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. -------------------------------------------------------------- Febrary 2005 -------------------------------------------------------------- [1] About this Publication [2] Sony v Stevens - The ADA and ALCC Intervene in the High Court [3] Australia - U.S. Free Trade Agreement - Brief Outline of Some Important Changes [4] Fair Dealing Review Is Here [5] 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/issue.htm. If you have any suggestions as to what should go in the next issue, please let Sarah Waladan know by email: (swaladan@nla.gov.au). Nothing in this publication constitutes legal advice. [2] Sony v Stevens - The ADA and ALCC Intervene in the High Court On 8 February 2005, the ADA together with the Australian Libraries Copyright Committee (ALCC) intervened as ' friends of the court' in the High Court case of Stevens v Kabushiki Kaisha Sony Computer Entertainment. There were various issues raised throughout the course of the written and oral submissions, however below is a brief overview from the ADA & ALCC's perspective. Facts of Case Mr Stevens sold and supplied unauthorised copies of computer games (contained on CD-ROMs) for use on Play Station consoles. Ordinarily, Play Station consoles cannot play unauthorised copies because they have a device, known as a Boot ROM, which recognises a specific access code contained on lawful copies of the games. However, Mr Stevens also sold and installed into Sony Play Station consoles, 'mod chips' which allowed the consoles to in effect by-pass the access-code requirement, so that unauthorised CDs could be loaded and played as well. Sony sued Mr Stevens on a number of grounds, including copyright infringement. Sony argued that Mr Stevens had: 1. Infringed Sony's copyright in its computer programs, 2. Infringed Sony's copyright in the cinematograph film embodied in the playstation games 3. Breached 116A of the Act by circumventing Sony's technological protection measure (TPM) which was stated by Sony to be either the access code or the Boot ROM or a combination of both Federal Court Decision in 2002 At first instance, the Federal Court (per Sackville J) found in favour of Mr Stevens in relation to all copyright issues. To summarise very briefly, the Federal Court found in relation to the first 2 issues, that there was no infringement of Sony's copyright, because (pre AUSFTA), the exclusive rights of the copyright owner only extended to reproduction of works in material form. The Federal Court found that a copy of a computer program made in RAM could not be said to be in material form because it was not a copy from which a substantial part of the computer program could be reproduced. In relation to 3rd issue, the Federal Court found that the Boot Rom/Access Code ('the Sony device'), was not 'designed, in the ordinary course of its operation, to prevent or inhibit the infringement of copyright in a work", as required by the definition of TPM in section 10 of the Act. This was found to be so, because the Sony device did not physically prevent or inhibit infringement of copyright. Rather, access was only denied after the unauthorised copying had already taken place. If the RAM copies had been found to be copies 'in material form' then it could have been said that the Sony device 'prevented or inhibited' those ephemeral copies from being made, but as it was, the device was found to merely 'deter' the prior infringement, rather than 'prevent or inhibit' it. For the full decision, please link toAustlii. Full Federal Court Decision in 2003 Sony appealed to the Full Court of the Federal Court, and was partly successful. The Full Federal Court again found for Mr Stevens on the first 2 issues, however in relation to the third issue, the Court gave a broad interpretation to s.116A, and particularly to the definition of 'technological protection measure' as it exists in the Act. The majority judgement found that the Sony device did 'prevent or inhibit' copyright infringement by deterring the prior act of copying. Mr Stevens appealed to the High Court of Australia. ADA/ALCC Involvement The proceedings raised a number of interesting legal questions which the ADA and ALCC saw as significant not only for Mr Stevens, but indeed for libraries, universities, cultural institutions and the public at large. The ADA and ALCC decided to get involved and prepare an application to intervene in the case in order to provide the Court with submissions from the perspective of libraries, educational and cultural institutions. In addition to putting the ADA and ALCC constituents' perspectives before the Court, both organisations were also hopeful of obtaining direction from the High Court in relation to various issues such as how 'TPM' should be defined in the Australian context, and the importance of the fair dealing provisions and their relationship with other provisions of the Copyright Act 1968. The ADA and ALCC were delighted to retain on a pro bono basis, John Basten QC, Glenn McGowan SC, and Ms Lisa De Ferrari, and to receive, also on a pro bono basis, the assistance of Ms Kim Weatherall. Submissions were prepared, firstly in relation to why the ADA and ALCC should indeed be allowed to intervene, and secondly in relation to the substantive legal issues in the case. In relation to the first hurdle, the ADA and ALCC argued (in brief) that by reason of their expertise and of the interests of their members, they hold a legitimate interest in ensuring that the Copyright Act 1968 is interpreted in such a way as to maintain the balance of copyright interests. It was argued that the particular functions of the ADA and ALCC meant that they could provide special knowledge and expertise different to, or 'over and above' what the parties to the case would bring. The first hurdle was overcome, and leave was granted to provide both written and oral submissions to the Court. Substantive Issues in the Case, brief outline of written submissions put by the ADA/ALCC Submissions were then made in relation to the three main issues: 1. The definition of technological protection measure in s.10(1) of the Act, and the consequent interpretation of s.116A of the Act. 2. Whether reproductions in RAM were 'reproductions in material form' and therefore subject to the exclusive authorisation of the copyright owner. 3. Whether the playing of the PlayStation game on the PlayStation console involved making a copy of a substantial part of a film, within the meaning of the Act. In relation to the first issue, the ADA and ALCC submitted that whilst Parliament granted copyright owners the right to deny access to a copy of a work, a distinction should be made between such a right and the right to control each individual apprehension or use of a work. Allowing the later interpretation could severely impact upon the fair dealing provisions by effectively allowing rights holders to opt out of fair dealing by placing TPMs on their works (which then would not be able to be circumvented for the purposes of access which constitutes fair dealing). Importantly for libraries and other cultural institutions, they would face an additional burden in that they would be required to enter licences and pay for access to such material online, where they would not have to in the print environment. It was argued that the narrow interpretation of TPM is consistent with the stated intention of Parliament, that the Copyright Amendment (Digital Agenda) Act 2000 (which introduced section 116A) should introduce into the Copyright Act, the same rights in relation to digital works as previously existed in the print environment, (i.e. it was not the intention that additional rights be introduced in the digital environment over and above rights already conferred by the Copyright Act). The ADA and ALCC argued that a broad reading of TPM would extend section 116A to providing protection from mere access to works, rather than limiting the provision, as initially intended by Parliament, to protecting works from infringement. The the second issue, in relation to the definition of material form, was theoretical to the extent that even if a positive outcome (from the ADA's perspective) is obtained in this case, the AUSFTA implementation Act 2004 changes the definition of material form so that as of 1 January 2005, reproductions in RAM do fall under the definition. Nevertheless it was argued that such an interpretation would again allow copyright holders to control each and every use of a work, and would be analogous to conferring on rights holders 'the right to control how many times a purchaser may read a book, play a CD, or view an artwork'. It was argued that such an interpretation would be contrary to basic copyright principles and history, and indeed would jeopardize the use of many digital technologies such as the internet which necessarily require the making of ephemeral copies. It would also mean that playing unauthorised copies or viewing works online which are not known to be unauthorised, would breach copyright. Further it would mean that consumers would be infringing copyright simply by playing a rented DVD, and video retailers in turn would be liable for authorising infringement by the consumer. Such outcomes could not have been intended by Parliament. (It is worth noting here that whilst the AUSFTA implementing legislation does introduce a broad interpretation of material form, essentially as argued for by Sony, the new legislation also introduces an important exception contained in the new section 43B. Please refer to section of AUSFTA changes below). The third issue revolved around whether playing of the playstation game, and more particularly, whether the film being loaded into the RAM of a computer, involved making a copy of a cinematograph film. A copy of a cinematograph film is defined under the Act as 'any article or thing in which the visual images or sounds comprising the film are embodied'. The ADA and ALCC submitted that this definition requires more than just the images and sounds being loaded into RAM, and that if this were not found to be the case, there would be significant implications for the public. For example, it would mean that every time a Sony PlayStation game is played (or, to translate to other media, ever time a DVD is played), a licence would be required, and rights holders could indeed seek a separate licence each time a user views a digital copy of a film. The ADA and ALCC also provided supplementary submissions on the meaning of the term 'access' when used in the context of the definition of TPM in section 10(1) of the Copyright Act. In brief, the ADA and ALCC submitted that the phrase 'access to the work' should be interpreted with regard to the definition of TPM in its entirety, which requires that the measure must be designed to prevent or inhibit the infringement of copyright in the work..'. Therefore, it was submitted that for the purposes of section 10(1), 'access to the work' must include forms of access which would allow infringement. The High Court transcript of proceedings can be found on Austlii The complete ADA/ALCC written submissions can be found on the ADA website. There is no timeframe for handing down of the decision, however an update and summary of the findings will be provided when that occurs. [3] Australia - US Free Trade Agreement (AUSFTA): Brief Outline of Some Important Changes The Australia-US Free Trade Agreement Implementation Act (AUSFTA Act), and the Copyright Legislation Amendment Act came into effect on 1 January 2005. Thus most of the changes to copyright law which the AUSFTA requires are now in place, by way of these pieces of legislation. To briefly recap the major changes that educational and cultural institutions should be aware of, I have provided a brief outline below. However, please note that the ADA will provide further detail of the changes in subsequent publications. In brief, the changes include: Term Extension An extension of the term of copyright from 50 to 70 years (NB this is not retrospective but only relates to materials which are in (or come into) copyright on or after 1 Jan 05), with the effect that no new material will fall into the public domain in the next 20 years. It should be noted however that there are at least 2 important exceptions to this - the copyright term for material in which the Government owns copyright, remains 50 years, and the copying of unpublished material under section 51(1) also remains 50 years after the author's death. Introduction of Performers' Rights In accordance with the AUSFTA and the WIPO Performances and Phonograms Treaty (WPPT), performers have been granted both economic and moral rights under the AUSFTA Act, although the moral rights provisions will not be effective until Australia's accession to the WPPT, which is expected to occur in the very near future. The changes in relation to Performers' rights are detailed and substantial and will be addressed in detail in the next ADA Wrap. Change of Definition of Material Form The definition of material form has been broadened so as to include any form of storage of a work or adaptation, whether or not it can be reproduced. This effectively means that copyright owners' exclusive rights have been broadened to include the right to make such ephemeral copies of works. However, sections 43A and 43B provide some important exceptions to breach by way of making such temporary copies. Section 43A provides that temporary copies made as part of the technical process of making or receiving a communication, are not a breach, as long as the communication itself is not a copyright infringement. Section 43B has been introduced with the AUSFTA amendments and provides that temporary reproductions made as a necessary part of a technical process of using a copy of work, will not be infringing, unless the copy is itself infringing or if use of the copy constitutes an infringement. Safe Harbour Provisions for Carriage Service Providers These provisions were primarily aimed at major providers of carriage services (CSPs), such as the telecommunications companies, who are not in a position to control the vast amount of content that is placed on their networks. However, whether educational or cultural institutions fall under the definition of CSP pursuant to the Telecommunications Act 1997 will depend on the types of services that such institutions provide, and the level of control they have over the content contained on their networks. Institutions will need to assess whether or not the particular services they provide would bring them under the definition. Details of the safe harbor scheme can be found in both the AUSFTA Act and the Copyright Regulations 1969 (as amended). Both can be viewed at www.austlii.edu.au Institutions who do fall under the definition of CSP and chose to 'opt-in' to the scheme by following the procedures set out in the Copyright Regulations 1969, will be able to benefit from the safe-harbour provisions, which provide for immunity from civil liability. Compensation Scheme Sections 118 and 132 of the AUSFTA Act provide for compensation in certain circumstances. Basically, if a person made an agreement with a copyright owner before the date of Royal Assent of the AUSFTA Act (before 16 August 2004), on reliance of the fact that copyright in a particular work would expire, but as a consequence of the changes brought about by the AUSFTA Act (i.e. term extension), the copyright will now continue to exist past the time anticipated in the agreement, then the owner may object to the agreement proceeding, in writing, however, if the owner does so object, then the other person is entitled to be reasonably compensated for breach of the agreement. If the owner does not object, and does not pay any compensation, then person who wishes to copy the work pursuant to the agreement is entitled to copy the work and this will not be an infringement of copyright. [4] Fair Dealing Review Is Here On 18 February at the Australian Centre for Intellectual Property and Agriculture (ACIPA) Conference, the Attorney-General, the Hon Philip Ruddock MP announced that his department would be undertaking a review into whether Australia should introduce a fair use style exception or exceptions. The transcript of the Attorney-General's speech can be found here The Attorney-General's Department is scheduled to release a discussion paper in relation to the review in or about April. The ADA anticipates that the review will then be open to receiving submissions for a limited time after that. The ADA and ALCC have already submitted a joint submission on the expansion of fair dealing, addressing the issues that they saw as relevant to any consideration of whether or not it is viable to expand the current fair dealing exceptions, and how Government might go about doing this. The ADA urges you to consider the issues outlined in its submissions which can be viewed here and welcomes any feedback or discussion on the issues raised. (Please contact the Executive Officer at swaladan@nla.gov.au [5] 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     News | Membership | Contact Us