is associated with or has the endorsement, approval, sponsorship or licence of Mars.

The Full Court held that the primary judge was not in error in concluding that the Sweet Rewards label, considered as a whole, was not deceptively similar to the trade marks and did not pass off the goods to which it was affixed as Maltesers or otherwise a Mars product. There was no misleading or deceptive representation made by the use of its label by Sweet Rewards.

The Full Court said:

27 The words “Malt Balls” are descriptive of the Sweet Rewards product and were accepted in the evidence as an accurate description. The style in which those words are written, being a cursive style on a diagonal angle from bottom left to top right, similar to the way the word “Maltesers” is written on the Mars product, does not change this conclusion.

28 Neither the words “Malt Balls”, the red colour nor the depiction of the product in the whole and in cut through are used as a trade mark by Sweet Rewards. They are not used to distinguish the malt balls as the goods of Sweet Rewards, nor do they represent that the goods are Maltesers, that they are equivalent to Maltesers or that they are otherwise the goods of Mars…

The Resale Royalty Right for Visual Artists Act 2009 was assented to on 9 December 2009.

The Act establishes a statutory scheme which gives a resale royalty right for visual artists for the life of the artist plus 70 years. It will entitle visual artists to a royalty payment on the sale price of any commercial resale (”the secondary art market”) of their original works of art over $1,000 on works acquired after the legislation takes effect. The scheme will apply to Australian citizens or permanent residents, with foreign nationals covered on a reciprocal basis.

The resale royalty payable is a flat 5% of the sale price on the commercial resale of an artwork.

The scheme will start no later than 9 June 2010.

An artwork means an original work of visual art that is created either by an artist or artists or produced under the authority of the artist or artists. The term ‘visual art’ is intended to cover original graphic and plastic art, as well as other forms of original visual arts or craft, such as textiles and new media works.

It applies only to a commercial resale where the transfer of ownership of the artwork is from one person to another for monetary
consideration and is not the first transfer of ownership of the artwork.

The scheme will not include private sales between individuals, nor organisations not in the business of dealing in works of art.

IP Australia has commenced a second round of consultation on IP Rights Reform by issuing a consultation paper. The paper covers proposals relating to:

• Getting the Balance Right
• Exemptions to Patent Infringement
• Resolving patent opposition proceedings faster
• Resolving trade mark opposition proceedings faster
• Resolving divisional applications faster

A second consultation paper and associated drafting instructions will be released in the near future. The second paper will cover proposals set out in:

• Flexible Search and Examination
• Streamlining the Patent Process

Submissions close on 12 February 2010.

In Newcastle Permanent Building Society Ltd v Allan Crew[2009] ATMO 55 the Building Society failed in its attempt to prevent words (Our Town and Our Town Newcastle) that had been used by it in previous marketing campaigns from being registered as Trade Marks for a proposed television series about Newcastle.

The Registrar of Trade Mark’s Delegate decided that he was not satisfied that the Building Society’s residual reputation in its trade mark was extensive enough for the use of these substantially identical trade marks in the entertainment field to deceive or cause confusion in the Australian marketplace.

In University of Western Australia v Gray [2009] FCAFC 116 , the University failed in its appeal against a Federal Court judgment that ownership of an invention relating to cancer treatment belonged to its employee who was appointed to teach and to conduct and stimulate research (originally discussed here).

In a lengthy decision with significant commercial implications, the Full Court totally rejected UWA’s claim against Dr Gray that by reason of his employment he had obligations to UWA in respect of the inventions, and that as a result UWA had proprietary rights in respect of them and of associated patent applications and patents, and that by reason of Dr Gray’s having dealt with the inventions as his own UWA was entitled to obtain certain remedies from him.

In IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14, the High Court has decided that IceTV’s use of some of Nine Network’s time and title information obtained from aggregated program guides did not infringe Nine’s copyright in its weekly schedules. The High Court restored the trial judge’s original decision (see here and here).