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Australia Andrew Christie* John Liddicoat**

1. To what extent does national law differentiate in terms of the effects of copyright law? According to the various work categories1 Australian copyright law distinguishes between two major categories of creations: works and subject matter other than works (“other subject matter”). There are four types of sub-classifications within both works and other subject matter. Each subclassification has different rights associated with it, but generally speaking works include a greater variety of intellectual creations and are afforded greater protection. The four categories of “works” are literary, dramatic, musical and artistic.2 Literary works are defined by the Copyright Act 1968 (Cth) to include tables, compilations and computer programs.3 Literary works have also been interpreted by courts to include a wide variety of creations, ranging from instruction manuals and football betting coupons to biographies and street directories.4 Dramatic works are defined by the Copyright Act 1968 (Cth) to include choreographed and dumb shows, as well as scripts for cinematographic films.5 Artistic works are defined by the Copyright Act 1968 (Cth) to mean paintings, sculptures, drawings, engravings, photographs, buildings or models of buildings and works of artistic craftsmanship.6 The four “other subject matter” categories are sound recordings,7 cinematographic films,8 television broadcasts and sound broadcasts,9 and published editions of works.10 Sound recordings are defined to mean the aggregate of sounds embodied in a device.11 Cinematographic films are defined to mean the aggregate of visual images embodied in an article or thing capable of being shown as a moving picture, 1*

** 1 2 3 4

5 6 7 8 9 10 11

Davies Collison Cave Professor of Intellectual Property, Melbourne Law School, University of Melbourne [email protected]. Research Assistant, Faculty of Law, University Tasmania, [email protected]. For instance: special provisions for cinematographic works, computer programs etc. Copyright Act 1968 (Cth) s 32. Ibid, s 10. Law Book Company, Laws of Australia, (at 28 September 2009) 23 Intellectual Property, “23.1 Copyright” [260]. Copyright Act 1968 (Cth) s 10. Ibid. Ibid, s 89. Ibid, s 90. Ibid, s 91. Ibid, s 92. Ibid, s 10.

R.M. Hilty and S. Nérisson (eds.), Balancing Copyright - A Survey of National Approaches, 97 MPI Studies on Intellectual Property and Competition Law 18, DOI 10.1007/978-3-642-29596-6_4, © Springer-Verlag Berlin Heidelberg 2012

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and include the aggregate of sounds embodied in a soundtrack associated with such visual images.12 Cinematographic films have also been interpreted by courts to include video games that are capable of being shown as a moving picture and are limited to scenes generated by a controlling program.13 Television broadcasts are defined to mean visual images broadcast by way of television, together with any sounds broadcast for reception along with those images,14 and sound broadcasts are defined to mean sounds broadcast otherwise than as part of a television broadcast.15 It should be noted that, through ministerial direction, sound and television broadcasts over the internet are excluded from this protection.16 Although published editions of works are undefined in the Copyright Act 1968 (Cth), this other subject matter is generally accepted to refer to typographical arrangements; that is, to the layout, formatting and page arrangement of literary works. Copyright in published editions of works protects effort invested in the layout and is distinct from the material that is laid out. This means that protection is granted to a typographical arrangement of a work in which copyright no longer subsists, such as the layout of an anthology of Shakespeare’s work, and also to a typographical arrangement of a work in which copyright currently subsists, such as the layout of a newspaper.17 Performer’s Rights Distinct from works and other subject matter, performers have the right to control the recording and communication of directly or indirectly created sound and/or audio recordings of their performances.18 These rights are non-assignable.19 If the recording is authorised, performer’s rights do not arise20 – in which case the regular copyright provisions apply.

According to factual aspects Different markets21 Literary Works of Fact v Literary Works of Fiction Infringement of works and other subject matter is determined by whether a “substantial part” of the work/other subject matter has been taken.22 Whether a literary 12 13 14 15 16 17

18 19 20 21

22

Ibid. Galaxy Electronics Pty Ltd v Sega Enterprises Ltd (1997) 37 IPR 462. Copyright Act 1968 (Cth) s 10. Ibid. Government Gazette No GN 38, 27 September 2000. Law Book Company, Laws of Australia (at 18 January 2010) 23 Intellectual Property, “23.1 Copyright” [1120]. Copyright Act 1968 (Cth) s 248G(1)(b). Ibid, s 248N. Ibid, s 248G. For instance: different treatment of literary works according to whether they are works of fiction or academic works. Copyright Act 1968 (Cth) s 14(1).

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work is of fact or fiction will influence how much of the creation can be taken before infringement occurs. The High Court has held that facts, especially those limited to their expression, involve minimal creative effort and therefore are of “thin” subsistence.23 Thus, for works of non-fiction, particularly tables of data, a larger proportion of the literary work must be taken for infringement to be found. Traditional Art v Non-Traditional Art The definition of what constitutes an artistic work is “exhaustive”, which means copyright protection under this heading is provided only for a creation that comes within the definition of one of the specified categories of artistic work. Face painting has been considered not to qualify as a “painting” for the purposes of artistic work copyright; “[a] painting is not an idea: it is an object; and paint without a surface is not a painting”.24 Further, the creation of a scene by a photographer has been held not to qualify as either “sculpture” or a work of “artistic craftsmanship”.25 The scene was found not to be a sculpture because it was not carved or moulded26 and it was held not to be a work of “artistic craftsmanship” because it was simply an arrangement of objects that had been found.27 Creations Limited by Functional Constraints When there is little design choice and aesthetic aspects of a creation form only a minor consideration, then such creations will not qualify as works of artistic craftsmanship and therefore will not satisfy the requirements for an artist work. Hence, a mould for the hull of a boat will not qualify as a work of artistic craftsmanship because it is limited by functional constraints, and aesthetic considerations form only a minor aspect of the work.28 Competitive conditions29 There are no explicit provisions in the Copyright Act 1968 (Cth) that differentiate the effects of copyright when different competitive conditions exist for a work or other subject matter. Similarly, no Australian copyright case has been explicitly decided with reference to competitive conditions. Nevertheless, courts in Australia have recently indicated that, when assessing whether a “substantial part” of the copyright work has been reproduced for the purposes of infringement,30 this assessment may include considerations of broader 23 24

25 26 27 28 29 30

IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451, 463. Merchandising Corp of America v Harpbond [1983] FSR 32, 46. This case (and the one referred to in the subsequent footnote) was decided in the UK, and hence does not strictly qualify as precedent in Australian common law. However, because of the historical relationship and current parallel nature of Australian and UK copyright law, UK cases are generally considered good reasoning in Australian law. Creation Records Ltd v News Group Newspapers Ltd (1997) 39 IPR 1. Ibid, 4. Ibid. Burge v Swarbrick (2007) 72 IPR 235, 256. For instance: no possibility of substitution of a work marketed by only one of the right holders. Copyright Act 1968 (Cth) s 14(1).

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“interests” being protected by copyright.31 The High Court has indicated that such interests may include commercial and competition-based considerations such as industry standards and the market to which the work belongs (which might include whether or not the work or other subject matter is substitutable).32 However, without more guidance from a court it is unknown how much weight can be attributed to these considerations and how they can be used to determine whether or not a “substantial part” of a work or other subject matter has been reproduced. Other factual aspects Substantiality Requirements Short phrases, single sentences and similar types of literary efforts are not substantial enough to qualify as a literary work for the purposes of the Copyright Act 1968, for example “Help-Help-Driver-in-Danger-Call-Police-Ph.000” is not sufficient.33 This is the case even though skill, labour and finance may have been expended in their creation.34 Quality v Quantity of Material Reproduced Infringement of a literary, dramatic, artistic or musical work is determined by whether a “substantial part” of the work has been reproduced.35 The High Court has stated that a determination of whether the reproduction is of a “substantial part” of the work requires consideration of both the quantity and the quality of that which is reproduced, where the “quality” of reproduced material is assessed by reference to the originality of that material.36

According to other criteria37 Material Form All works have a “material form” requirement.38 Material form includes any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation (whether or not the work or adaptation, or a substantial part of the work or adaptation, can be reproduced).39 There is no express requirement for material form for the other subject matter of published editions, broadcasts, films or sound recordings. However, with the exceptions of broadcasts, material form is inherent in the creation of the other subject matter. 31

32 33 34 35 36 37 38 39

Desktop Marketing Ltd v Telstra Corporation Ltd (2002) 55 IPR 1, 107; IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451, 491. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451, 490–491. Victoria v Pacific Technologies (Australia) Pty Ltd (No 2), [2009] FCA 737, 1. Ibid, 20. Copyright Act 1968 (Cth) s 14(1). IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451, 458–9. For instance: Art. 2 Para. 2 Berne Convention. Copyright Act 1968 (Cth) s 22(1). Ibid, s 10(1).

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2. Which of the following legal instruments are used by national copyright law40 in order to achieve a “balance” of interests and to what extent are they used? Specific preconditions or thresholds allowing a work’s protection only if it surpasses a particular degree of creativity Originality (which includes creativity, special skill and labour) is a requirement only for works; there is no requirement of originality for other subject matter (see Question 6 for more detail).

Period of protection Periods of protections do apply, and different periods of protection apply to different works and other subject matter (see Question 5).

Specific user rights, free of charge, granted by the law in favour of third parties41 Australia has many user rights that are granted free of charge, and these are used quite extensively (see Question 6 b)).

Specific user rights granted by the law in favour of third parties subject to the payment of a remuneration to the right holder(s)42 User rights subject to payment of remuneration do exist, and these are also used extensively (see Question 6 b)).

Obligations to conclude a contract established by law to grant a third party specific user rights in return for payment of a fee (mandatory license)43 Australian copyright law only has one provision that gives rise to a mandatory licence, and it is used extensively (see Question 6 b)).

Rules on misuse Australian copyright law, unlike jurisdictions such as the US,44 does not contain a doctrine of “misuse of copyright”.45 Furthermore, the Copyright Act 1968 (Cth) does not contain specific sections restricting the exercise of exclusive rights conferred by the Act.

40 41 42 43

44 45

For the rules outside copyright law see Question 12. For instance: Art. 10 Para. 1 Berne Convention (permission to make quotations from a work). For instance: Art. 7 Para. 3 WCT (right of rental of copies of works embodied in phonograms). For instance: Art. 13 Para. 1 Berne Convention (authorization of sound recording of musical works). Lasercomb America Inc v Reynolds 911 F 2d 970 (1990). Law Book Company, Laws of Australia (at 1 December 2009) 23 Intellectual Property, “23.1 Copyright” [5640].

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3. Does national law regulate the user rights pursuant to Question 2 c) to e) – abstractly (for instance using general clauses)46 – concretely (for instance in the form of an enumeration) – by means of a combination of the two? 2 c) Free-of-charge user rights are regulated both concretely and abstractly. The “fair dealing” exceptions, such as fair dealing for reporting the news, are considered to be abstract because the uses included in the exceptions are not exhaustively defined. The exception for making back-up copies of computer software is an enumerated exclusion.47 2 d) Remunerated user rights are all concrete exceptions. User right exceptions, such as the exception for sound broadcasts by holders of print disability radio licences,48 specify the instances when the exceptions apply. 2 e) The only instance of a mandatory licence in Australian copyright law is the statutory provision permitting the manufacture of a record of a musical work that has already been embodied in a record.49 This is an enumerated head with no abstract provisions.

4. What is the role played by the “three-step test” in national law in connection with the user rights pursuant to Question 3, in particular Has the three-step test been explicitly implemented in national law (legislation)? No, the three-step test has not been explicitly implemented in Australian national law. It has however, been incorporated into s 200AB of the Copyright Act 1968 (Cth). Section 200AB provides that copyright in a work or other subject matter is not infringed by a use that is by one of three types of entity for a specified purpose,50 so long as the particular use is a special case, does not conflict with a normal exploitation of the work or other subject matter, and does not unreasonably prejudice the legitimate interests of the owner of copyright. The provision states that the phrases “special case”, “conflict with a normal exploitation”, and “unreasonably prejudice the legitimate interest” have the same meaning in the Act as they have in TRIPS Agreement Art. 13.51 The first use to which the provision applies is non-commercial use by a library or archive, for the purpose of maintaining or operating the library or archive.52 The 46 47 48 49 50

51 52

For instance: fair use in US law. Copyright Act 1968 (Cth) s 47C. Ibid, s 47A. Ibid, s 55. The specified entities and related purposes use are (i) use by a library or archive for the purpose of operating the library or archive ; (ii) use by an educational institution for the purpose of giving educational instruction; and (iii) use by a person with a disability for the purpose of obtaining a reproduction with a feature that reduces the disability: ibid, s 200AB(2), (3) and (4). Ibid, s 200AB(7). Ibid, s 200AB(2).

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second use to which the provision applies is non-commercial use by an educational institution, for the purpose of education.53 The third use to which the provision applies is non-commercial use by a person with a disability who has difficulty in reading, viewing or hearing works, for the purpose of easing that difficulty.54

Has it played a specific role in the determination of the legal standards (limitations or exceptions)? No.

Is it directly applied by judicial practice? No, there has been no case on this section.

Is the “Declaration on a Balanced Interpretation of the ‘Three-Step Test’ in Copyright Law”55 well known and if so what role does it play (legislation, judicial practice, academic discussion, etc.)? The Declaration is well known within academic circles, but is not well known outside academic circles. The Declaration does not appear to have played any role in legislative or judicial practice.

5. If categories of works are distinguished according to Question 1, to what extent do the legal instruments in Question 2 a) to f) differentiate according to these categories? 2 a) Specific preconditions or thresholds allowing a work’s protection only if it surpasses a particular degree of creativity The same threshold of originality is required for all works. No originality threshold is required for other subject matter. See Question 6 a) for more information.

2 b) Period of protection The same period of protection applies to all works: 70 years from the end of the calendar year in which the author of the work died.56 A period of protection applies to all types of other subject matter, but varies from other subject matter to other subject matter. For sound recordings57 and cinematographic films58 the period of protection is 70 years from the end of the calendar year in which the recording or film was first published. For sound broadcasts and television broadcasts the period of protection is 50 years from the end of the calendar year in which the broadcast was 53 54 55 56

57 58

Ibid, s 200AB(3). Ibid, s 200AB(4). www.ip.mpg.de/ww/de/pub/aktuelles/declaration_on_the_three_step_/declaration.cfm. Copyright Act 1968 (Cth) s 33(2). Different periods of protection apply for anonymous and pseudonymous works, and for works that had not been published, performed or broadcast at the date of the author’s death: ibid, s 34. Ibid, s 93. Ibid, s 94.

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first made.59 For published editions of works the period of protection is 25 years from the end of the calendar year in which the edition was first published.60

2 c) Specific user rights, free of charge, granted by the law in favour of third parties Certain free of charge user rights are granted to all works and all types of other subject matter. These are: Fair dealing for purposes of research and study;61 Fair dealing for criticism or review;62 Fair dealing for reporting the news;63 Fair dealing for parody and satire;64 Reproductions made for the purpose of judicial proceedings or professional advice;65 – Temporary reproductions made in the course of communication.66

– – – – –

In addition to the user rights listed above, certain free-of-charge user rights are granted specifically to all types of works (but not to other subject matter). These are: – Temporary reproductions of works as a part of a technical process of use;67 – Reproducing works in books, newspapers and periodical publications in different form for private use;68 – Inclusion of works in collections for use by places of education.69 In addition to the user rights listed above for works, certain free-of-charge user rights are granted only in regard to literary works. These are: – – – – –

Reproduction for normal use or study of computer programs;70 Back-up copy of computer programs;71 Reproducing computer programs to make interoperable products72 Reproducing computer programs to correct errors;73 Reproducing computer programs for security testing.74

59

Ibid, s 95. Ibid, s 96. Ibid, ss 40, 103C. Ibid, ss 41, 103A. Ibid, ss 42, 103B. Ibid, ss 41A, 103AA. Ibid, s 43. Ibid, s 43A. Ibid, s 43B. Ibid, s 43C. Ibid, s 44. Ibid, s 47B. Ibid, s 47C. Ibid, s 47D. Ibid, s 47E. Ibid, s 47F.

60 61 62 63 64 65 66 67 68 69 70 71 72 73 74

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In addition to the user rights for works listed above, certain free-of-charge user rights are granted only in regard to artistic works. These are: – Exceptions for public displays of artistic works that are included in broadcasts or films;75 – Reproducing photographs in different format for private use.76 In addition to the user rights mentioned above for all types of other subject matter, sound recordings can be copied for private and domestic use,77 cinematographic films can be copied into a different format for private use,78 and television broadcasts and sound broadcasts can be recorded for replaying at a more convenient time.79

2 d) Specific user rights granted by the law in favour of third parties subject to the payment of a remuneration to the right holder(s) The only user right granted to third parties subject to the payment of remuneration that is applicable to all works and all types of other subject matter is the use of copyright by the Crown.80 In addition to the remunerated user right above, certain remunerated user rights are also available for all types of works. These are: – Reproduction for purpose of broadcasting;81 – Reproduction by education institutions of works that are in hardcopy form;82 – Reproduction and communication by education institutions of works that are in electronic form;83 – Reproduction and communication of works by institutions assisting persons with a print disability.84 In addition to the relevant remunerated user rights above, literary works, dramatic works and cinematographic films may be reproduced in sound broadcasts by holders of print disability radio licences,85 television and sound broadcasts may be copied and communicated by educational institutions,86 and free-to-air broadcasts may be re-transmitted.87

75 76 77 78 79 80 81 82 83 84 85 86 87

Ibid, ss 65–73. Ibid, s 47J. Ibid, s 109A. Ibid, 110AA. Ibid, s 111. Ibid, Part VII Division 2. Ibid, s 47. Ibid, Part V Division 2. Ibid, Part VB Division 2A. Ibid, Part VB Division 3. Ibid, s 47A. Ibid, s 135E. Ibid, s 135ZZK.

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2 e) Obligations to conclude a contract established by law to grant a third party specific user rights in return for payment of a fee (mandatory license) The mandatory licence permitting the manufacture of a record applies only to musical works.88

2 f) Rules on misuse Not applicable. See Question 2 f).

6. Please cite and/or describe as completely as possible a) The legal instruments and/or the relevant judicial practice concerning Question 2 a) Generally speaking, the creativity/originality requirement for works is quite low. The requirement will be satisfied if the work results from the exercise of some form of independent intellectual effort; neither literary merit nor novelty is required.89 This means that a copyright can subsist in a translation of a literary work,90 or an arrangement of a musical work,91 independent from the copyright in the literary work translated or the musical work arranged. There is no requirement of creativity/originality for other subject matter; mere production of the other subject matter is sufficient to give rise to copyright protection.

b) The provisions covered by Question 2 c) to e) 2 c) Specific user rights, free of charge, granted by the law in favour of third parties Free of charge user rights include the following: – – – – –

Fair dealing for purposes of research and study;92 Fair dealing for criticism or review;93 Fair dealing for reporting the news;94 Fair dealing for parody and satire;95 Reproductions made for the purpose of judicial proceedings or professional advice;96

88

Ibid, s 55. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 80 IPR 451, 460. Byrne v Statist Co Ltd [1914] 1 KB 622; Coogi Australiat v Hysport International (1998) 86 FCR 154, 185. Hyperion Records v Sawkins [2005] EWCA Civ 565. This is an English case, but the same musical works classification exists in Australia. Copyright Act 1968 (Cth) ss 40, 103C. Ibid, ss 41, 103A. Ibid, ss 42, 103B. Ibid, ss 41A, 103AA. Ibid, s 43.

89 90

91

92 93 94 95 96

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– Temporary reproductions of works as a part of a technical process of use;97 – Temporary reproductions made in the course of communication;98 – Reproducing works in books, newspapers and periodical publications in different form for private use;99 – Inclusion of works in collections for use by places of education;100 – Exceptions for public displays of artistic works that are included in broadcasts or films;101 – Reproduction for normal use or study of computer programs;102 – Back-up copy of computer programs;103 – Reproducing computer programs to make interoperable products;104 – Reproducing computer programs to correct errors;105 – Reproducing computer programs for security testing;106 – Reproducing photographs in different format for private use;107 – Copying sound recordings for private and domestic use;108 – Copying cinematograph films in different format for private use;109 – Recording broadcasts for replaying at a more convenient time.110 2 d) Specific user rights granted by the law in favour of third parties subject to the payment of a remuneration to the right holder(s) Renumerated third party users rights include the following: – – – – – – 97

Reproduction for purpose of broadcasting;111 Sound broadcasts by holders of print disability radio licences;112 Reproduction for purpose of including a work in a television broadcast;113 Public performance of a published sound recording;114 Copying and communication of broadcasts by educational institutions;115 Making and communication of preview copies;116

Ibid, s 43B. Ibid, s 43A. 99 Ibid, s 43C. 100 Ibid, s 44. 101 Ibid, ss 65–73. 102 Ibid, s 47B. 103 Ibid, s 47C. 104 Ibid, s 47D. 105 Ibid, s 47E. 106 Ibid, s 47F. 107 Ibid, s 47J. 108 Ibid, s 109A. 109 Ibid, s 110AA. 110 Ibid, s 111. 111 Ibid, s 47. 112 Ibid, s 47A. 113 Ibid, s 70. 114 Ibid, s 108. 115 Ibid, s 135E. 116 Ibid, s 135F. 98

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– Reproduction by educational institutions of works that are in hardcopy form;117 – Reproduction and communication of works that are in electronic form;118 – Reproduction and communication of works by institutions assisting persons with a print disability;119 – Retransmission of free-to-air broadcasts;120 – Use of works and other subject matter by the Crown.121 2 e) Obligations to conclude a contract established by law to grant a third party specific user rights in return for payment of a fee (mandatory license) The Copyright Act 1968 (Cth) obliges the establishment of a contract to grant a third party a licence in only one situation: the manufacture of a sound recording of a musical work that has previously been embodied in a sound recording by or with the consent of the owner of the copyright in the musical work.122

c) Where appropriate, the relevant judicial practice concerning Question 2 c) to e) 2 c) Specific user rights, free of charge, granted by the law in favour of third parties Research or Study – Copyright Act 1968 (Cth), ss 40 and 103C Research or study means an enquiry into the other subject matter to discover facts and principles; simply gathering material or facts and supplying them in a commercial transaction will not suffice.123 Fair Dealing for Criticism or Review – Copyright Act 1968 (Cth), ss 43 and 103A Review is cognate with criticism, which requires critical application of mental facilities. Simply reproducing copyright material on a media monitor will not suffice to qualify under this fair dealing provision; criticism or review must engage with the material reproduced.124 Further, reproduction of copyright material followed by a general discussion of the people within it will not suffice; the criticism or review must be directed towards what would otherwise be an infringement.125 Reporting of the News – Copyright Act 1968 (Cth), ss 42 & 103B Reporting of the news is not restricted to current events and may involve humour; a distinction between humour and the news may be elusive.126 The mere taking of copyright material and wholly supplying it in the course of commerce without com117

Ibid, Part VB Division 2. Ibid, Part VB Division 2A. 119 Ibid, Part VB Division 3. 120 Ibid, s 135ZZK. 121 Ibid, Part VII Division 2. 122 Ibid, s 55. 123 De Garis v Neville Jeffress Pidler Pty Ltd (1990) 18 IPR 292, 298. 124 Ibid, 299. 125 TCN Channel Nine Pty Ltd v Network Ten Pty Ltd (2002) 190 ALR 468, 491. 126 Ibid, 487. 118

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ment cannot be “the reporting of news”.127 However, supplying a two-minute highlights package of an 80-minute sports programme for up to 48 hours after the event can constitute “reporting the news”.128 2 d) Specific user rights granted by the law in favour of third parties subject to the payment of a remuneration to the right holder(s) Use of Copyright by the Crown – Copyright Act 1968 (Cth), Part VII Division two of Part VII of the Copyright Act 1968 (Cth) sets out a comprehensive compulsory licence scheme for Crown use. Under this scheme, the doing of any act by the Crown for the services of the Crown will not constitute an infringement of copyright; however, the Crown must inform the copyright owner of the doing of the act and must pay the copyright owner such sum as is agreed by the parties or, in the absence of agreement, fixed by the Copyright Tribunal.129 In Copyright Agency Ltd v State of New South Wales130 the government argued that the compulsory licence scheme for Crown use did not apply to a use by the Crown for which a licence could be implied.131 The High Court, in obiter, accepted this proposition.132 On the facts of the case, however, the court found against the government because the use in issue was not one for which a licence could be implied.133 Because there was no implied licence, the use of copyright made by the government was one to which the compulsory licence scheme applied (implied licences arise as a matter of contractual interpretation – see Question 12(c) for more details). 2 e) Obligations to conclude a contract established by law to grant a third party specific user rights in return for payment of a fee (mandatory license) The mandatory licence permitting the manufacture of a record of a musical work applies only if: (a) a record of the work has previously been made in, or imported into, Australia by, or with the licence of, the owner of the copyright in the work; (b) before the making of the record, the prescribed notice of the intended making of the record was given to the owner of the copyright; (c) the manufacturer intends to sell the record by retail; and (d) the prescribed royalty is paid to the owner of the copyright in the manner agreed between the manufacturer and the owner of the copyright or, failing such agreement, determined by the Copyright Tribunal under section 152B.134 These conditions have not been the subject of judicial interpretation.

127

Ibid. Telstra Corporation Pty Ltd v Premier Media Group Pty Ltd [2007] FCA 568. 129 Copyright Act 1968 (Cth) s 183(1), (4). 130 Copyright Agency Ltd v State of New South Wales (2008) 233 CLR 279. 131 Ibid, 304. 132 Ibid, 306. 133 Ibid. 134 Copyright Act 1968 (Cth) s 55. 128

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d. 2 f) Rules on misuse N/A

7. Have certain legal instruments according to Question 2 a) to f) – only been introduced in the course of time; – been repealed in the course of time; – and if so why? To answer this question we have set a reference date of 1 January 1968. This day is the date that our modern copyright legislation came into force. This question will therefore look to capture all introduced and repealed instruments in reference to this date. As a consequence of this, some repealed instruments will be cited as from Copyright Act 1911 (Imp) – this refers to the fact that Australia’s Copyright Act 1912 (Cth) explicitly incorporated the entire British Copyright Act 1911 into Schedule 1 of the Copyright Act 1912 (Cth).

2 a) Specific preconditions or thresholds allowing a work’s protection only if it surpasses a particular degree of creativity N/A 2 b) Period of protection Due to the Australian and United States Free-Trade Agreement, which entered into force on 1 January 2005, the period of protection for all works, cinematographic films and sound recordings was increased. The period of protection for all works increased from 50 years from the end of the calendar year in which the author of the work died to 70 years from the end of the calendar year in which the author of the work died. The period of protection for cinematographic films and sound recordings increased from 50 years from the end of the calendar year in which the film or recording was first published to 70 years from the end of the calendar year in which the film or recording was first published. 2 c) Specific user rights, free of charge, granted by the law in favour of third parties Certain free-of-charge user rights have been repealed due to changes in domestic policy. These are: – No infringement if an artistic work is used but the “main design” of the work is not repeated or imitated;135 – Publication of a newspaper report of a lecture delivered in public unless the report is prohibited;136 – No infringement by reproduction of an address of a political nature delivered at a public meeting.137 135

Copyright Act 1911 (Imp) s 2(1)(ii). Ibid, s 2(1)(v). 137 Ibid, s 20. 136

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Certain free-of-charge user rights have been introduced due to changes in modern domestic policy. These are: – – – – – – – – – – – – –

Fair dealing for parody and satire;138 Temporary reproduction made in the course of communication;139 Temporary reproduction of works as a part of a technical process of use;140 Reproducing works in books, newspapers and periodical publications in different form for private use;141 Reproduction for normal use or study of computer programs;142 Back-up copy of computer programs;143 Reproducing computer programs to make interoperable products;144 Reproducing computer programs to correct errors;145 Reproducing computer programs for security testing;146 Reproducing photographs in different format for private use;147 Copying sound recordings for private and domestic use;148 Copying cinematograph films in different format for private use;149 Use of works and other subject matter for certain purposes by a library or archive, an educational institution, or a person with a disability.150

2 d) Specific user rights granted by the law in favour of third parties subject to the payment of a remuneration to the right holder(s) The only repealed user right that was subject to payment of remuneration was a compulsory licence for the reproduction or the performance in public of a literary, dramatic or musical work that had previously been published or performed in public, in the situation where the author of the work had died and the work was withheld from the public because the owner of copyright had refused to republish or allow the republication of the work or had refused to allow the performance of the work in public.151 The reason for removal of this user right was domestic policy. Certain user rights subject to payment of remuneration have been introduced. The reason for their introduction has been domestic policy. They are:

138

Copyright Act 1968 (Cth) ss 41A, 103AA. Ibid, s 43A. 140 Ibid, s 43B. 141 Ibid, s 43C. 142 Ibid, s 47B. 143 Ibid, s 47C. 144 Ibid, s 47D. 145 Ibid, s 47E. 146 Ibid, s 47F. 147 Ibid, s 47J. 148 Ibid, s 109A. 149 Ibid, s 110AA. 150 Ibid, s 200 AB. 151 Copyright Act 1911 (Imp) s 4. 139

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Sound broadcasts by holders of print disability radio licences;152 Copying and communication of broadcasts by educational institutions;153 Making and communication of preview copies;154 Reproduction by educational institutions of works that are in hardcopy form;155 Reproduction and communication of works that are in electronic form;156 Reproduction and communication of works by institutions assisting persons with a print disability;157 – Retransmission of free-to-air broadcasts.158

– – – – – –

2 e) Obligations to conclude a contract established by law to grant a third party specific user rights in return for payment of a fee (mandatory license) Slight amendments have been made to the conditions upon which manufacturers may make a sound recording of musical works;159 however, the same basic user right in return for payment of a royalty has continued to exist. 2 f) Rules on misuse N/A

8. Are there rules that restrict the scope of the user rights according to Question 2 c) to e), in particular – by laying down specific preconditions for the applicability of individual user rights; – by laying down abstract preconditions for the applicability of individual user rights Under Australian copyright law each user right describes its scope, the categories of work or other subject matter to which it applies, and the conditions that must be met for it to be effective. Whilst a detailed description of all the user rights and their preconditions cannot be afforded here, it is pertinent to note the preconditions below.

2 c) Specific user rights, free of charge, granted by the law in favour of third parties – Fair dealing for purposes of research or study160 and fair dealing for reporting the news161 require “specific acknowledgement” of the copyright owner. 152

Copyright Act 1968 (Cth) s 47A. Ibid, s 135E. 154 Ibid, s 135F. 155 Ibid, Part VB Division 2. 156 Ibid, Part VB Division 2A. 157 Ibid, Part VB Division 3. 158 Ibid, s 135 ZZK. 159 Copyright Act 1911 (Imp), s 19(2)–(3). 160 Copyright Act 1968 (Cth), ss 40, 103C. 161 Ibid, ss 42, 103B. 153

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– Reproductions of computer programs for normal use or study,162 for back-up,163 to make interoperable products,164 or to correct errors or for security testing,165 can only be made by an owner or licensee of the original program. – Reproductions of works in books, newspapers and periodical publications into different forms,166 reproductions of photographs in different formats,167 copying sound recordings for later use,168 copying cinematograph films into a different format169 and recording broadcasts for replaying at more convenient times170 all require that the reproductions be made for private and domestic purposes. – s 200AB is described in detail in Question 4; it is the only free-of-charge user right that contains both abstract and specific preconditions.

2 d) Specific user rights granted by the law in favour of third parties subject to the payment of a remuneration to the right holder(s) Copying and communication of broadcasts by educational institutions,171 making and communication of preview copies,172 making and communication of preview of works in electronic form,173 and reproduction and communication of works by institutions assisting persons with a print disability174 can only be carried out for educational purposes.

2 e) Obligations to conclude a contract established by law to grant a third party specific user rights in return for payment of a fee (mandatory license) For a manufacturer to rely upon s 55 to make records of a musical work, the manufacture must intend to sell the record by retail.175 This means, in effect, that the manufacturer must have a commercial intention.

162

Ibid, s 47B. Ibid, s 47C. 164 Ibid, s 47D. 165 Ibid, s 47E. 166 Ibid, s 47F. 167 Ibid, s 47J. 168 Ibid, s 109A. 169 Ibid, s 110A. 170 Ibid, s 111. 171 Ibid, s 135E. 172 Ibid, s 135F. 173 Ibid, s 135ZMD. 174 Ibid, s 135ZP. 175 Ibid, s 55(c). 163

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9. Are there rules to protect the existence of the user rights according to Question 2 c) to e), in particular What kinds of binding rules are there to prohibit the undermining of statutory user rights? Generally speaking, there are no binding rules that have been established to prohibit undermining of statutory user rights. A report by the Copyright Law Review Committee in 2002 described how statutory user rights can be undermined in practice by contractual provisions, and stated that the legal effect of these provisions is uncertain. This point has not been litigated. The report recommended amending the Copyright Act 1968 (Cth) so that provisions excluding or modifying user right provisions have no effect, but to date such amendments have not been made.176 Section 47H of the Copyright Act 1968 (Cth) is an exception to this position; it explicitly states that any agreement to exclude or limit the operation of s 47B(3) (reproduction for normal use or study of computer programs), s 47C (back-up copying of computer programs), s 47D (reproducing computer programs to make interoperable products), s 47E (reproducing computer programs to correct errors) or s 47F (reproducing computer programs for security testing) has no effect.177

How is the relationship between technical protection measures/DRM (digital rights management) and statutory user rights regulated? The Copyright Act 1968, in Subdivision A of Division 2A of Part V, provides protection against the circumvention of technological protection measures (TPMs), by providing a right of action against a person who circumvents a TPM. However, the Act explicitly provides that this right of action does not apply to circumvention for the purpose of: – Achieving interoperability of an independently created computer program with the original program;178 – Identifying and analysing flaws and vulnerabilities of encryption technology;179 – Testing, investigating or correcting the security of a computer, a computer system or a computer network;180 – Providing online privacy;181 – Allowing libraries, archives and educational institutions to make a decision as to whether they want to buy copyright material;182 – Law enforcement, national security, or performing a statutory function, power or duty of government or agencies.183 176

Copyright Law Review Committee, Copyright and Contract, Executive Report (2002) 2.11. Copyright Act 1968 (Cth) s 47H. 178 Ibid, s 116AN(3). 179 Ibid, s 116AN(4). 180 Ibid, s 116AN(5). 181 Ibid, s 116AN(6). 182 Ibid, s 116AN(8). 183 Ibid, s 116AN(7). 177

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Digital rights management information (DRMI) is protected under Subdivision B of Division 2A of Part V of the Copyright Act 1968, by providing a right of action against a person who removes or alters DRMI without authorisation. The only exception to the availability of this right of action is in respect of acts done for the purpose of law enforcement and national security.184

Is there a decision (explicit or implicit) on the extent to which – exclusivity rules to the benefit of the right holder, – access possibilities in favour of third parties, – should enjoy priority in the event of doubt? No.

10. Questions concerning user rights subject to remuneration or mandatory licence a) How is the amount of the fee determined: basically; and in the event of conflict? 2 d) Basically, the parties (i.e. the organisation using the material and the relevant copyright collecting society) agree to a fee; there is often a “trade rate” depending on the material used and circumstances of its use. In the event of conflict between the parties, the Copyright Tribunal will decide upon “equitable remuneration”. 2 e) Basically, the parties (i.e. the organisation using the material and the relevant copyright collecting society) agree to a royalty which is usually a proportion of the retail price or wholesale price; the Act does specify a default rate of 6.25% of a retail selling price. In the event of conflict between the parties, the Copyright Tribunal will decide upon the appropriate royalty.185

b) Are there particular procedural rules for cases covered by Question 2d), e) and f) e.g. concerning the distribution of the burden of proof; provisional measures; other aspects? 2 d) There are no specific rules regarding the burden of proof, because the Copyright Tribunal is not bound by the rules of evidence.186 However, there are particular procedural rules for all the 2d) statutory licence applications to the Copyright Tribunal.187 Generally, these sections require that the application sets out the circumstances or events giving rise to the application, any relevant copyright, the owners of the works, whether collecting societies are involved, and identity of the parties.

184

Ibid, s 116CB. Copyright Act 1968 (Cth) s 55. 186 Copyright Act 1968 (Cth) s 164(b). 187 Copyright Tribunal (Procedure Regulations) 1969 (Cth) Part IV; Copyright Act 1968 (Cth) ss 149–159. 185

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There are specified time frames for some applications. Specific elements, such as details of broadcasting licences, may also need to be included. 2 e) There are no particular procedural rules for a s 55 application to the Copyright Tribunal. 2 f) N/A

c) How is the fee paid to the right holders by the party entitled to use – for cases covered by Question 2 d), – for cases covered by Question 2 e)? 2 d) and e) Fees or royalties, and the method by which they are paid to copyright owners, can be negotiated between parties. Generally speaking, however, collecting societies determine how fees or royalties are collected from copyright users and how they are paid to right holders. The method by which fees or royalties are collected and passed onto right holders may be based on enumerated uses or it may be based on surveys of copyright users carried out by collecting societies.

d) Does national law contain rules that regulate the distribution of fees – – – – –

for cases covered by Question 2 d), for cases covered by Question 2 e), between the various categories of right holders? If so, which? If not, how are such distributions determined?

Australian law does not contain rules that regulate the distribution of fees or revenue between any categories of right holders. The collecting societies determine the distributions and members of the society or the society itself may apply to the Copyright Tribunal to have arrangements confirmed, varied or substituted.188

11. Does national law contain general rules based on a differentiation between different categories of right holders, in particular a) Binding rules on contractual relationships between different categories of right holders (copyright contract) The right holders of moral rights and performers’ rights are treated differently compared with the right holders of economic rights with respect to their ability to transmit rights by contract. Unlike the economic rights of the owner of copyright in a work or other subject matter, moral rights and performers’ rights cannot be assigned.189

b) Differences with respect to the scope of statutory user rights No. 188 189

Copyright Act 1968 (Cth) s 153DE, 136SA. Copyright Act 1968 (Cth) ss 195AN(3), 248N.

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c) Other No.

12. Which of the following legal instruments or mechanisms are used in national law outside copyright in order to achieve a “balance of interests”? a) Fundamental rights Fundamental rights do not explicitly exist in Australian law.

b) Competition law In Australia, competition law is enforced through the Trade Practices Act 1974 (Cth). Part IV of the Trade Practices Act 1974 (Cth) outlines prohibited trade practices, including cartel conduct, agreements affecting competition, exclusive dealing, resale price maintenance and misuse of market power. Section 51(3) of the Trade Practices Act 1974 (Cth) explicitly limits the application of Part IV of the Trade Practices Act 1974 (Cth) to copyright. This section specifies that the prohibitions only apply to licensing, assignment and ownership of copyright in scenarios of misuse of market power190 and resale price maintenance.191

c) Contract law Implied licences will be read into a contract where to do so is necessary so as not to undermine accrued rights. This means that: [T]he engagement for reward of a person to produce material of a nature which is capable of being the subject of copyright implies a permission, or consent, or licence in the person giving the engagement to use the material in the manner and for the purpose in which and for which it was contemplated between the parties that it would be used at the time of the engagement.192

In applying this principle, the High Court has suggested that a government authority to which conveyancing plans had been submitted would be permitted to make internal reproductions and “back-up” copies of the plans without remunerating the author.193

d. General rules on misuse No.

e. Consumer protection law No. 190

Trade Practices Act 1974 (Cth) ss 46, 46A. Ibid, s 48. 192 Beck v Montana Constructions Pty Ltd [1964-5] NSWR 229, 23 approved of by the High Court in Copyright Agency Ltd v New South Wales (2008) 233 CLR 279, 304. 193 Copyright Agency Ltd v New South Wales (2008) 233 CLR 279, 306. 191

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f. Media law No.

g. Other Courts have discretion in Equity to refuse remedies for the infringement of copyright on the grounds of public policy, particularly when the publication of the material in question would be contrary to the public interest. There are a number of old English authorities where discretion has been exercised not to award equitable or legal remedies in respect of material which is immoral, seditious, blasphemous, obscene, fraudulent or deceptive.194 Modern case law has acknowledged the existence of this principle, while noting that identifying what is immoral is difficult.195 Leading commentators have suggested that remedies for infringement will likely be refused only for material that is highly offensive to religious beliefs, or that is unlawful (particularly if it is fraudulent and deceptive).196 In Australia, it seems that courts will use their general discretion to refuse equitable relief for infringement, and therefore refuse injunctions to restrain the publication, of material the disclosure of which is in the public interest.197 For example, in Acohs Pty Ltd v R.A. Bashford Consulting Pty Ltd,198 Merkel J stated in obiter that it is inappropriate to award injunctive relief against infringing publication of material safety data sheets. Because these sheets contained information on the safe use of chemicals, Merkel J thought it was appropriate to award damages only.

Abbreviations Cth DRM DRMI Imp

194

Commonwealth of Australia Digital rights management Digital rights management information Imperial Parliament

Law Book Company, Laws of Australia, (at 28 September 2009) 23 Intellectual Property, “23.1 Copyright” [4160]. 195 Stephens v Avery [1988] Ch 449. 196 Staniforth Ricketson, The Law of Intellectual Property, 130 (The Law Book Company Limited, Sydney 1984). 197 Staniforth Ricketson and Chris Creswell, The Law of Intellectual Property: Copyright, Design and Confidential Information (at Update 63, January 2012 [7.435] (Lawbook Co, Sydney 2000). 198 Acohs Pty Ltd v R.A. Bashford Consulting [1997] FCA 352.