IP LAW Part 1 Guide to answering questions PDF

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Examination Aide Memoire is designed to help the student tackle questions relating to the assessment and final exam. Please read in conjunction with part 2 which has also been uploaded....

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Examination Aide Memoire - JF

Copyright Step 1 – Eligibility for Copyright What does copyright protect? The Copyright Act 1968 states copyright protects; Copyright will subsist in any  original literary, musical, dramatic and artistic works or other subject matter (other subject matter includes; sound recordings, cinematographic films and radio broadcasts and published editions of works)  In a material form by a qualified person  Do not require the symbol copyright or “All Rights Reserved” as part of the Burne Convention What is the Duration of Copyright? The duration of copyright is quite long, 70 years in the case of films, sound recordings and broadcasts and even longer for such things as books, music and art works. Do I qualify for copyright? s 32. – Must be an original literary, dramatic, musical or artistic work where the creator is a qualified person 1. What is a qualified person?  Qualified person means an Australian citizen, an Australian protected person or a person resident in Australia  s 35(2) - Author of a work = owner of the copyright provided the author is a qualified person: 2. Am I copyrighting the Expression and NOT THE IDEA?  Copyright is not designed to protect ideas, but rather the way in which those ideas are expressed in some material form Case: Donoghue v Allied Newspapers Outline: 1. Donoghue was a famous UK jockey 2. 1931 an English paper printed a series of articles based on Donoghue 3. Articles NOT dictated by Donoghue 4. Rather created by Felstead (author) from conversation he had with Donoghue 5. D was paid £2000 for his contribution. 6. In 1936 Felstead convinced the defendant to publish a story 7. D refused permission & when the story appeared he sued for breach of copyright. Decision: 1. Donoghue was rejected 2. Copyright belongs to the creator & Donoghue was not this person

Step 2 – Requirements of Copyright

Examination Aide Memoire - JF

Requirement 1 – Originality 1. Copyright only subsists in original works 2. Originality means that the work must originate from the author and not be copied 3. Copyright protects the skill, labour and judgement involved in the production of the work rather than any creative merit - Sands & McDougall Pty Ltd v Robinson If the work originates from the author in the sense that it is the result of his or her ‘skill, labour or experience’, and it is not copied from another, it will satisfy the test for originality. CASE: London Press v University Tutorial Press  The ‘Sweat of brow’ doctrine sets a low level of originality.  Originality lies not in the data itself, but in the expense and labour involved in collecting, verifying, storing or presenting the data  Meaning so long as a person uses their own skill and effort to create the work AND DO NOT copy another work this test is meet. Note: It is NOT CONSIDERED TO be original if it is the only way of doing something eg– see Ownit Homes Case CASE: Sands & McDougall v Robinson (copyright claimed in a map of Europe); CASE: Express Newspapers v News

Requirement 2 – Material Form s 10 - Material form in relation to a work or an adaptation of a work includes:  any form whether visible or not of storage of the work or adaptation  or a substantial part of the work or adaptation o includes storage on a computer  i.e. copyright will not attach to a speech unless it is put in writing or recorded in some way.  sculptures, paintings, drawings or engravings, photographs, buildings, models and works of artistic craftsmanship  Musical- notes, sheet music s 22 - Defines this making as occurring when the work is first reduced to writing or other material form from which the expression can be copied Things that are not material form  Stuff that is transitory  Eg fireworks show Sydney Harbour Bridge  CASE: Nine Network Australia v ABC Is facial makeup a material form? CASE: Merchandising Corp of America v Harpbond Facial makeup applied by the rock singer Adam Ant before each concert DID NOT attract copyright as an artistic work (a painting) This is because it was NOT in a material form: Was NOT reduced to any permanent or fixed surface, which is the essence of a painting.

Requirement 3 – Original Literary Works

Examination Aide Memoire - JF

Include (in appropriate circumstances):  business letters  manuals of instructions  business and financial reports  advertising brochures or circulars  catalogues  advertising jingles  product labels  computer program Other pieces of original material  A football fixture (CASE: Football League v Littlewoods  A football pools coupon (CASE: Ladbroke v William Hill)  A bookkeeping system (CASE: Kalamazoo v Compact Business Systems) Are COMPILATIONS OF DATA original literary works?  s 10 - A literary work includes a compilation, expressed in words, figures or symbols: o A collection of factual data may have copyright, provided it is original o Originality lies not in the data itself, but in the expense and labour involved in collecting, verifying, storing or presenting the data (the socalled ‘sweat of the brow’ doctrine) CASE: Desktop Marketing Systems v Telstra Outline: 1. Telstra made the phone book 2. Substantial labour and expense went into collecting, verifying, recording, assembling and producing these directories. 3. DM reproduced it in a digital form on CD 4. Telstra argued infringement of copyright. Decision: 1. Appeal was dismissed. 2. Originality in a factual compilation MAY lie in the labour and expense involved in collecting the information recorded in the work, as distinct from the “creative” exercise of skill or judgement, or the application of intellectual effort.

Other cases where copyright EXISTED: Case Fortutity v Barcza Fairfax v Consolidated Press A-One Accessory Imports v Off Road Imports Millwell v Olympic Amusements Seven Network v Media

Facts Weight Watchers Program A newspaper column detailing births, deaths and marriages A motorcycle parts catalogue Prize scales used in a poker video game firm’s internal telephone directory

Are ADVERTISING MATERIAL AND TRADE NAMES original literary works? Exists in advertising material such as in jingles & advertising

Examination Aide Memoire - JF

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Copyright could even subsist in an advertising slogan, although a compilation of commonplace sentences commonly in use will not be original o CASE: Kirk v J & R Fleming

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If trade name is an original literary ‘work’ then YES copyright o However to be a literary work the matter must be sufficiently substantial

CASE: Exxon Corporation v Exxon Insurance Outline: 1. Multinational oil corporation. 2. Chosen name as satisfied 3 criteria set out by the co 3. Insurance company also used the name without permission 4. Oil sued in passing off and breach of copyright. Decision: 1. COPYRIGHT – NO 2. A literary work is something that provides either information or instruction or pleasure in the form of literary enjoyment. a. ‘Exxon’ DOES NOT perform any of those functions b. It has NO meaning except where used with other words or in a particular juxtaposition CASE: Francis Day Hunter v Twentieth Century Fox copyright did not subsist in the words ‘The Man who Broke the Bank at Monte Carlo’. CASE: Sinanide v La Maison Kosmeo The phrase ‘Beauty is a social necessity, not a luxury’ was held to be TOO trivial Bottom Line:  It is UNLIKELY, therefore, that advertisers will often be able to rely on copyright to protect product or trade names or slogans o Should use trademark acts or designs act were appropriate  Copyright only protects the original part of the work. If the originality is limited the monopoly provided by the Copyright Act will be correspondingly limited.

Is COMPUTER SOFTWARE original literary works? 1. No mention of computer software in Act & therefore interpreted in same way as any other work 2. s 10 - A ‘computer program’ is now defined to mean a set of statements or instructions to be used directly/indirectly in a comp in order to bring about a certain result: o i.e. source code is copyrighted because of ‘sweat of the brow’ 3. Object code should is NOW be protected. Are Original Dramatic Works literary works? Copyright protects include plays, film scripts and choreographic shows. There is considerable overlap between dramatic works and literary works. Are Original Music Works literary works? Copyright protects original musical work is a reference to the musical score copyright will subsist in the score for an opera and in the score for an advertisement Are words in a song copyrighted?

Examination Aide Memoire - JF

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The words to a song do not form part of the musical work. They are protected as literary works.

Therefore, obtaining permission to use a song in an advertisement could involve seeking authorisation from at least two copyright holders.

Are the works Original Artistic Works? (IMPORTANT) Section 10 provides that an artistic work includes: (whether of artistic quality or not)  (a) a painting ,sculpture, drawing engraving or photograph, whether the work is of artistic quality or not:  (b) a building or a model of a building, whether it is of artistic quality or not; or  (c) a work of artistic craftsmanship to which neither or the last two preceding paragraphs applies 

PLUS works of artistic craftsmanship (see section on AC) o Copyright Act requires some element of artistic quality.

Important: As with literary, dramatic and musical works the level of originality required for an artistic work is NOT great.

Are LOGOS AND SIMPLE MARKETING DESIGNS artistic works?  If sufficient skill and judgment has gone into its creation,  A logo or other distinguishing mark may attract copyright protection as an artistic work Given Copyright CASE: Lott v JBW & Friends & Endeavour Corporate Design  Graphic bar containing the words ‘Opera in the Outback’

Examination Aide Memoire - JF

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Was done in stylistic fashion used on the cover of a brochure for a concert WAS sufficiently original to attract copyright, Even though the choice of font style was made from a computer program and the whole design was done in fairly quick time

CASE: Melbourne Chinese Press v Australian Chinese Newspapers  The particular way in which the Chinese characters that made up the masthead of a Chinese language newspaper were written (the calligraphy) was held to be an artistic work  Chinese characters in expressive brush stokes = painting Denied Copyright CASE: Cortis Exhaust Systems v Kitten Software  A digitally produced product logo simply using the letters “sim”  ‘SIM’ was too trivial to attract copyright  NO COPYRIGHT CASE: Merchandising Corp of America Inc v Harpbond  Facial makeup could be an artistic work?  ‘2 straight lines drawn with greasepaint with another line in between them drawn with some other colouring matter, by itself could not possibly attract copyright’

Are PRODUCT DESIGNS, PRODUCTION MOULDS & PROTOTYPES artistic works? As no artistic merit is required, drawings for industrial products will often be artistic works. The benefit of claiming copyright in product drawings is that copyright will:  protect three dimensional products that correspond to the drawings  the protection will last much longer than for a registered design. Copyright EXISTED: Case : Compagnie Industrielle de Precontrainte et D’Equipment des Constructions SA v First Melbourne Securities Amalgamated Mining Services v Warman International

Industrial pumps

S.W. Hart & Co. v Edwards Hot Water Systems

A hot water system

British Leyland v Armstrong Patents

An exhaust system for a Leyland motor car The drawings for a yacht Dressmaking designs and patterns.

Dorling v Honnor Marine Muscat v Le CASE: Wham-O v Lincoln Industries (Mould Case) Outline: Frisbee including the original drawings:  the original wooden model (as a sculpture)  the mould or die (as an engraving)

Facts Joints for bridges

Examination Aide Memoire - JF

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the final product produced by an injection moulding process (as a sculpture or an engraving)

Decision: Ctt ACCEPTED most of these submissions REJECTED that a product made from an injection moulding process was a sculpture. CASE: Greenfield Products v Rover-Scott Bonnar (Industrially Applicable) Outline: 1. Manufactured ride-on motor mowers 2. Developed a new drive mechanism 3. Applicant failed either to take out a patent covering the inventive elements of the drive mechanism, or to register the design of the drive mechanism under the Designs Act 4. Other party copied design and improved on it and defendant sued claiming drawings + artistic works were artistic works. Decision: 1. Utilitarian products made from a moulding process were NOT sculptures. 2. Rejected the notion that a ‘sculpture’ included machinery 3. Contrast to the Frisbee case, the court rejected the argument that a mould or die for producing machinery was an engraving. 4. Although copyright subsisted in the drawings, it was unenforceable against the defendant because of the defence provided by s 77 of the Copyright Act because the artistic work had been applied industrially. Are BUILDINGS AND MODELS FOR BUILDINGS artistic works? Copyright clearly subsists in the floorplan for a house as a drawing provided the plan is original. CASE: Eagle Homes Pty Ltd v Austec Homes The floor plan for a house as a drawing - YES s 66. - The Copyright Act specifically provides that it is not a breach of copyright to photograph, draw, paint or include in a film or tv broadcast a building or model of a building. Are WORKS OF ARTISTIC CRAFTMANSHIP artistic works?**IMPORTANT** Must prove that works of artistic craftsmanship are:  works which require some skill to produce (craftsmanship)  which appeal to aesthetic (artistic) tastes  even though they may also serve a useful purpose Examples of Artistic Craftsmanship  Hand-crafted vase  Piece of pottery  Silver candelabra NOT Artistic Craftsmanship  Most machine-produced goods are not Artistic Craftsmanship - Guild v Eskandar Limited  The importance of works of AC is that unlike other artistic works (eg design drawings) - they DO NOT lose copyright protection once they have been industrially applied CASE: Greenfield Products v Rover-Scott

Examination Aide Memoire - JF

If the product copied in had been a work of Artist Craftsmanship, the plaintiff WOULD have been able to sue for breach of copyright EVEN though the work had been applied industrially. Burge v Swarbrick  Burge produced boat and gave one to Swarbrick for good work  Swarbrick copied boat and produced many copies of the boat  Burge did not have design or patent available, and therefore filled under copyright for infringement of a boat plug. Decision  Ruled that in works of artistic craftsmanship, there must be some ‘artistic’ factors which contain atheistic elements, and some actual work.  ‘a work of artistic craftsmanship does not turn on assessing the beauty or aesthetic appeal of a work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which a particulars works artistic expression in its form is unconstrained by functionality considerations. The more substantial the requirements in a design brief to satisfy utilitarian considerations indicated with the design of the yacht, the less the scope for that encouragement of real or substantial artistic effort.’  basically, the more “functional and less artistic”, it is not going to be a work of artistic craftsmanship.  Thus, ruled against Burge that the work was not of artistic craftsmanship and therefore had not infringed. What is Craftsmanship?  Simple machine-made garments are NOT works of craftsmanship:  Although there must be an element of craftsmanship, it is probably not necessary that the work be entirely hand-crafted CASE: Guild v Eskandar Limited Commonplace physical activities = NOT Artistic Craftsmanship CASE: Cuisenaire v Reed 1. Court held that there was no element of craftsmanship involved in cutting strips of wood into predetermined lengths and then painting them in different colours so as to produce a set of wooden rods for the teaching of mathematics 2. NOT Artistic Craftsmanship CASE: Bonz Group v Cooke Certain garments, designed by the manufacturer’s principal designer and then made up by the manufacturer’s employee hand knitters  YES are works of Artistic Craftsmanship o However, no Australian court has yet gone so far. What is Artistc? Basic principles to guide the courts in working out Artistic Craftsmanship. CASE: Muscat v Le (a case involving dress designs) 1. The work MUST have an element of genuine artistic quality that “[appeals] to the aesthetic tastes of those who observe it” even if it is also utilitarian. 2. The level of artistic appeal required is greater than mere visual appeal. 3. The level of aesthetic appeal is to be judged objectively on the basis of the evidence before the court

Examination Aide Memoire - JF

4. Evidence that the creator intended to make an article possessing aesthetic qualities is important, but NOT essential. 5. Finally, just because a “...segment of the public can be found which may have been persuaded by advertising or by a transient fad to want to own the work because of its visual appeal does not necessarily mean that it must have the requisite minimum level of aesthetic value” CASE: Muscat v Le 1. A sample garment was NOT a work of Artistic Craftsmanship 2. The purpose of the sample was not to appeal to aesthetic tastes, but to allow the designer to make any changes before production commenced.

CASE: Sheldon & Hammond Pty Ltd v Metrokane Inc (CORKSCREW) A corkscrew was NOT Artistic Craftsmanship The product lacked the necessary aesthetic features, although it was stylish & attractive. CASE: George Hensher Ltd. v Restawile Upholstery (PROTOTYPE) 1. The prototype of an armchair 2. NOT a work of Artistic Craftsmanship

CASE: Coogi Australia Pty Ltd v Hysport International (Machinery Case) Outline: 1. Coogi Design Team created a new fabric design which had both a distinct pattern and weave. 2. Spent considerable time customising machinery to get look – Didn’t register under designs act 3. Hysport Copied the design to some degree. 4. Coogi argued that there were so many similarities between the stitch structures of the two fabrics that Hysport had reproduced a substantial part of the structure of the XYZ fabric. Decision: 1. Rejected the notion that something HAD to be hand-crafted to be Artistic Craftsmanship 2. There is NO necessary difference between a skilled person who makes an article with hand-held tools and a skilled person who uses those skills to set up and operate a machine which produces an article 3. “It is a manifestation of the creator’s skill with computer-controlled machinery, knowledge of materials and pride in workmanship.” a. HOWEVER, Coogi FAILED in its action b/c Hysport had NOT substantially copied the work.

Are Subject Matter other than works Artistic? (IMPORTANT) Are Television Broadcast’s Artistic? The Copyright Act also extends copyright protection to:  sound recordings;  cinematograph films;  television and sound broadcasts; and  published editions of works.

Examination Aide Memoire - JF

Unlike other forms of copyright material, television and sound broadcasts do not have to be in a material form to attract copyright. Copyright exists once the broadcast is made, whether or not the broadcast is recorded. CASE: Network Ten v TCN Channel Nine The Panel, a comedy talk show on Channel Ten, regularly recorded and broadcast short clips (8 to 42 seconds) from Channel Nine programs without Nine’s permission. Each image broadcast by a television station was not a television broadcast. Two out of three judges thought that the Glen McGrath segment was an Infringement was substantial part of programme.

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