Copyright Developments in 2000
A. Changes to Restrictions on Parallel Importation
- The Copyright Amendment Act (No. 2) 1998 came into full effect on 30 January 2000.
- The Act amended the Copyright Act 1968 to permit parallel importation of non-pirated sound recordings. Accordingly, it is not an infringement of the copyright in a sound recording or musical work recorded in a sound recording to import a non-infringing copy of the sound recording and to sell or otherwise distribute such importations in Australia (see s.44D of the Copyright Act 1968 and s.112D).
- The amending provision requires that the sound recording must be non-infringing, as referred to in s.10AA, and that the copy imported was made with the consent of the owner of copyright in the country where the copy was made – s.44D. There are separate provisions governing importations from countries without copyright protection.
- There has also been another important relaxation in the restriction on parallel importation by the implementation on 30 January 2000 of the provisions which allow for the importation of goods bearing labelling, packaging and other accessories which contain copyright works, without the permission of the copyright owner in such works.
- Prior to the amendment, the importation of goods bearing, for example, trade marks which were copyright works, being literary and/or artistic works, could be restrained on the basis that the importation of the copyright works might offend the provisions of s.37 of the Copyright Act 1968.
- In summary, s.37, prior to this amendment, prohibited importation of copyright works, where essentially two tests were satisfied. The first test was to show that the articles upon which the copyright works were contained were imported without the permission of the copyright owner. The second test required it to be shown that the importer knew, or ought reasonably to have known, that he was not permitted to reproduce the copyright works in circumstances of a hypothetical reproduction, as postulated by the section.
- RA & A Bailey & Co Ltd v Boccaccio Pty Ltd (1996) 6 IPR 279 exemplifies the operations of these principles. The case concerned the importation of authentic bottles of Baileys Original Irish Cream cocktail. The claim of copyright infringement succeeded on the basis of the copyright in the label, and as a result product bearing the label could not be imported.
- Since that time, copyright owners have sought to preclude the importation of genuine goods bearing copyright works on labelling, packaging or in the nature of instruction manuals, on the basis of copyright in those “accessory” marks or materials. This restriction on the importation of authentic goods has been removed by the amending provision.
- Whilst the question of trade mark infringement is open for consideration, the relaxation of the restriction on parallel importation now means that copyright rights cannot be relied upon to prevent parallel importation of authentic goods on the basis that the goods contain some form of copyright accessory.
- Accordingly, the law on prohibition of parallel importation, as has developed since the case of Interstate Parcel Express Co Pty Ltd v Time-Life (International) Nederlands (BV) (1977) 138 CLR 534, has now changed with regard to the abovementioned types of parallel importation.
- In a related development, the Federal Government has recently announced its intention to scrap parallel importation restrictions on computer software, although legislation to this effect has not yet been introduced. With the availability of software on the internet, this development may in fact be in line with the increased accessibility of software from overseas in any event.
B. The Digital Agenda Legislation
- The Copyright (Amendment) Digital Agenda Act 2000 has been passed but is not expected to come into force until 4 March 2001.
- The introduction of the Act follows years of consideration of the updating of the Copyright Act 1968 to deal with developments in communication technology, following the report of a Copyright Convergence Group in 1994.
- The objectives of the legislation were set out in the explanatory memorandum as follows:
- Improve protection for owners of copyright in relation to the use of their copyright material on the internet and through other new communications technologies such as pay-TV;
- Improve copyright protection in the online environment;
- Ensure that users of copyright material, particularly libraries, archives and educational institutions have reasonable access to copyright material in the online environment;
- Replace technology-specific rights with technology-neutral rights so that amendments to the Act are not needed each time there is a development in technology;
- Ensure that the proposed reforms are consistent with international obligations in the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty in relation to the digital agenda.
- The main changes introduced by the amending legislation are as follows:
- The replacement of the technology-specific “broadcast” right (covering only “wireless” broadcasting) and the right to transmit to subscribers to a diffusion service with a technology neutral right of communication to the public. Communicate is defined as “make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter.” The term “communicate” includes making material available to be downloaded on the internet, and includes film offered online. Thus, “placing” of copyright material on a web server would constitute a copyright usage. The term “to the public” includes the public outside of Australia, so that Australian copyright owners can deal both with communication from Australia of on-line material directed to Australian as well as foreign audiences.
- The reproduction right continues to apply with respect to online usage. Downloading of copyright material from the internet on to a hard disk would constitute reproduction. But the new s.43A provides protection for users of the internet in the case of temporary reproduction. This section provides that copyright is not infringed “by making a temporary reproduction” of a work “as part of the technical process of making or receiving a communication”, unless the “the making of the communication is an infringement of copyright.” Thus, browsing of copyright works is permitted, including opening copyright documents as part of browsing. The temporary nature presumes that no copy is retained of the copyright document. There is a matching provision in the case of subject matter other than works in s.111.
- There are fair dealing provisions applying to the right of communication, just as they have done with respect to other copyright uses of works. In particular, the fair dealing provisions give exemptions to educational institutions, libraries and archives for the reproduction and communication of copyright material in electronic form for purposes of research or study (note s.49). Educational institutions, libraries and archives are entitled to produce digitised copies of copyright works, but subject to the rules governing copying of a “reasonable portion” of a work, the definition of a “reasonable portion” referring to 10% of the number of words in the work or where a work is divided into chapters, one chapter. The provisions also permit for a limited right of reproduction or communication of the whole of an article in a periodical publication. An archive includes a museum or gallery. Reference is made to the definition of archival collection in s.10(4) of the Act in this regard.
- An exemption for libraries from claims of authorising infringement by the making of electronic copies by library users will apply subject to a warning notice requirement, as applies in the case of photocopying.
- The existing statutory licence scheme in connection with the copying of works by educational institutions is being extended to the new communication right.
- There is generally considerable controversy about the fair dealing defence which permits electronic transmission of a work or the making of a work available on line in circumstances defined by the fair dealing provisions. This fair dealing right potentially puts out of the hands of a copyright owner the dissemination of a work to a large numbers of potential recipients through unrestricted transmission for fair dealing purposes.
- Copyright Agency Limited, which represents owners of copyright in works which are photocopied under statutory licence, and will be responsible for the extension of the statutory licence scheme to the digital environment, has objected to the fair dealing exemptions introduced, insofar as they permit libraries to charge for the service of providing digitised copies of limited portions of works without payment of royalties in cases where works are sought by users for research or study purposes.
- The Act limits the exposure of internet service providers who will not be liable for breach of the communication right if they play no role in the selection of content provided by users of their service - s.39A(a). It will not be enough to establish liability that material has been made available through the provision of facilities by any particular ISP.
- Generally, the term authorisation in s.36 has been the subject of specific enactment, providing that in determining whether an infringement has been authorised, regard is to be had to the extent “of the persons power to prevent the doing of the act concerned”, as well as “the nature of any relationship existing between the person and the person who did the act concerned” and “whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice”.
- As a separate matter, the Act also introduces a new definition of computer program to mean “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” Also the notion of reproduction of a computer program includes where:
“(a) an object code version of the program is derived from the program in source code by any process, including compilation; or
(b) a source code version of the program is derived from the program in object code by any process, including decompilation.”
This new definition means that data tables used as part of a computer program would be expressly excluded from the concept of computer program in the Act, but could still be protected as literary works (in particular as “compilations”).
- The management of the new communications right raises some very significant issues about the future of copyright protection. For example, the issue of jurisdiction is particularly problematic in the age of electronic communication entirely unrestricted by national boundaries. Also, the new communication right, whilst welcomed, raises important question about the burden of copyright management, reinforcing the need to find appropriate collective management approaches.
Colin Golvan
Barrister,
Owen Dixon Chambers,
205 William St.,
Melbourne, Vic. 3000,
AUSTRALIA
Email: golvanc@ozemail.com.au
GOLVAN ARTS MANAGEMENT • PO Box 766, Kew, Victoria 3101 Australia • golvan@ozemail.com.au