Wednesday, April 22, 2009

High Court delivers judgement in the IceTV case

Today, Wednesday 22 April 2009, the High Court of Australia handed down their judgment in the IceTV Pty Limited v Nine Network Australia Pty Limited case [available here]. The Court allowed the appeal with costs.

The appeal to the High Court arose from proceedings brought by the Nine Network in the Federal Court of Australia for infringement of copyright in their Weekly Schedule of television programmes to be broadcast each week. They alleged that each Weekly Schedule was a compilation, and therefore a literary work under the Copyright Act 1968, and that IceTV had infringed copyright by taking part of the time and title information from the Aggregated Guides (guides produced by third party Aggregators, authorised by Nine and to whom Nine provides the Weekly Schedule) and including it in their own (electronic) guide, the “IceGuide”. Nine alleged that this constituted a reproduction of a substantial part of the copyright work. IceTV denied that they had reproduced in a material form a substantial part of any Weekly Schedule and denied that reproduction from any Aggregated Guide was a reproduction of any Weekly Schedule.

French CJ, Crennan and Kiefel JJ summarised the approach of the lower courts as follows (at pp 2-3):
Accordingly, both the primary judge (Bennett J) and the Full Court (Black CJ, Lindgren and Sackville JJ) dealt with this matter on the basis that the subsistence of copyright in the Weekly Schedules was admitted. The dispute was treated below as one to be resolved, first, by a determination of whether the time and title information which was reproduced constitutes a “substantial part” of the Weekly Schedules, and secondly, by consideration of the “indirect reproduction” issue. Both the primary judge and the Full Court essentially approached the question of whether IceTV had reproduced a substantial part of any Weekly Schedule by identifying the “skill and labour” which was expended on creating the Weekly Schedules, then asking whether IceTV has “appropriated” Nine's skill and labour. The primary judge and the Full Court reached opposite conclusions on the point essentially because of different approaches to identifying the relevant skill and labour in question: the primary judge considered that skill and labour in making programming decisions was not relevant and that there was not a reproduction of a substantial part; the Full Court considered that this skill and labour was relevant and that there was a reproduction of a substantial part.
If the High Court had dismissed the appeal and affirmed the Full Court's decision, the practical result, in my view, would have been stifling for new players entering this market. It would have essentially given the Nine Network complete control over any schedules or guides setting out what programmes would be screening on Channel Nine and when, and would have preventing anyone from producing such schedules or guides without first obtaining permission from the Nine Network and most likely paying a licensing fee. This is notwithstanding that the Nine Network's primary function is broadcasting, not scheduling.

French CJ, Crennan and Kiefel JJ gave a joint judgment. They considered that the Weekly Schedules contain both “information” (the time and title information) and “creative” material (such as the synopses of programmes). In relation to the expression of time and title information, they considered that this is not a form of expression that requires particular mental effort or exertion and that the way in which the information can be conveyed is very limited (at p16). They stated at pp 16-17:
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. The expression lacks the requisite originality (in the sense explained) for the part to constitute a substantial part.

Counsel for Nine sought to place importance upon the production not only of time and title information in respect of each programme, but also of the chronological arrangement of the time and title information for various programmes. Whether a selection or arrangement of elements constitutes a substantial part of a work depends on the degree of originality of that selection or arrangement. In this case, a chronological arrangement of times at which programmes will be broadcast is obvious and prosaic, and plainly lacks the requisite originality.

These considerations lead to the conclusion that the part of the Weekly Schedule (or the Nine Database) alleged to have been reproduced was not a substantial part.

This determination is, in my view, significant. Although the judges did not address the issue of whether Nine's Weekly Schedule compilation ought to attract copyright protection in the first place (though see pp 17-18 for a brief reference), at least in so far as it only compiled facts or information in a logical way, they did hold that that protection would not extend to the use of mere facts from the compilation.

Since Desktop Marketing v Telstra, there has been significant uncertainty around a user's ability to reproduce material contained in a copyrighted data compilation because the test for originality was so wide. This meant that a copyright holder could assert such control over a database that at times they appeared (and often purported) to be able to control use of what essentially amounted to mere facts and information in circumstances where copyright law should not extend. The above judicial statement, while not bringing us in line with the US decision of Feist v Rural Telephone Services in regards to whether copyright should subsist in a compilation that lacks creative input, at least takes a step in the right direction of tightening the originality threshold to provide that reproduction of the purely informational material within a compilation will not constitute a substantial part sufficient to give rise to an infringement claim.

French CJ, Crennan and Kiefel J also state at p20 (in obiter):
Rewarding skill and labour in respect of compilations without any real consideration of the productive effort directed to coming up with a particular form of expression of information can lead to error. The error is of a kind which might enable copyright law to be employed to achieve anti-competitive behaviour of a sort not contemplated by the balance struck in the Act between the rights of authors and then entitlements of the reading public.
Justices Gummow, Hayne and Heydon also delivered a joint judgment. In their judgment, they accepted the submission by IceTV that the originality of the Weekly Schedule “lay not in the provision of time and title information, but in the selection and presentation of that information together with additional programme information and synopses, to produce a composite whole” (p56). Accordingly, like French CJ and Crennan and Kiefel JJ, they found that IceTV had not reproduced a substantial part of Nine's original copyright work.

Gummow Hayne and Heydon JJ stated (at pp 57-58):
The issue requiring the comparison between what was taken and the whole of the work in suit may be distorted by a mediation, inspired by Desktop Marketing, upon the protection given by the Act against misappropriation of any investment of skill and labour by the author. In the present case, the temptation then is to classify the slivers [of information] each as original literary works...

...The proposition that the Court should look to “the interest” which the copyright protects invites processes of reasoning to which there applies the warning by Judge Learned Hand in Nichols v Universal Pictures Corporation. This is to the effect that the more remote the level of abstraction of the “interest”, the greater the risk of protecting the “ideas” of the author rather than their fixed expression. That risk appears to have been realised in the reasoning of the Full Court.

The Full Court approached the issue of substantiality at too high a level of abstraction, and in doing so tipped the balance too far against the interest of viewers of digital free to air television in the dissemination by means of new technology of programme listings.
It is also interesting to read the Justices' assessment (at pp 61-65) of just how IceTV compiled their IceGuide, using primarily “prediction” of time and title information and only relying on Nine's schedules to confirm their predictions, but I won't cover that in detail here.

Significantly in this case, all judges referred disfavourably to the statement made by Lord Reid in Ladbroke (Football) Ltd b William Hill (Football) Ltd that “what is worth copying is prima facie worth protecting”. Gummow, Hayne and Heydon JJ called this formula “deceptively simplistic” (p27). All judges referred to the need to balance the protectionist aspects of copyright law with the need to maintain a robust public domain. Furthermore, at p50, Gummow, Hayne and Heydon JJ discuss in obiter “a reason to treat the decision in Desktop Marketing with particular care...”

Yet the most important obiter remarks were made by Gummow, Hayne and Heydon JJ immediately following their conclusion (pp 65-66):
One final point should be made. This concerns the submission by the Digital Alliance that this Court consider the Full Court's decision in Desktop Marketing and, to the contrary of Desktop Marketing, affirm that there must be some “creative spark” or exercise of “skill and judgment” before a work is sufficiently “original” for the subsistence of copyright.

It is by no means apparent that the law even before the 1911 act was to any different effect to that for which the Digital Alliance contents. It may be that the reasoning in Desktop Marketing with respect to compilations is out of line with the understanding of copyright law over many years. These reasons explain the need to treat with some caution the emphasis in Desktop Marketing upon “labour and expense” per se and upon misappropriation. However, in the light of the admission of Ice that the Weekly Schedule was an original literary work, this is not an appropriate occasion to take any further the subject of originality in copyright works.

While it is disappointing that the Court declined to consider in detail the issue put forward by the Digital Alliance, it is encouraging to see an indication that the Court no longer appears to view Desktop Marketing as the ultimate Australian authority on this matter and considers that it should be treated with caution.

Friday, April 17, 2009

Unlocking IP 2009 presentation - Professor Anne Fitzgerald and Kylie Pappalardo (QUT) - Moving Towards Open Standards

In the afternoon, Professor Anne Fitzgerald and I presented on the legal (copyright and patent) issues involved in standards development and use, and how we might move towards a more open system of standards from a legal perspective.

Our slide set is available in powerpoint or in PDF.

I believe that UNSW will be publishing conference papers, including ours, in the near future. I will keep you updated on the publication status of our paper.

Unlocking IP 2009 Presentation - Matthew Landauer,

Probably one of the most interesting presentations from the day came from Matthew Lanauer from is based on the UK site by mySociety: is a non-partisan website run by a group of volunteers which aims to make it easy for people to keep tabs on their representatives in Parliament.

In his presentation, Matthew described the problems he has faced gaining copyright permission from the Australian Government to host material such as Senate debates on the website. The Australian Hansard information is Copyright Commonwealth of Australia. For this material and other information, Matthew had lodged repeated requests with the government for permission to use the material, and had not received any response. Ultimately, in relation to one set of material he received an email from someone in government claiming that the material in question was free to be used as it was considered to be in the public domain (a position contrary to the copyright statement on the material). In relation to another set of material, Matthew considered he might have an implied licence, because although the government never officially responded to his request for permission with a yay or a nay, they sent him the material he asked for after he had informed them what he intended to do with it. However, it relation to a great deal of the material on Open, Matthew is still not entirely clear of Open Australia's legal position.

It is a great disappointment that someone like Matthew should have to be in this situation of legal uncertainty. We have a government that claims to be committed to openness and which has commissioned such pivotal reviews as the Review of the National Innovation System (which recommended more openness in government, particularly from a copyright perspective) and yet he still have repeated copyright requests going unanswered. is a really important project from a democratic point of view, and I really hope that the government steps up and proves much more helpful in the future.

Unlocking IP 2009 presentation - Elliott Bledsoe (Creative Commons Australia and QUT) – Still No Good: APRA's non-commercial licensing amendments and

  • APRA (Australasian Performing Right Association) takes full assignment of all past, present and future performing rights
  • not compatible with CC licensing (there is assignment back option or non exclusive licence for a specific purpose option, but these are not really helpful for CC)
  • so...

APRA has offered the non commercial licence back -
  • right to sub-licence communication right for non commercial purposes
  • no consideration or financial incentive
  • no direct or indirect financial gain on behalf of sub-licensee
  • sub-licensee is a not for profit entity
  • entity does not receive public or institutional funding

What is consideration?
  • Consideration is broad at law
  • should be read with “financial incentive” to limit?
  • But use or word “or” (“consideration or financial incentive”) suggests not
  • very wide

What is a not for profit entity?
  • Synonymous with non-profit
  • tax department – activities or entities where primary purpose not directed towards commercial advantage
  • entity? - under Corporations Act can be individual, partnership, trust etc.

Commercial advantage?
  • Who is making gain?
  • What about content exhibition – MySpace; etc.

  • Many things ruled out
  • members probably want to make use of online platforms
  • but probably not within scope of licence back
  • members may not understand this
  • Only grants communication online right
  • Rules out CC
  • because CC is a broad grant for other rights beyond communication
  • and CC applies to any use – online or offline

So CC still not available to APRA members

But at least APRA is trying. Hope for more progress in future.

Unlocking IP 2009 presentation - Louise Buckingham (Faculty of Law, UNSW) – Traditional Knowledge and the Public Domain: an overview

In a conference that was largely celebrating the notion of the public domain, Louise had a different perspective regarding how these notions affect traditional owners. I found her talk very interesting, because it highlighted the areas in which we must tread carefully. With our work with Creative Commons Australia, we are always careful to stress that CC is a choice only for those creators who want to share their work for free – it will not be appropriate for everyone. The same is true when we talk of the public domain – we should keep in mind that where indigenous culture is concerned, openness is not always the primary concern.

My notes:
  • The notion of the public domain is reified and exulted
  • In theory, it is important for democracy
  • Connotations of openness and freedom and undeniably appealing
  • But we when consider the intersection with tradition rights, it is problematic
  • The Australia academic environment is wary of examining how traditional forms of expression are affected detrimentally by this area
  • The appeal of the public domain has gained popularity on a global scale, but for indigenous people the issues are local
  • If we ignore there concerns, we run the risk of falling into imperialistm and colonialism
  • There is lots of talk about how traditional cultural expression does not fit within western copyright regimes
  • But not much talk about how notions of the public domain can act as another way to disempower indigenous people
  • Academics who have written in this area - Cathy Barry; Jane Anderson; others – highlight the cultural particularity of notions of the public domain
  • In 2000, UK and Australian governments agreed (after long negotiations) that traditional works should be repatriated to their traditional owners; but this was contrary to the practice of about 30 large museums and galleries at the time and they were able to prevent repatriation on the basis that this was public knowledge
  • Conclusions (tentative):
- Public domain is inherently global in its idealised form
- Protection for traditional knowledge must be local
- Currently dealt with at a global level, which only increases tension
- Public domain can be a domain of exclusivity and exclusion, as well as one of “openness” etc.
- It can legitimise the process of exclusion, “othering”, discrimination against indigenous people.

Unlocking IP 2009 Presentation - Graham Greenleaf (Faculty of Law, UNSW) – The Magic Pudding: Australia's Public Domain

The conference kicked off with a plenary by Professor Graham Greenleaf, who leads the research team at the of Centre for Cyberspace Law and Policy at UNSW.

I won't summarise everything from his presentation here, but in short his main point was that “the Australian legal environment is relatively inhospitable to the public domain”.

Graham uses the term “public domain” in a wide sense, to encompass not only material that is completely free of copyright protection, but also material that is openly licensed and other similar categories of materials that are free for reuse.

Graham examined 10 areas in which we can improve Australia's public domain:

1. Scope for broader exceptions
  • There are issues surrounding the 3 step test under the Berne Convention
  • Would a fair use exception give more balance?

Other issues that need copyright review:
  • Should contracts override exceptions to copyright?
  • When can we rely on implied licences – CAL v NSW shows that the law is too narrow
  • Does liability for authorisation extend too far?

2. Legal deposit's role in innovation
  • Examining the significance of the role of online repositories

3. Finding missing rights holders
  • Orphan works
  • How to balance innovation and author's interests
  • US copyright office recommends a statutory licence to use, after a diligent search and subject to contingent payments for use (if author is located) – this sounds sensible

4. Enabling open content licensing

5. Maximising the value of open source software to Australia

6. Moving towards open standards

7. Coexistence of collecting societies and public rights
  • Are collecting societies making it easy enough for their members to use open content licences when they wish to?
  • Are their practices too restrictive?
  • Need to examine whether the public ends up paying collecting societies for works that are in the public domain.

8. Reuseable government works
  • Currently no consistent policies on reuse of government works
  • Australia is becoming an international rarity in its restrictiveness
  • Should there be a seal for reusable government work (to communicate which government works are available for reuse)?

9. Public rights in publicly funded research
  • Do universities publishing such research outputs in repositories need some 'safe harbour' protections?
  • So if copyright infringement inadvertently occurs, steps can be made to remedy this without attracting liability first
  • Should this extend to part research outputs as well?
  • Should it extend to patent rights?

10. Indigenous culture's relationship to the public domain

Where to from here?
  • An approach based on both principles and compromise
  • copyright today is equally about respect for authors rights and the public's rights
  • public rights need separate articulation and representation
  • a peak organisation for the copyright public domain
  • a charter of public rights in copyright
  • A public rights focused law reform review of the Copyright Act
  • Positive strategies and public messages [for a peak body to adopt]
  • CC's 'some rights reserved' is a good slogan
  • Albert the magic pudding as the mascot for Australia's public domain – the “cut-n-come-again” pudding

Comments from Professor Brian Fitzgerald (QUT):
  • There is an evolution of copyright law from a control paradigm to an access paradigm
  • This is what occurred in the Google Book Search settlement – only the first iteration of what we may see in the future
  • Not free use but not compulsory licence use – somewhere in the middle, market driven, benefit sharing model
  • Public domain is structured to some extent to the laws existing outside of copyright e.g. competition law – Sony case – HC interested in the idea that there are other property rights out there that had to be reconciled. Social habits also structure this – e.g. file sharing and peer to peer – cases currently before the courts
  • We need to get government involved as an advocate in these issues

Unlocking IP 2009

Yesterday, on Thursday 16 April 2009, I attended the 2009 Unlocking IP Conference, hosted by the Cyberspace Law and Policy Centre at the University of New South Wales (UNSW). The conference is continuing today (Friday 17th), but I returned to Brisbane last night. I was hoping to live blog my notes yesterday, but unfortunately there was no internet access available. It continues to surprise me just how many conferences, in this day and age, do not provide wireless internet access to their conference delegates. In any event, I made some notes during the day, which I will be posting here. Some of these notes are brief, and they only cover a small portion of the presentations made yesterday. For most of the day the conference was divided into two streams so by necessity I missed at least half of the presentations. However, the ones I did catch were very interesting and I commend UNSW for bringing such a dynamic crowd together.

At the moment, the abstracts for all papers presented at the conference are available on the Unlocking IP website. I believe the team will also be making available slide presentations, full conference papers and podcasts sometime in the near future.

Thursday, April 2, 2009

Copyright protection and data compilations

Over on the Digital Curation Blog, Chris Rushbridge has an interesting post entitled, "Are research data facts and does it matter?"

I have just posted a response, which I am reproducing here:

I would like to take this opportunity to explain some of the research we have undertaken in the OAK Law Project and conclusions we have reached regarding copyright protection of data compilations in Australia. We have two primary publications addressing this area: Building the Infrastructure for Data Access and Reuse in Collaborative Research: An Analysis of the Legal Context and Practical Data Management: A Legal and Policy Guide.

s10(1) of the Australian Copyright Act 1968 defines a literary work to include a "compilation". This is where protection for data compilations under Australian law derives from. Any data that is collected, arranged, organised and presented in a logical fashion will usually be regarded as a compilation.

Chris makes a good point that many data compilations will require a great deal of effort, analysis and creativity. In the US, creativity is a requirement before a data compilation can be protected by copyright. In Australia, creativity is not required. Only that the compilation is a result of the exercise of skill, knowledge or judgment in the arrangement of the data, or the investment of substantial labour or expense in collection the material (Desktop Marketing v Telstra).

It can often be difficult to tell whether a compilation is one that would attract copyright protection. In our work, we have tended to err on the side of caution and assume that most compilations will attract copyright protection. This is because the threshold in Australia is so low. The main case in this area, Desktop Marketing v Telstra, involved the copying of a telephone directory. A telephone directory is merely a compilation of names and numbers listed in alphabetical order. If this is a compilation that attracts copyright, then most other compilations are likely to be protected by copyright under Australian law as well.

Copyright law does not protect mere facts or information. Rather, it protects the expression of facts or information in a material form. This means that generally there would not be a problem with copying some of the basic facts contained in a compilation. For example, if I were to list the names and numbers of a small collection of my colleagues on my website, that would not usually be a problem. I have extracted the data that I need, in a fairly "random" fashion (in that I have not just copied a few pages of names and numbers in alphabetical order directly from the White Pages). I have not copied the way that the data is arranged in the telephone directory (the “expression”).

In regards to Science Commons’ decision to discontinue advocating the application of Creative Commons licences to data compilations, my understanding is that they came to this decision for two reasons:
(1) It was not always clear in the US whether the relevant compilation attracted copyright. If it did not but a person had put a CC licence on the compilation in the mistaken belief that it did, then restrictions would have been imposed on that dataset (e.g. that it could only be used non-commercially) which actually had no legal basis for being imposed; and
(2) CC licences all contain an attribution requirement and Science Commons were concerned about what they call "attribution stacking" - i.e. where a dataset is compiled from data contributed by many different researchers, it would be extremely difficult for a user to attribute all of those researchers.

At OAK Law, we still believe that CC licences can be applied to datasets in Australia because the concerns noted by Science Commons do not arise to the same degree in Australia. Firstly, we have a lower threshold test for copyright protection, meaning that copyright will more readily attach to datasets in Australia and the first problem noted by Science Commons is less likely to occur. Nevertheless, to be sure, we usually advocate that the widest CC licence - the attribution only licence - be applied to datasets. Secondly, unlike in the US, Australian copyright law includes Moral Rights, meaning that creators have to be attributed anyway, regardless of whether a CC licence is applied or not. We think there are various ways of getting around the "attribution stacking" problem - for example, a group of researchers could agree on a common way to be attributed (e.g. we could be attributed as "the OAK Law Project"), or the data could be attributed using a URL, which an interested party can visit and which can list all the contributors (and this list can be added to over time). The advantage of applying CC licences to data, in our view, is that it provides some certainty to users about what they can and cannot do with that data.

If you are interested in this issue, I would also advise reading these posts by Robin Rice and Rufus Pollock.

Wednesday, April 1, 2009

Unlocking IP 2009 Conference – National and global dimensions of the copyright public domain

On 16 April, I will be attending the Unlocking IP 2009 Conference in Sydney, titled, "National and global dimensions of the copyright public domain". Together with Professor Anne Fitzgerald, I will be presenting a paper on the intersection of IPR and standards. The abstract of our paper can be read on the Unlocking IP conference papers webpage.

Details of the conference are:

Unlocking IP 2009 Conference –

National and global dimensions of the copyright public domain

16-17 April 2009 - UNSW Sydney

UNSW's Cyberspace Law and Policy Centre invites you to register now for an international conference from the 'Unlocking IP' ARC research project, which investigates how Australia's digital commons, both the public domain and public rights created by open content and open software licensing, can be expanded and protected. It focuses on 'self help' actions within the existing statutory context, in Australia's distinct legal and cultural context, and on comprehensiveness - we offer preliminary results from the first survey of Australia's digital commons, with data from National Library of Australia.

The conference includes reports and case studies from the front line, where new models for sharing and trading intellectual property meet the reality of business, government and educational demands, new technological opportunities and lessons learned from implementation of licences like Creative Commons and Free for Education. Book publishing under hybrid business models at Sydney University Press, online user generated content using Wikimedia, and international initiatives like the US ‘’ and China's IP abuse rule are featured, alongside detailed analysis of emerging legal and policy directions.

A highlight of the conference will be the launch of the 2009 Consumers International IP Watch List. Arising from the CI Access to Knowledge project, the list identifies countries whose IP policies and practices are harmful to consumers. It is used as a counterbalance to the United States' "Special 301" Report, which is an annual report highlighting countries that supposedly do not provide strong enough protection for the interests of US intellectual property owners.

The venue is Law Faculty of UNSW, Kensington Sydney, close to beaches, parks and Sydney CBD.

For details of speakers and the program:

Register at: