|
The ADA Monthly Intellectual Property Wrap-Up
------------------------------------------------------------------------
A monthly summary of recent legislation, cases, reports and other
events relating to intellectual property and the public interest,
published by the Australian Digital Alliance.
--------------------------------------------------------------
December 2001
--------------------------------------------------------------
[1] About this publication
[2] Important ruling in DVD case
[3] WIPO Copyright Treaty comes into effect
[4] Dmitri Sklyarov: a free man again
[5] Digital (software) is not different: Adobe v
Softman
[6] I can copy, right?
>[1] About this publication
This summary of recent IP (but chiefly copyright) happenings of
relevance to Australia is published every month by email and on the
Australian Digital Alliance website at http://www.digital.org.au/issue/ipwdec01.htm.
If you have any suggestions as to what should go in the next issue,
please let the Nick Smith know by email: (nsmith@nla.gov.au).
Nothing in this publication constitutes legal advice.
This is a slightly brief Christmas edition of the
ADA Monthly Wrap-Up. Merry Christmas etc.
>[2] Important ruling in DVD case
On 7 December, Justice Emmet of the Federal Court
handed down his decision in the case brought by video rental store
owners against the film distributor Warners.
This case was discussed in the last issue of the ADA
Monthly Wrap-up (http://www.digital.org.au/issue/ipwnov01.htm).
The video store owners were challenging Warners assertion that a film
in the DVD format is also a computer program and thus subject to the
greater protection given to programs in the Copyright Act 1968.
Warners sought to charge extra for DVDs that would
be used for rental purposes as opposed to those that would merely be
retailed. This is part of an increasing trend for rights-holders to
attempt to control the use of copyright material after it has been sold
to the customer. This case attracted interest amongst video rental
store operators in the United States who saw it as part of a greater
strategy to undermine the US First Sale Doctrine (the right of a
legitimate purchaser of copyright material to further distribute that
material).
The court was asked to answer four questions which
are (in summarised form):
(1) Is a
copy of the cinematograph film in a DVD made when that DVD is played?
(2) What
computer programs are embodied in a DVD?
(3) When
a DVD is rented out, does any computer program constitute the
‘essential object of the rental’ within the meaning of s 31(5)?
(4) Are
copies of the computer programs in a DVD made when that DVD is played?
Question 1
If the judge answered this question in the
affirmative, it would mean that every time a DVD (and possibly other
digital material such as music CDs) is played, a licence would be
required. Not only would the film distributor be able to control rental
but all customer use.
The judge answered this in the negative. He said
that while some tiny portions of the film are copied into the DVD
players’ ‘buffer’, a substantial part of the cinematograph film is not
copied by the DVD player.
Question 2
This questions revolved around whether all the
digital content of the DVD (including the audio and visual material) is
to be considered a ‘computer program’ or whether this was just limited
to the program which causes the digital content to be displayed by the
DVD player.
A computer program is defined in the Act as ‘a set
of statements or instructions to be used directly or indirectly in a
computer in order to bring about a certain result.’ Warners asserted
that the result is the visual experience that the consumer has, thus
the digital AV content is part of the computer program. The judge
disagreed; he said that the ‘result’ is the ‘playing and navigating
through a cinematograph film or motion picture.’ [para 71]
Thus ‘the copyright protection of computer programs
is not designed to extend to the original content that a computer
program is capable of causing to be reproduced….It does not extend to
the audio, visual and caption content of the DVD discs.’ [para 84]
This essentially means that the ‘computer program’
component of a DVD is a relatively small part of the DVD as whole and
to be distinguished from the film itself.
Question 3
The copyright in a computer program, unlike most
other copyright subject matter, includes the exclusive right to enter
into a commercial rental arrangement. We know from the answer to
Question 2 that there are computer programs on a DVD. But are they the
‘essential object of the rental’ such that the entire DVD should be
subject to the rental right?
Justice Emmett found that computer programs were not
the essential object of the rental arrangement. He compared the
borrower of a DVD to the borrower of a video cassette or a book. What
the borrower seeks as the essential object of the lending arrangement
is the experience of the content of the video or book and not the material
which embody this content (the plastic cassette or the ink and paper
respectively); the computer programs on a DVD which cause the content
to be reproduced are therefore analogous to ink and paper: necessary
but not the essential object of the arrangement.
This means that DVDs are not sufficiently
constituted as computer programs to be the subject of a ‘commercial
rental arrangement’ and thus Warners has no capacity to control this
activity.
Question 4
This question represented Warners last shot at control
of the DVD rental market. So the film content is not reproduced when it
is played and the computer programs on the DVD are not subject to a
commercial rental arrangement but perhaps the computer programs are
reproduced when the DVD is played?
After all, a substantial copy of the computer
programs that allow the DVD to play resides in the Random Access Memory
of a DVD player when a DVD is played. Is this not a reproduction which
Warners is entitled to control?
Again, Justice Emmett said no. For a copy of a
computer program to be a reproduction, it must be a reproduction ‘in
material form.’ To be ‘in material form’, the reproduction of the
computer program must be in a form from which the computer program can
be reproduced (ie, further copies can be made).
Justice Emmett said that ‘ordinarily it will not be
possible to reproduce the contents of RAM in a DVD player’. Because it
is not possible to reproduce what is in the RAM, the reproduction is
not in material form and is not subject to Warners’ right of
reproduction.
Summary
The video store owners succeeded on all 4 questions
and this will make it very difficult for anyone to control their DVD
rental activities. But the case has wider implications. Many legal
commentators (including this one) have tended to assume that digital
material will be subject to much greater control than its non-digital
equivalent because (a) it is also a computer program and (b) most types
of usage of digital material result in legally-protected reproductions
being made.
This assumption has been strongly challenged by
Emmett J’s wise decision: digital content is not necessarily a computer
program and not all temporary copies will fall within the rightsholders
right of reproduction.
This decision, if it stands, will hopefully limit
the capacity of rightsholders to control the usage of copyright
material that has been lawfully acquired.
It is not presently known whether this decision will
be appealed.
The full judgement can be found at: http://www.austlii.edu.au/au/cases/cth/federal_ct/2001/1719.html
>[3] WIPO Copyright Treaty to come into effect
That well-known producer of intellectual property,
Gabon, (which is an African nation, not a Bay Area software company)
became the 30th nation to accede to the WIPO Copyright
Treaty (WCT) on 6 December 2001. As 30 accessions are required, Gabon’s
accession means that the WCT will soon enter into force (on 6 March
2002, three months after the 30th accession).
This treaty together with the WIPO Performances and
Phonograms Treaty (WPPT) are known as the ‘Internet treaties’ because
they update the Berne and Rome Conventions to accommodate new
technologies.
The WPPT is also not far off, having 28 accessions.
Australia is currently not a party to either treaty
but apparently intends to accede to both. The Copyright Amendment
(Digital Agenda) Act 2000 was drafted in accordance with these
treaties.
>[4] Dmitri Sklyarov: a free man again
Dmitri Sklyarov, the Russian programmer who became
the first person to face criminal proceedings under the US Digital
Millennium Copyright Act’s anti-circumvention provisions, is a free man
once more.
He entered into an arrangement with the US
Attorney’s Office whereby he is allowed to return to his family in
Russia in return for testifying in the continuing prosecution against
his former employer, the Elcomsoft company. Under the deal, once he has
testified truthfully, all charges against him will be dropped.
The CEO of Elcomsoft, Alex Katalov, also applauded
Dmitri’s release. He has argued for some time that the company alone
should face the charges.
Dmitri denied that he had agreed to testify ‘against’ his
employer. ‘I am extremely disappointed with any implication that I am, in any way, cooperating with
the (US) government,’ Sklyarov told reporters at a recent press conference. ‘I am a man of integrity
and as such am doing nothing more than telling the truth, not for or
against anyone.’
The case against Elcomsoft will be heard in the
first quarter of 2002.
>[5] Digital (software) is not different: Adobe
v Softman
In the California case of Adobe v Softman, the judge ruled that
purchasers of software can resell bundled software regardless of what
any licences agreements (often called EULAs or End User Licence
Agreements) might say.
The judgement states that purchases of software are to be treated
like any other copyright transaction and are subject to the protection
of the First Sale Doctrine (see article #2, this issue). Therefore
consumers may not copy purchased software but they may onsell or lend.
Interestingly, and once again reaffirming my faith in the
judiciary, the judge said: ‘The balance of rights in intellectual
property law is already tilted heavily in favor of the intellectual
property owner.’
This case challenges the recent trend of many
software vendors to ‘licence’ rather than ‘sell’ copies of their
products to maintain control over what the consumer may do with their
purchase and to limit access consumer protection laws.
>[6] I can copy, right?
Yes, you can copy this publication. Feel free to send it to friends or
colleagues, print it off or even archive it on your website provided
that all text is included or, in the case of an excerpt, appropriate
credit is given.
|
