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Speeches
Keynote address for the Copyright Law and Practice Symposium
Musings on Copyright Law – Some current issues touching the basic principles
Justice K E Lindgren
Introduction
To my mind one of the most interesting things about the law of copyright is that the fundamentals are dynamic, flexible and interrelated.
Take any of the basic principles. While no one will question the principle, the facts of a new case will show that while the principle
may provide the answer to one question, it will raise another. For this reason, if for no other, the subject never loses its fascination.
1. Identifying the copyright work
Obvious as it is, an applicant claiming relief in respect of alleged infringement must identify the copyright work. That is the
work on which the proceeding and any appeal will turn. In my experience, however, all too often the parties to copyright proceedings
tend to lose sight of what is the copyright work relied on.
The problem seems to be greatest in the case of artistic works.
Identifying the boundaries of an artistic work can be relevant to authorship, “substantial part” and three-dimensional
reproduction, for example. Some of these ideas will be touched on later.
Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197; (2008) 172 FCR 580; 80 IPR 566 concerned numerals, words and images on the front and back of a T-shirt. Was the artistic work the front, the back, or both?
Were the front and the back one artistic work or two artistic works? Was the artistic work the whole of the front (or back) or
only the part where the numerals, words and images appeared? Did the artistic work include the spaces between those elements?
If you had to draw a boundary around the artistic work, where would you draw it?
Textual descriptions of an artistic work are usually inadequate to the task. They will leave something out. An artistic work
is concerned with visual impression so the identity of an artistic work is usually best conveyed to a court by a photograph or
photocopy. But even then, the question of the outer boundaries can remain (not so obviously in the case of a sculpture).
I have encountered attempts to identify the work only as the original parts of a larger whole, but this is impermissible. The work
has an integrity and identity of its own. The “substantial part” inquiry comes after, not before, the work is identified.
There is a danger in allowing the idea/expression dichotomy to intrude into the initial process of identifying the artistic work.
It is wrong to exclude unprotected ideas so that the artistic work becomes equated with protected form (conveniently from the
applicant copyright owner’s perspective). The work is necessarily fixed in form. In any event, the underlying idea can
be described at different levels of abstraction: the higher the level of abstraction, the more that is left as protectable expression,
and vice versa.
In Elwood v Cotton On, mentioned above, the Full Court endorsed what another Full Court had said about the steps involved in proving infringement in
Metricon Homes Pty Ltd v Barrett Property Group Pty Ltd [2008] FCA 712; (2008) 75 IPR 455 at [23]:
(1) identify the copyright work;
(2) identify in the putative infringing work the part said to have been taken (that is, derived or copied) from the
copyright work; and
(3) determine whether the part taken constitutes a “substantial part” of the copyright work.
Of course, although the copyright work must be identified, its identity can be pleaded in the alternative.
2. Copyright exists in forms of expression of ideas or concepts, not in the ideas or concepts themselves
One needs only to state the rule to provoke a question. There are ideas and ideas. The moment before a work is first produced in
a “material form”, the idea of it is as precise and detailed as the form that immediately emerges. Yet earlier, the
idea is more general, even amorphous. Take an artistic work for example. We will all agree that copyright law does not protect
the idea of painting a particular subject. Yet it protects more than the pencil lead or paint that adheres to paper or canvas.
It protects, if you like, the human understanding and appreciation of those things. That is an idea or concept of sorts.
So it might be said that copyright law protects the idea of a particular execution of an idea at a more abstract or general level.
Any mention at this Symposium today of the idea/expression dichotomy will inevitably bring to mind to two cases with which most,
if not all, of you will be familiar: Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 119 FCR 491 (Desktop) and IceTV Pty Ltd v Nine Network (Australia) Pty Ltd (2009) 254 ALR 386 (IceTV).
The general nature of the facts of both cases will be well-known. Both concerned compilations. In Desktop the copyright works were Australian telephone directories. In IceTV they were schedules of television programs (Weekly Schedules).
In Desktop the Full Court held that “sweat of the brow” in gathering and assembling the subscriber data was enough to attract
protection to the telephone directories and that it was not necessary that there be a spark of creativity in the manner of presentation
of the data in the directories. (Can you conceive of any system of organisation of the subscribers’ names other than an
alphabetical listing of surnames?) In so holding, we did not follow the Supreme Court of the United States in Feist Publications Inc v Rural Telephone Service Co Inc [1991] USSC 50; (1991) 499 US 340. We preferred to follow, so we thought, a course of earlier English and Australian authority, admittedly none of them precisely
on telephone directories.
In Desktop, leave to appeal was refused by the High Court: see [2003] HCA Trans 796. Desktop submitted to the High Court that if “industrious collection” was enough to support copyright, the result would
be to protect ideas or information. Their Honours, Justices Hayne and Callinan, refused special leave to appeal, saying “we
are of the view that an appeal would enjoy insufficient prospects of success to warrant the grant of special leave in this matter”.
The refusal of special leave to appeal must now be read in the light of what the members of the High Court said in IceTV (see below).
Importantly, in IceTV the subsistence of copyright in Nine’s Weekly Schedules was not in issue. What was in issue was whether IceTVhad infringed
Nine’s copyright by taking time and title information from the Weekly Schedules – “slivers of information”.
Had IceTV thereby taken a “substantial part” of the Weekly Schedules within s 14(1) of the Copyright Act 1968 (Cth) (the Act)? This raised a question as to what went into producing the statement of the time and title information, and whether
the antecedent programming work itself was to be taken into account.
As is well known, whether a part taken is “substantial” depends on quality, not quantity. But what does this mean?
French CJ, Crennan and Kiefel JJ said (at [32]) that a factor critical to the assessment of the substantiality of what is copied
is its “originality”. Their Honours cited Autodesk Inc v Dyason (No 2) [1993] HCA 6; (1993) 176 CLR 300 at 305 (per Mason CJ in dissent); and Data Access Corporation v Powerflex Services Pty Ltd [1999] HCA 49; (1999) 202 CLR 1 at [83]- [84] per Gleeson CJ, McHugh, Gummow and Hayne JJ. For the subsistence of copyright (see s 32(1) of the Act) originality requires only that the work originated with the author’s independent intellectual effort: Robinson v Sands & McDougall Pty Ltd [1916] HCA 51; (1916) 22 CLR 124 at 155-156 per Isaacs J. However, their Honours said (at [38]) that originality in the context of infringement has a different
aspect referable to mode of expression. They said (at [42]):
… the expression of the time and title information, in respect of each programme, is not a form of expression which requires
particular mental effort or exertion. The way in which the information can be conveyed is very limited. Expressing a title of a
programme to be broadcast merely requires knowledge of the title, generally bestowed by the producer of the programme rather than
by a broadcaster of it. Expressing the title of a programme to be broadcast merely requires knowledge of the title, generally bestowed
by the producer of the programme rather than by a broadcaster of it. Expressing the time at which a programme is broadcast, for
public consumption, can only practically be done in words or figures relating to a 12 or 24-hour time cycle for a day. The authors
of the Weekly Schedule (or the Nine Database) had little, if any, choice in the particular form of expression adopted, as that
expression was essentially dictated by the nature of the information. That expression lacks the requisite originality (in the sense
explained) for the part to constitute a substantial part.
Their Honours suggested (at [48]) that in the context of subsistence of copyright, too much may have been made of the distinction
between sweat of the brow and spark of creativity, whereas in the context of infringement, what matters is whether the infringer
has misappropriated skill and labour directed to the particular form of expression (at [49], [54]).
In the other joint judgment, Gummow, Hayne and Heydon JJ also held (at [63]) that the Full Court of the Federal Court had adopted
an inappropriate focus for the “substantial part” inquiry by relying on the antecedent or preparatory work of fixing
the programme schedules.
Their Honours spoke of the importance of “selection” and “arrangement” as justifying copyright protection
in compilation cases.
Like French CJ, Kiefel and Crennan JJ, their Honours emphasised the importance of the concept of authorship of a work. At [105]
they made the following important point in relation to authorship and material form in copyright litigation:
A generally expressed admission or concession by one party to an infringement action of subsistence of and title to copyright may
not overcome the need for attention to these requirements [authorship and material form] when dealing with the issues immediately
in dispute in that action. This litigation provides an example. The exclusive rights comprised in the copyright in an original work
subsist by reason of the relevant fixation of the original work of the author in a material form. To proceed without identifying
the work in suit and without informing the enquiry by identifying the author and the relevant time of making or first publication,
may cause the formulation of the issues presented to the court to go awry.
Incidentally, a bare pleading of the subsistence and ownership of copyright in a work would be defective for a failure to allege
the material facts: Federal Court Rules O 6 r 2(b); O 11 r 2.
Their Honours referred (at [131]) to the dangers of adopting the rhetoric of “appropriation” of “skill and labour”.
They also referred to the problems that arise when the author or authors of a work are not identified (as had happened in Desktop as well as in IceTV).
Gummow, Hayne and Heydon JJ accepted (at [152]) that the originality of the copyright work, being the Weekly Schedules, lay not
in the provision of the time and title information, “but in the selection and presentation of that information together with
additional program information and synopses, to produce a composite whole”. In saying this, their Honours were offering
an explanation consistent with IceTV’s concession that copyright subsisted in Nine’s Weekly Schedules.
Ultimately, their Honours held that a substantial part had not been taken because all that was taken was two related pieces of predictive
information (time and title), the expression of which involved no originality.
Lessons to be learned from IceTV are:
(1) the importance of identifying the copyright work;
(2) the importance of authorship and of identifying the authors;
(3) the distinction between originality for the purposes of subsistence of copyright and originality for the purpose
of the characterisation of a part of the copyright work that has been reproduced in the putative infringing work as a “substantial
part” of the copyright work for the purposes of s 14(1) of the Act;
(4) the distinction between antecedent skill and labour in gathering or creating information and the skill and labour
in selecting and arranging it for presentation;
(5) suggestions that a creative spark is necessary to the subsistence of copyright (and that Desktop may have been wrongly decided).
A warning: while conforming to the High Court’s corrective, be careful to avoid another pitfall – that of looking for
literary (or artistic, musical or dramatic) merit.
It should go without saying that in what follows, there is no questioning of the result reached by the High Court in IceTV,of their Honours’ reasons, or of the suggestions made in IceTV regarding Desktop.
Consider a hardworking postgraduate student or junior university academic. He or she has laboured for years researching and gathering
whole of universe data. It might be from geography, biology, economics or any other field you care to name. It might be “all
mountains in the world that exceed [a certain height]” or “all cities in the world whose average per capita income
is below [a certain level]”.
Our researcher wishes to make the information generally available and accessible so he or she publishes a book, intending to use
the royalties to pay for further research. In the book, the years of labour are expressed in tables (such as of the names of mountains
and cities) that are alphabetically arranged.
It now seems clear that our researcher will not enjoy copyright protection in respect of the alphabetic listings. A competing
publisher can copy and republish them.
Does our researcher have any other means of protection? Is he or she faced with the choice of publishing or keeping the data secret?
Should such a researcher have some protection? Would it be possible to devise a system of statutory licence with the “equitable
remuneration” payable to the copyright owner to be determined by the Copyright Tribunal of Australia if the copyright owner
and the user cannot agree?
3. The causal link element in “reproduction”: “indirect access” of “indirect copying”
Intention to infringe is not an element of infringement. Nor is knowledge that there is a causal link to the copyright work. A
case that illustrates this is Frank M Winstone (Merchants) Ltd v Plix Products Ltd [1985] 1 NZLR 376. Plix designed and manufactured a range of containers for carrying kiwifruit called “pocket packs”. It had copyright
in the drawings, patterns, moulds and kiwifruit pocket packs. The Plix range was successful. The New Zealand Kiwifruit Authority
(Authority) and the New Zealand Kiwifruit Exporters Association (Association) laid down specifications and instructions for the
manufacture of pocket packs. Importantly, however, these were devised from the Plix range.
Winstone wished to enter the kiwifruit pocket pack market but was aware of the need not to infringe the copyright claimed by Plix.
Winstone’s designer relied on copies of the Authority’s specifications and the Association’s instructions. The
designer had never, to his recollection, seen a kiwifruit pocket pack, let alone a Plix pocket pack. He was told that he must
work on his own without discussion with any person who had knowledge of kiwifruit pocket packs, and that he should on no account
look at any existing pocket packs.
He obeyed his instructions and designed a range of pocket packs after investing many hours in the project.
The specifications and instructions gave the designer so much information that even though he was independent and attempts were
made to avoid infringement, the design that he produced was still held to be an infringement. This arose from the insistence of
the Authority and the Association, who together effectively controlled the export trade, on requirements that had been derived
from the Plix range.
The present point is that it was not a break in the chain of causation that the designer had relied on the specifications and instructions
laid down by the independent Authority and Association: all that mattered was that as a matter of objective fact, the form of the
infringing work was attributable to the form of the copyright work.
4. Three dimensional reproduction
Is it possible to have a three-dimensional reproduction of an elevation or plan drawing, that is to say, a drawing that lacks perspective,
and therefore any indication of the third dimension? Yes, and I suggest that there is no need to be concerned with the third perspective,
such as “depth” or “thickness”.
As is well known, s 21(3) of the Act provides:
For the purposes of this Act, an artistic work shall be deemed to have been reproduced:
(a) in the case of a work in two-dimensional form - if a version of the work is produced in a three-dimensional form;
or
(b) in the case of a work in a three-dimensional form - if a version of the work is produced in a two-dimensional form;
or
and the version of the works so produced shall be deemed to be a reproduction of the work.
For convenience we need consider only para (a). Two possible constructions of the word “version” may suggest themselves:
one is that it refers to an imagined three-dimensional version of the two-dimensional copyright work, while the other is that it
refers to the actual three-dimensional work that has been created. I think it means the latter. A problem with the former is
that in the case where the copyright work is simply a plan or elevation, there is or may be no basis for us to imagine a hypothetical
three-dimensional version. The imagined version may turn out to be the same as, or different from, the three-dimensional form that
has in fact been made, through sheer chance. In my view, the “version” referred to is the putative infringing three-dimensional
work that has been made.
The historical background to s 21(3) is interesting.
Prior to the passing of the Copyright Act 1911 (UK), which was declared to be in force in Australia from 1 July 1912 by the Copyright Act 1912 (Cth), it seems that only reproductions of a work in a medium similar to that of the copyright work itself were regarded as infringements.
So, the copyright in a drawing would be infringed only if the drawing was reproduced in the form of another drawing.
Section 1(2) of the Act of 1911 referred to reproduction “in any material form whatsoever”. The courts treated this
provision as catching the reproduction of drawings in a three-dimensional version even before the introduction of the predecessor
of the present s 21(3) of the Act. Illustrative cases are Chabot v Davies [1936] 3 All ER 221 (building of a shopfront infringed copyright in a drawing of the front elevation); King Features Syndicate Inc v O & M Kleeman Ltd [1941] AC 417 (“Popeye” cartoon sketch reproduced in dolls, toys and brooches); Lend Lease Homes Pty Ltd v Warrigal Homes Pty Ltd [1970] 3 NSWR 265 (dwelling house infringed copyright in architectural plans).
The Copyright Act 1956 (UK) which commenced on 1 July 1957, took a different approach. The relevant infringing act was now reproduction “in any
material form”, although the omission of the word “whatsoever” does not seem to have been significant. The definition
section, s 48, introduced in subs (1) a definition of the word “reproduction” in the case of an artistic work to include
a three-dimensional version into which a two-dimensional copyright work was converted, and vice versa.
At the time, this provision was treated as simply having provided expressly for the position that had already been attained under
the 1911 Act: see Copinger and Skone James on the Law of Copyright (9th ed, 1958) at p67.
Unlike the United Kingdom Act of 1956, the Act, which commenced on 1 May 1969, did not contain a definition of “reproduction”
but expressed the provision concerning three- (or two-) dimensional reproduction separately in s 21(3). That subsection, which
was set out earlier, has never been amended.
The inclusory definition of “material form” which was introduced into s 10(1) of the Act by the Copyright Amendment Act 1984, s 3(g) has no bearing on the present discussion. Nor it is necessary to discuss either the provisions relating to registrable designs,
or the non-expert observer requirement (the former s 71) which has now disappeared from the Act.
Even in some of the cases decided since the “three-dimensional provision” was introduced, reproductions of plans and
elevations have been found without reference to that provision: see, for example, Carla Homes (South) Ltd v Alfred McAlpine East Ltd [1995] EWHC 7; [1995] FSR 818 (reproduction of elevations of drawings of homes in the constructed homes – the elevations are reproduced at pp 848-9 of
the report).
Where a two-dimensional copyright drawing gives a perspective (see LB (Plastics) Limited v Swish Products Limited [1979] RPC 551) different considerations arise. Since the third dimension is represented in the two-dimensional work, it would be necessary to
have regard to that dimension in deciding whether the three-dimensional object reproduced the two-dimensional work or a substantial
part of it.
In sum, if a drawing is a plan or an elevation and shows no other dimension, it can be reproduced in that plane of a three-dimensional
thing, and it is beside the point what the third dimension (such as thickness or depth) may be or reveal.
Conclusion
The thoughts that I have expressed above are rather random. At least I find the issues raised interesting and hope to learn your
views on some of them from discussion at the Symposium.
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