Section 2: Judicial Case Law
SUMMARY OF CASES CONSIDERED
The cases considered to be of most relevance from October 2003 to October 2004 included a single High Court decision relating to infringement of a television broadcast and four Federal Court decisions concerning copyright infringement in relation to architectural drawings, photographs, computer software, and dressmaking patterns respectively.
Network Ten Pty Ltd -v- TCN Channel Nine Pty Ltd (2004 59IPR1-HCA)
Network Ten screened a weekly late night show called “The Panel”. The show featured pre-recorded excerpts of other television programs, particularly programs of TCN Channel Nine.
TCN Channel Nine took action against Network Ten for an infringement of its broadcast copyright conferred by Section 87(c) of the Copyright Act 1968. Although unsuccessful at first instance, on appeal to the Full Court of the Federal Court the re-broadcast of the excerpts by Network Ten was held to be an infringement of Channel Nine’s copyright. Network Ten appealed this decision to the High Court on the basis that “a television broadcast” as it appears in the Copyright Act was incorrectly interpreted by the Full Court.
The High Court allowed the Appeal with three in favour and two dissenting Judges. The majority agreed with the Trial Judge that television broadcast rights should not attach to each and every visual image of that broadcast. Furthermore they decided that whether one or more photographs infringed the television broadcast copyright will depend upon the substantiality provisions of the Copyright Act. The majority agreed that it would be incorrect to approach an infringement action from a position where the question of substantiality was irrelevant and the interests of broadcasters under the act were placed “in a privileged position above that of the owners of copyright in the literary, dramatic, musical and artistic works which may have been utilised in providing the subject of the images and sounds broadcast”.
The majority also held that the effect of Section 25(4) is to qualify the disjunction between photography and cinematography. Thus the Full Court was considered to have erred in finding that Section 25(4) was the controlling provision in construing and applying the meaning of the phrase “a television broadcast” as a broadcast of a singular visual image with accompanying sound. Instead the majority considered that whether one or more photographs infringed the television broadcast copyright depended upon the operation of the substantiality provisions in paragraph (a) of Section 14(1) of the Act.
The issue of whether Network Ten had infringed Channel Nine’s copyright in its television broadcast by reproducing a substantial part of it, was referred back to the Federal Court.
Tamawood Limited -v- Henley Arch Pty Ltd (2004 FCAFC78) (31 March 2004)
This case related to copyright infringement of architectural plans for houses.
Henley Arch claimed to be the owner of copyright subsisting in Australia in plans for houses known as the Chirnside and Baltimore. Tamawood was involved in building project homes, but encouraged clients to contract directly with builders with whom Tamawood was associated. A house, the “Gould House”, was built based on plans drafted by Tamawood. The plans of this house were alleged to breach copyright in the Chirnside plans. Furthermore, plans by Tamawood for a home advertised as “The Burn” were alleged to reproduce the whole or a substantial part of the Baltimore plans and the Baltimore buildings.
In the first instance The Trial Judge held that there was copyright infringement in both cases.
Upon appeal a majority of the judges agreed there was copyright infringement in relation to the Chirnside plans, but there was not copyright infringement in relation to the Baltimore plans. It was considered that there was not sufficient closeness between the Burn and Baltimore plans to find that the applicants Burn had reproduced the Baltimore or a substantial part of it. The majority considered the Trial Judge erred in finding the Burn plan was a reproduction of at least a substantial part of the Baltimore. It was considered that if there is to be a finding of reproduction of a substantial part of a work, the substantial part should be identified. Furthermore the idea of “striking similarity” without more, does not necessarily mean that there has been a reproduction of the whole or a substantial part of the plan of a project home. Thus the similarity referred to may have been that of common ideas.
In relation to the Chirnside plans the majority consider that the important features of the Chirnside which were taken cummulatively constituted a substantial part of the Chirnside. Accordingly the appeal was dismissed.
FNH Investments Pty Ltd -v- Sullivan and Anor (2003 FCAFC 246) (3 July 2003) (59IPR 121)
Mr Sullivan asserted copyright in photographs taken of Palm Bay Hideaway Resort. FNH was alleged to have breached copyright in the photographs by using them for various purposes such as internet advertising, a brochure and publication in various magazines including Vogue International. In the first instance the Trial Judge held that there had been copyright infringement with the behaviour of FNH satisfying all tests of flagrancy. An appeal by FNH was dismissed by the Full Court who found that the copyright infringement by FNH was flagrant as FNH used the photographs without notice to Mr Sullivan in circumstances where it was refusing to pay Mr Sullivan because the photographs he had created were not of the quality contemplated in the contract. The Full Court was not satisfied that the primary judge erred in determining that additional damages should be awarded.
Telephonic Communicators International Pty Ltd -v- Motor Solutions Australia Pty Ltd [2004 FCA 942] (21 July 2004)
In June of 1996, TCI contracted Scribe to develop hardware and software that would record telephone calls. This hardware and software was intended to be used for the purpose of training persons involved in selling motor vehicles about retailing techniques.
Various software systems were developed including improvements and enhancements on initial versions. The software included E-call 24.com. Arrangements between TCI and Scribe were brought to an end in June 2002.
In March 2002, Scribe entered discussions with MSA, a competitor to TCI. The discussions centred on whether Scribe would provide the E-call 24.com software and hardware box to MSA. As a result of threatened legal proceedings, a Mr Murray, an employee of Scribe, started a new company, Logea, then rewrote relevant software and produced a new software and hardware box called Phone Wizard. This had similar functionality to E-call 24.com. TCI took action to prevent sale of the Phone Wizard software and hardware box by Logea to MSA.
The Court held that in reproducing the Phone Wizard and selling it to MSA, Logea breached copyright of TCI. On the question of whether this software program was a copy of a substantial part of the software program in which TCI held the copyright, The Court was not convinced that Logea had infringed TCI’s copyright. In arriving at its decision, it was considered there was insufficient evidence to show that there was sufficient duplication involved during the ‘rewriting’ of Phone Wizard software. The only evidence that had been provided dealt with quantity of similarity, rather than quality of it. The Court was not convinced that quantity of evidence was compelling enough to be sufficient by itself.
In addition, The Court was not convinced that the relevant files comprised computer programs. This was because a computer program was not considered merely a specific instruction to a computer. Rather it was considered a set of instructions that are intended to achieve a specific result. Thus the Federal Court dismissed the claim for copyright infringement against MSA.
Muscat -v- Le (FCA 1540) (19 December 2003)
Ms Muscat was a fashion designer and sole trader of women’s clothing. Her Mytiko range of pants were designed firstly by making a sketch which was then given to a pattern maker who made a dress making pattern. Ms Muscat then used the dress making pattern consisting of a number of components to make a prototype of a first sample garment. The dress making pattern was then sent to a contract pattern maker to make graded dress making patterns.
Ms Muscat took action to restrain a Mr Le from importing and selling similar pants in breach of her copyright.
The Court was satisfied that the respondents manufactured the pants using a pattern copied from the applicant’s Mytiko pants. Furthermore The Court established that the respondents infringed the applicants copyright in the design drawing and the dress making patterns by their production of dress making patterns for the respondents Dolly Girl and Crossover Pants.
It was also held that the statutory defence in Section 77(2) had no application to plan- to-plan copying where an artistic work is reproduced by a drawing or plan in the course of the industrial application of the design. In addition the Section 77(2) defence was not available in relation to the respondents dress making patterns as the patterns were not found to be articles of manufacture.