In Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2) [2012] FCA 34 Justice Rares of the Federal Court of Australia decided that Optus’ TV Now service does not infringe the copyright in broadcasts of football games in competitions conducted by the Australian Football League (AFL) and National Rugby League partnership (NRL). Telstra has an exclusive licence from the AFL and NRL to exploit free to air broadcasts of live and pre-recorded AFL and NRL games on the internet and mobile telephony.

Optus began offering a new service called “TV Now” in July 2011 to its private, as well as small to medium business, customers. The service gives a user the ability to record free to air television programs, including AFL and NRL games, and play them back on any one of four compatible devices, namely, PCs, Apple devices, Android devices and 3G devices.

The user can view the recording in the 30 days following the time of the original broadcast. When a user clicks “play” on his or her compatible device, Optus’ data centre streams the copy of the program in the appropriate format to that device so that the user can watch it. However, the streamed copy is not downloaded to the users’ device. And, users with Apple iPads or iPhones can watch a program selected for recording “almost live” within about two minutes of the commencement of the actual free to air broadcast. Users with other compatible devices (PCs, Android and 3G devices) can only watch a recorded program after the broadcast had finished.

Optus contended that each user of the TV Now service, rather than it, had recorded, or made the recording, and played it without any infringement of copyright. Optus relied on an exception in s 111 of the Copyright Act (the “timeshifting” exemption). In essence, the exception allows a person to make a film, or copy, or recording of a broadcast solely for his or her private and domestic use by watching or listening to the material broadcast at a time more convenient than the time when the broadcast is made. If the person does make a copy in those circumstances, then the making of the recording will not infringe copyright in the broadcast.

The parties agreed there were 7 key legal issues but the decision was based on 2 findings:

1. that the user made each recording of a broadcast by clicking on the “record” button on his or her compatible device. Justice Rares considered that this result was substantially similar to the position where a person used a video cassette recorder (VCR), digital video recorder (DVR) or similar device to copy a television broadcast. Even though Optus provided all the significant technology for making, keeping and playing the recording, he considered that in substance this was no different to a person using equipment or technology in his or her home or elsewhere to copy or record a broadcast.

2.Justice Rares decided that when the user clicked the “record” button, he or she did not infringe the rightholders’ copyright in the broadcasts of the AFL and NRL games because of s 111(1) and (2) of the Copyright Act. That was because the evidence suggested that individual users had made the recordings using the TV Now service solely for their private and domestic use by watching the recordings at a more convenient time, even if they watched these “near live” within minutes of the start of the broadcast.

The decision will be appealed.

IP Australia has released a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 and an accompanying draft explanatory memorandum for consultation.

The Bill has wide ranging changes affecting the IP profession including provision for incorporation of patent and trade mark attorneys.

The deadline for written submissions is 4 April 2011.

In Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 the Federal Court Full Court rejected Telstra’s appeal against Justice Gordon’s decision earlier this year that Telstra does not have copyright in the White Pages and Yellow Pages directories as they are not original literary works.

Chief Justice Keane accepted the contention of the defendants that “the directories were compiled, not by the individuals engaged to facilitate the process, but by a computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were published. ”

He confirmed that while “It may be that if the author of a work is the employee of another person, ownership of the copyright may vest in the employer; but copyright in a literary work can subsist only if it originates from an individual. This case highlights the difficulty confronting a claim to copyright in a literary work which is compiled by an automated process.”

In this case it was clear that “Numerous individuals, some identified and some not, contributed to the work preparatory to the compilation of each of the WPDs and YPDs, but the compilations were brought into the form in which they were published primarily by an automated computerised process.”

He rejected the argument that the directories should be regarded as a work of joint authorship.

If Telstra does not appeal further it may lobby for a change to the Copyright Act.

UPDATE 21 January 2011: Telstra has applied to the High Court for special leave to appeal

UPDATE 2 September 2011: THe High Court refused Telstra’s application for special leave to appeal

In Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984 the Federal Court of Australia decided that there was no copyright in the newspaper headlines in dispute and dismissed Fairfax’s allegation that Reed had breached its copyright by using Australian Financial Review headlines in its abstract service.

In deciding that none of the ten selected headlines are capable of being literary works in which copyright can subsist, no matter how clever, Judge Bennett said:

Headlines generally are, like titles, simply too insubstantial and too short to qualify for copyright protection as literary works. The function of the headline is as a title to the article as well as a brief statement of its subject, in a compressed form comparable in length to a book title or the like. ..

The majority of the headlines in the sample editions are short factual statements of the subject of the article. The addition of a pun does not, of itself, in the absence of evidence, convert such statements into literary works. … It is not the “ideas” of the author that is protected by copyright but their fixed expression (IceTV at [160]).

The headline and by-line is, as Reed says, meta-information about the work, not part of the work, the work being the article. The need to identify a work by its name is a reason for the exclusion of titles from copyright protection in the public interest. A proper citation of a newspaper article requires not only reference to the name of the newspaper but also reproduction of the headline. This was a matter of common ground between the witnesses. If titles were subject to copyright protection, conventional bibliographic references to an article would infringe.

Judge Bennett also decided that:

• Even if the Article/Headline Combination constituted a copyright work, Reed did not take a substantial part of such a work.
• Although it was not necessary to decide whether Reed was entitled to rely on the defences claimed, Reed’s conduct in reproducing and communicating the AFR headlines as part of the Abstracts is a fair dealing for the purpose of reporting news such that Reed’s conduct would not constitute an infringement of copyright by reason of s 42(1)(b) of the Act.

Coincidentally, Harvard Law has recently published a note on the US law regarding online aggregation. It gives a useful overview of the aggregation models and some helpful best practices which could apply in Australia:

1. Reproduce only those portions of the headline or article that are necessary to make your point or to identify the story. Do not reproduce the story in its entirety.

2. Try not to use all, or even the majority, of articles available from a single source. Limit yourself to those articles that are directly relevant to your audience.

3. Prominently identify the source of the article.

4. Whenever possible, link to the original source of the article.

5. When possible, provide context or commentary for the material you use.

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.